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Standing Order Hearings: Court Questions Head of NPE LLC Who Is Married to Attorney at Mavexar

Andrew E. Russell, Nov. 10, 2022
Mavexar Piercing the Corporate Veil

"This is how I'm going to explain to my wife why she should have an LLC that holds our company's patents." AI-Generated, displayed with permission

Chief Judge Connolly held another hearing today regarding compliance with his standing orders on litigation funding, this time exploring the relationship between NPE plaintiff Backertop Licensing LLC and MAVEXAR, the entity that is said to have created Backertop.

Last week's hearing involved testimony from a sales person and a restaurateur who owns a food truck, each of whom had been recruited by MAVEXAR to be the sole member of a patent assertion NPE, as an "investment" opportunity or a way to make "passive income."

Each "owner" received either 5% or 10% of the …

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A Handy Transcript

Andrew E. Russell, Nov. 9, 2022
Contentions KB

Bookmarks
Chiara F, Unsplash

I thought I'd share an old transcript that has come in handy a number of times since it issued back in 2013, where Judge Andrews made a helpful ruling about how and when patentees must respond to conception date interrogatories—an issue that comes up frequently.

In Vehicle Interface Techs., LLC v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA (D. Del.), the defendant filed a discovery dispute to compel a full response to an interrogatory asking for the date of conception and reduction to practice.

The patentee had responded, but the answer was not very helpful. According to the discovery dispute letter:

[The patentee] stated that the sole inventor . . …
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"Pleading Generally Precedes Discovery"

Nathan R. Hoeschen, Nov. 8, 2022
Amended Complaint

Pleading is the big duck, discovery is the little ducks.
Pleading is the big duck, discovery is the little ducks. Vlad Tchompalov, Unsplash

The plaintiff always wants to leave the door open. If they uncover new claims in discovery, they want to be able to add them in all the way up to trial. Defendants, of course, want to slam the door shut and wedge a dresser in front of it.

Whence Amendment?

The usual compromise is a deadline to amend the pleadings, which is included on all of our Judges' form scheduling orders. Interestingly, none of the orders specify when this deadline should fall, and in practice it varies widely. Looking at five recent orders I happen to have on hand, two had dates between the deadline for …

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People Seem Interested in Friday's Hearing Involving Mavexar—Some Further Thoughts

Andrew E. Russell, Nov. 7, 2022
Litigation Funding Standing Orders

A lot of people are interested in Chief Judge Connolly's Friday hearing about litigation funding. Here is a chart of this blog's traffic for its entire existence through this weekend:

Blog Traffic Through Nov. 6 2022

And here is a chart for that same period of time, plus one day—the day we circulated the post about Friday’s hearing:

Blog Traffic Through Nov. 7 2022

The Court clearly hit on an issue that people care about!

Why an Entity Like Mavexar Might Want to (Supposedly) Operate This Way

Watching some of the comments on yesterday's post, one of the questions that came up was why a patent assertion entity would be interested in giving away 5-10% of their settlement revenue to what seems to be a random person, in exchange for that person …

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A Wild Hearing: Chief Judge Connolly Flips Over Rock, Finds Mavexar LLC Crawling Around, Controlling Patent Litigation and Giving Hapless Patent Owners Just 5-10%

Andrew E. Russell, Nov. 4, 2022
FRCP 7.1 Litigation Funding

Under Rock
AI-Generated, displayed with permission

Wow.

I flagged on Wednesday that Chief Judge Connolly planned to hold an evidentiary hearing today regarding compliance with his litigation funding and entity ownership orders in three cases. Well, I went, and it was one of the most remarkable hearings I've seen in a patent case.

The purpose of the hearing was to dig into whether the parties complied with Chief Judge Connolly's standing orders regarding litigation funding and entity ownership.

But the Court's statements at the hearing offered some insight into what motivated those orders in the first place: Chief Judge Connolly believes (as he has said before) that the District Court is not a "star chamber," and that the public has …

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Disagreement With the Substance of Infringement Contentions Does Not Mean Those Contentions Are Inadequte—And Can't Be the Basis to Withhold Discovery

Andrew E. Russell, Oct. 31, 2022
Motion to Strike MTC

"I'm a motion to strike, not a stealth motion for summary judgment" Braydon Anderson, Unsplash

One of the more common District of Delaware questions you get as local counsel is "can we move to strike opposing counsel's (infringement or invalidity) contentions?"

That may seem like a simple question, but the answer depends many things, like: What is wrong with those contentions? How were our contentions in comparison? Which judge is this in front of? How long ago did they serve them? (And, sometimes, things like: Why are you asking this now, when we are two weeks from trial?)

Challenging contention disclosures can be tough even if you have what seem like fairly good arguments. The Court is generally not …

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Judge Noreika Transfers Trademark and False Advertising Case Out of Delaware. Are Patent Case Transfers Coming?

Andrew E. Russell, Oct. 28, 2022
28 U.S.C. § 1404(a) Jumara

Artist's depiction of the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995)'>Jumara</a> factors in action
Artist's depiction of the Jumara factors in action Nick Fewings, Unsplash

Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).

This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.

I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to …

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Reminder: "The ABA’s Model Rules of Professional Conduct, Not the Delaware Rules of Professional Conduct, Set the Standards for Professional Conduct" in the District of Delaware

Andrew E. Russell, Oct. 26, 2022
MRPC DRPC

Caution Tape
Hiroshi Kimura, Unsplash

If you're briefing on an ethical issue in the District of Delaware, consider the local rules before relying exclusively on the Delaware Lawyers’ Rules of Professional Conduct (DLRPC):

(d) Standards for Professional Conduct. Subject to such modifications as may be required or permitted by federal statute, court rule, or decision, all attorneys admitted or authorized to practice before this Court, including attorneys admitted on motion or otherwise, shall be governed by the Model Rules of Professional Conduct of the American Bar Association (“Model Rules”), as amended from time to time.

D. Del. Local Rule 83.6(d). According to the Judge Jordan, back in 2004:

[T]he ABA’s Model Rules of Professional Conduct, not the Delaware Rules of …
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Judge Williams' New Form Scheduling Order Adopts Chief Judge Connolly's Ranking Procedures for Summary Judgment Motions—But Not for Daubert Motions

Andrew E. Russell, Oct. 26, 2022
Scheduling Orders Scheduling Order

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …
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Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial Claim Narrowing

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …
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