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Who in Delaware is Deciding Indefiniteness at Markman?

Nathan R. Hoeschen, April 29, 2021
Indefiniteness KB

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Being a notorious font of local wisdom, I am often asked whether Judge X or Y will entertain indefiniteness at Markman. Well here you have it faithful readers—everything you need to know about raising indefiniteness at Markman in Delaware

Most Delaware District Judges Will Allow Briefing and Argument on Indefiniteness at Markman

Judge Sleet rather famously did not entertain indefiniteness arguments at Markman, considering it “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003). He frequently referred to this prohibition …

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Jury Trials: They're Back!

David M. Fry, April 28, 2021
COVID-19 Trial Calendar

Gavel
Gavel, Bill Oxford, Unsplash

Last week, we asked whether jury trials in Delaware had finally arrived. After a long period of fits and starts, the answer is yes!

Judge Andrews successfully held a jury trial in a criminal case this week, culminating in a "not guilty" verdict today. Everything seems to have gone off without a hitch, with jury selection, preliminary instructions, opening statements, and multiple witness examinations taking place in a single day.

There's a huge backlog of jury trials in D. Del., and the court is still only equipped to hold one jury trial at a time (with a separate courtroom serving as the public observation area). But this is a big step …

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Judge Connolly Rejects Reconsideration Based on "New Evidence" the Movant Helped Create

Jeff Castellano, April 27, 2021
Reconsideration

Late last year, we posted about a decision from Judge Connolly dismissing an action by Chromadex because Chromadex had licensed the patent to another party along with the right to sublicense, making the licensee a required party, but had failed to join that party in the complaint.

To remedy the situation, Chromadex apparently executed a new license agreement to provide Chromadex with standing to bring a complaint alone. The licensee was dissolved.

Chromadex then moved for reconsideration. Judge Connolly denied the motion. He pointed out that a plaintiff cannot rely on evidence arising after the original decision to support a motion for reconsideration:

"newly discovered evidence" within the purview of Rule 60(b )(2) . . . refers to evidence of …
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Court Reaffirms Denial of Litigation Funding Discovery, But Permits In Camera Review of Litigation Funding Agreement

Andrew E. Russell, April 26, 2021
Litigation Funding Discovery Dispute

Dollar Bills
Sharon McCutcheon, Unsplash

It seems like litigation funding is becoming a more active area for discovery disputes lately—a trend that is likely to continue after Judge Connolly granted a dismissal based on a litigation funding agreement late last year. See Uniloc USA, Inc. v. Motorola Mobility, LLC, C.A. No. 17-1658-CFC, 2020 U.S. Dist. LEXIS 244512, at *25 (D. Del. Dec. 30, 2020).

Last week, Judge Burke confirmed a previous denial of litigation funding discovery, offering some additional thoughts:

ORAL ORDER: The Court, having now reviewed the parties' supplemental letter briefs . . . in which Defendants ask the Court to reconsider its March 2, 2021 Order . . . , hereby notes as follows: . . …
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Delaware Jury Trials: Have They Finally Arrived?

David M. Fry, April 23, 2021
COVID-19 Trial Calendar

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Since our last update, one of the jury trials set for May has been postponed indefinitely (Johnson-Krumm v. City of Seaford), and it appears from the public docket that trial never went forward in JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC.

But there is light at the end of the tunnel, as two cases in front of Judge Andrews appear to be headed for jury trials in the next month.

The first, USA v. Blue, is set to begin on Monday morning. As we've written before, the court is currently equipped to hold only one jury trial at a time, and Judge Andrews has designated …

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New Federal Rule of Appellate Procedure 3 Regarding Contents of a Notice of Appeal

Andrew E. Russell, April 21, 2021
Litigation FRAP 3

A peel can be a trap for the unwary.
A peel can be a trap for the unwary. Jake Nackos, Unsplash

I saw on the Civil Procedure & Federal Courts Blog that the Supreme Court adopted an amended FRAP 3 last week.

The new amendment is focused on getting rid of some pitfalls in the previous procedure for filing a notice of appeal.

The old rule required a party to file a notice of appeal identifying the "judgment, order, or part thereof" that it is appealing. As explained in the comments to the amendment (embedded below), some courts interpreted that language strictly to hold that a party who named a specific order waived their right to otherwise appeal the judgment:

Whether due to misunderstanding or a misguided attempt …
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Indefiniteness Is in the Eye of the Beholder

Jeff Castellano, April 20, 2021
Indefiniteness Claim Construction

In a summary judgment opinion issued on April 20, Judge Connolly found claims of two patents indefinite because they included a limitation directed to applying a composition "in an amount effective to enhance the condition of the skin." Judge Connolly reasoned that whether he applied the plain meaning of the term or the meaning ascribed to the term by the specification, "the determination of whether a person's skin is enhanced provides a paradigmatic example of indefiniteness." As he pointed out, "Beauty . . . is 'in the eyes of the beholder.'"

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Prior Expert Testimony from IPR Inadmissible in District Court Action

Andrew E. Russell, April 19, 2021
Trial Motion in Limine

Arrows on Sign
Adrià Tormo, Unsplash

In another ruling from the In Re ChanBond litigation as it approaches trial, Judge Andrews today issued an in-depth opinion granting a motion in limine to exclude reference to prior expert testimony from a related IPR proceeding, on the grounds that the testimony is hearsay.

Plaintiff sought to admit the material as former testimony under FRE 804(b)(1), because it is helpful to its infringement case. The rule requires, however, that the former testimony was offered against the parties' predecessor who had "an opportunity and similar motive to develop it."

Here, Judge Andrews found that an IPR petitioner's motive in developing expert testimony to show invalidity is different from a defendant's motive developing its non-infringement position:

I …
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Informal Request for Production at Deposition Insufficient to Preserve Rights Absent Later Formal Request

Andrew E. Russell, April 18, 2021
Document Production Deposition

Judge Andrew's In re Chanbond opinion an Friday focused primarily on reopening discovery, but it also addressed a second issue, which I thought merited a separate post.

Shortly before trial, in a reply brief, Defendants sought production of an "Advisory Services Agreement" between the plaintiff and third party IPNav. They had previously informally requested the document at a deposition, and renewed that request as part of their motion to reopen discovery after the document's importance became apparent in light of the standing dispute. Defendants request at the deposition was apparently on the record, and Plaintiff indicated it would look for the document, but Defendants did not follow up with a formal document request:

I agree with Plaintiff that Defendants …
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Court Denies Request to Reopen Discovery After Third-Party Letter Suggests Possible Standing Issue

Andrew E. Russell, April 18, 2021
Letter Trial

In In Re Chanbond, LLC Patent Litigation, Judge Andrews denied a request for post-pretrial-order discovery on Friday. The request came after Defendants received an e-mail from attorneys from third-party Deirdre Leane alleging that her consent was required for any settlement between the defendants and plaintiff ChanBond:

On September 2, 2020, Defendants received an email from Ms. Leane’s counsel, informing them of a dispute between Ms. Leane and ChanBond. . . . The email stated, “As we read Section 8.3 of the ISA, Ms. Leane’s written consent is required given that a license is a transfer of an interest in the patents-in-suit, which in turn are material assets of ChanBond.” . . . The email warned, “[P]lease take notice …
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