I heard today from one of the magistrate judges (with permission to pass along) that, going forward, the District of Delaware is permitting in-court mediations again, at the discretion of each individual magistrate judge and on a case-by-case basis. The expectation is that the judges will limit the number of people attending the mediations, and that virtual proceedings will remain an option. It is also expected that the change may primarily benefit local cases, as patent cases often involve attorneys or client representatives traveling to Delaware from locations that may still have travel restrictions.
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Judge Noreika updated her form scheduling order yesterday. Here are the changes:
- Separate deadlines for fact and expert discovery cut offs. Judge Noreika's old form orders, and several other judges' form scheduling orders, set a cut off date for "all" discovery and a deadline for substantial document production. But parties often also set a separate deadline for fact discovery, so that there is a clear delineation for when fact depositions and any remaining document production need to end before expert reports occur. This resolves that issue.
- Joint claim chart changes. Intrinsic evidence must now be submitted in an appendix rather than with the joint claim chart. This may help with the common issue that …
Today, the District of Delaware formally lifted its jury trial ban:
The Standing Order RE: Criminal and Civil Jury Trial Suspension issued February 5, 2021[,] expires today, April 5, 2021. Based on current conditions and after consultation with the Court’s Reopening Committee, the Court has decided that it will not, at this time, extend the order. Whether and when any particular case will proceed to trial is left to the discretion of each individual judge of the Court.
There is a jury trial scheduled for today in JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC, C.A. No. 18-553-MN (D. Del.), although it's not clear yet from the …
On Wednesday, Judge Burke issued the following order cutting the parties off from further discovery dispute teleconferences—but not discovery disputes—after they brought their fourteenth request for discovery assistance in just over a year:
ORAL ORDER: The Court, having reviewed the parties' . . . request [for] a discovery teleconference . . . hereby notes as follows: (1) since the Court was referred this matter in February 2020 to resolve discovery/protective order disputes, this is the 14th different time that the parties have sought the Court's assistance in that regard; (2) as part of those 14 different requests for Court assistance, the parties have brought the Court a total of 31 different disputed issues to …
Under Judge Andrews' form scheduling order, the parties are allotted a certain number of pages for both Daubert and summary judgment briefs. Given how difficult it is to win most Daubert motions in the district, it might sometimes make sense to forego filing one in order to devote more pages to briefing a seemingly stronger SJ motion.
Yesterday, Judge Andrews gave the district a reason to rethink this strategy.
The defendants in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No 14-1102-RGA-CJB, moved for summary judgment of non-infringement, relying largely on their expert's opinion that the devices did not practice a particular limitation. D.I. 213 at 3 (D. Del. Mar 31, 2021). The plaintiff responded by pointing to various alleged errors in the defense expert's methodology, but failed to actually file a Daubert motion to strike the opinion. See id. Judge Andrews found this failure fatal to the plaintiff's case, stating:
M2M’s objections may be the appropriate subject of a Daubert motion, but M2M does not cite any authority for the proposition that critiquing an expert’s methodology in the absence of a motion to exclude the testimony is sufficient to create a material dispute of fact.
Id. at 4.
The bit of this opinion that I find interesting is ...
We keep writing about how hard it is to win a motion to strike in D. Del., which is generally true. That said, it's still possible to get late-disclosed theories and evidence excluded, especially when there's no good explanation for the delay.
Yesterday afternoon, one plaintiff learned that lesson the hard way. As often happens, the plaintiff argued that the defendant's expert raised new opinions on motivation-to-combine in his reply report.
But instead of moving to strike (or seeking leave to submit a sur-rebuttal report, or dealing with the issue during expert depositions...), the plaintiff simply waited until summary judgment briefing. There, it submitted a rebuttal declaration from its own expert in support of its answering brief on invalidity. …
Before the Supreme Court held in Markman v. Westview Instruments that claim construction is an issue of law to be decided by the judge, and not the jury, parties would often build alternative theories of infringement and invalidity into their contentions and expert reports to take into account the different claim construction positions being argued. Because they couldn't know which position would be accepted, they were forced to plan for both, and present theories under both at trial.
Markman changed that practice. Now that claim construction is almost always decided before trial (and usually before expert reports), parties can focus on the judge's construction while building their trial presentation. However, it is worth remembering that pretrial claim construction is not set in stone, and that the judge can modify that construction based on any number of inputs, including the evidence at trial and the parties' evolving arguments.
Judge Noreika did exactly that in a ruling issued earlier this week, leading to a non-infringement finding for the defendant, and eliminating the need for a post-trial opinion on the evidence and argument submitted during trial.
No further news on April jury trials since our last update. The following two jury trials still appear to be set, with the first to start on Monday of next week:
- 4/5/2021: JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC, C.A. No. 18-553-MN (D. Del.): The parties in this contract action just filed a letter indicating that they have made efforts at settlement, at Judge Noreika's request, but this case is still set to go forward as of now. The Court held the pretrial conference today.
- 4/26/2021: USA v. Tyshaun Blue, C.A. No. 20-63-RGA (D. Del.): No change; this case appears to be set to go later next month.
To my knowledge, if it goes forward next week, JHL will be the first post-pandemic jury trial in the District of Delaware ...
This week, Chief Judge Stark ruled on a motion to dismiss a FRAND-related antitrust claim brought by Lenovo against InterDigital relating to 3G/4G phone standards.
According to the Court, InterDigital contracted with the European Telecommunications Standards Institute (ETSI) to license its patents at FRAND rates, and its patents were incorporated into the 3G/4G standards. The ETSI requires patentees to license their patents at FRAND rates to avoid anti-trust concerns.
Lenovo's antitrust claims allege that InterDigital, by demanding higher-than-FRAND rates, has obtained an unlawful monopoly power over the 3G/4G standards. Lenovo also alleges that InterDigital defrauded ETSI during the standards development process:
Lenovo allege[s] …
Judge Andrews issued an interesting opinion on Wednesday discussing the level of control necessary for divided infringement -- an issue that has not come up much in the district.
As the Federal Circuit laid out in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, (Fed. Cir. 2015), divided infringement requires the parties that collectively perform all of the method steps to be part of a joint enterprise, or for one of them to "direct or control the other's performance." Id. at 1022–23.
This "direct or control" requirement has historically been a pretty good grounds for motions to dismiss or summary judgment in the district. In the 5 years since Akamai …
