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Scheduling a District of Delaware Trial Just Keeps Getting Harder

Nathan R. Hoeschen, Nov. 12, 2020
Scheduling COVID-19

As we've covered pretty exhaustively, its getting harder and harder to schedule a trial next year in the District of Delaware. In fact, given the huge number of delays and cancellations of trials that were previously scheduled for this year, most of 2021 is already double or triple-booked with trials.

So it's no surprise that parties that don't have firm dates already on the calendar for next year are eager to lock something—anything—down. That's what happened in Arendi S.A.R.L. v. LG Elecs., Inc., et. al., C.A. No. 12-1595 (LPS), last week. In that case—which is actually seven related cases—the scheduling order (as modified by recent COVID-related stipulation) set a deadline for dispositive motions that had briefing set to conclude next …

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Rule 31 Depositions by Written Questions In Light of COVID-19 Travel Restrictions

Andrew E. Russell, Nov. 11, 2020
Depositions FRCP 31

COVID-19
COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Here's something you don't see every day.

After a discovery dispute about bringing a parties' European witnesses to the US for deposition during the pandemic, Judge Noreika ordered that depositions of a defendants' witnesses may initially take place by written questions under FRCP 31:

ORAL ORDER . . . IT IS HEREBY ORDERED that . . . Plaintiff may request a deposition of the witnesses pursuant to Federal Rule of Civil Procedure 31. Any such deposition shall be subject to Local Rule 30.6, with the "commencement" of the written deposition being when Defendants' counsel receives the written questions and the "conclusion" of the deposition being when Defendants' counsel serves the response …
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Fed. Cir. Grants Mandamus Petition, Orders Transfer Out of W.D. Tex.

Andrew E. Russell, Nov. 10, 2020
Jumara Transfer

Yesterday the Federal Circuit granted a mandamus petition to transfer a case against Apple out of the Western District of Texas to the Northern District of California, ordering that Judge Alan D. Albright had clearly erred in declining to transfer the case.

Patently O has a full summary of the opinion, including the strong dissent.

A couple of additional thoughts:

  • It is interesting that the Federal Circuit did not have a problem with Apple filing its mandamus petition before the District Court had even ruled on the motion to transfer. Footnote 1 does limit this practice to the "particular circumstances of the case," but obviously it worked out well for Apple here.
  • The Federal Circuit's opinion applies Fifth Circuit …
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Defendant's Attempt to Raise Inventorship Defense at Trial Blocked

Jeff Castellano, Nov. 10, 2020
Preclusion Litigation

Earlier today, Judge Connolly issued a ruling precluding a defendant from pursuing its inventorship theory under 35 U.S.C. § 102(f). The ruling is notable because the request for preclusion came at trial after the defense was included in the parties' pretrial order. Nonetheless, Judge Connolly found that the circumstances justified exclusion.

ani-kolleshi-7jjnJ-QA9fY-unsplash.jpg
Ani Kolleshi, Unsplash

Although defendant Sandoz's final contentions had raised an inventorship defense, it was focused on misjoinder as opposed to nonjoinder, Judge Connolly explained.

And although Sandoz included a nonjoinder defense in its portion of the pretrial order, Judge Connolly noted that "given the number of contested facts and issue of law Sandoz identified in the 8,629-page PTO, I would not fault Plaintiffs if they failed …

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Fed. Cir. Confirms That "Printed Matter" Can Render Claims Ineligible Under § 101

Andrew E. Russell, Nov. 10, 2020
§ 101 Printed Matter

Handwritten Form
Glenn Carstens-Peters, Unsplash

The "printed matter" doctrine states that elements claiming printed matter—e.g., text printed on paper or some other substrate—bear no patentable weight unless the printed matter and the substrate are functionally related. As the Federal Circuit explained today:

[P]rinted matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is “functionally related” to its “substrate,” which encompasses the structural elements of the claimed invention.

In its decision, the Federal Circuit noted the Court has—incredibly—never addressed whether a claim directed to printed matter is ineligible under § 101:

Notably, since the Supreme Court articulated its two-step framework in Alice, this court has not directly addressed whether …
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On The Hazards of Talking to Your Witness During a Deposition in Delaware

Andrew E. Russell, Nov. 9, 2020
Rule 30.6 Rule 30

hiroshi-kimura-rtX4wxMEI2M-unsplash.jpg
Hiroshi Kimura, Unsplash

Since the early 2000's, the District of Delaware local rules have prohibited talking to a witness about the subject matter of their deposition testimony during a deposition:

RULE 30.6. Depositions Upon Oral Examination.
From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.

It's not uncommon for visiting counsel defending depositions in Delaware cases to not know this rule. …

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Judge Connolly Sets Out His Views on Expediting "Silver Bullet" Motions, Including Indefiniteness

Andrew E. Russell, Nov. 6, 2020
Marking Early SJ

Wolf
Wolf in the Forest, Philipp Pilz, Unsplash

I don't have the full transcript, but based on quotes set out in a letter filed by the parties, Judge Connolly recently set forth his thoughts on the kinds of issues he is willing to address early in the case:

Now, what I try to do when I think there's kind of a silver bullet, I move it to the top of the pile. That's what I do on indefiniteness.

According to the letter, Judge Connolly was prepared to stay the case and expedite summary judgment briefing on indefiniteness if it was case dispositive. Defendant declined that offer in a letter after the hearing.

Judge Connolly also suggested that he …

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You'd Have to Be Certifiably Insane to Move for an Interlocutory Appeal

Nathan R. Hoeschen, Nov. 5, 2020
KB Interlocutory Appeal

Attorneys deciding to move for certification of interlocutory appeal
Attorneys deciding to move for certification of interlocutory appeal Oleg Moroz, Unsplash

As we mentioned earlier this week, Judge Noreika issued another in a storied line of Memorandum Orders denying a request to certify an interlocutory appeal. The decision in Arbor Global Strategies LLC v. Xilinx, Inc., C.A. No. 19-1986-MN, D.I. 68 (D. Del. Oct. 30, 2020) was a fairly unremarkable denial, but it caused me to wonder just how rare it is to see one of these granted. So I checked.

As far back as DocketNavigator goes (which is apparently January 2008), I count 23 separate Delaware cases where a party has requested certification. Of those, only four have been granted, the most recent of …

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Update on Upcoming D. Del. Trials [Updated]

Andrew E. Russell, Nov. 4, 2020
COVID-19 Trial Calendar

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

Last week I summarized upcoming District of Delaware jury trials.

With the COVID-19 numbers surging nation-wide, I wanted to keep an eye on these. All told, five of the six jury trials are still on. One trial was continued, and the parties in another filed a letter yesterday asking to delay the trial due to COVID-19 concerns.

Here are the updates:

  • November 3: Judge Noreika's remote bench trial was canceled after the parties settled.
  • November 16: Chief Judge Stark's criminal jury trial is still scheduled to go forward, although there is a status call set for 5pm tomorrow.
  • November 30: Chief Judge Stark continued the civil jury …
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No Reasserting Dropped Claims Without Good Cause, Says Judge Andrews

Jeff Castellano, Nov. 3, 2020
Claim Narrowing Case Narrowing

In the most recent entry in the case narrowing saga in IPA Techs., Inc. v. Amazon.com, Inc., 16-1266-RGA (previously covered here and here), Judge Andrews addressed defendant Amazon's objection to the reassertion of previously dropped claims.

Earlier this year, Judge Andrews directed IPA to reduce its asserted claims to 30, and it did. Subsequently, nearly half of its asserted claims were invalidated in an IPR. Plaintiff IPA, no longer asserting the invalidated claims, then added (or "reasserted") seven of the previously dropped claims in place of the invalidated claims.

Amazon opposed the addition of the new claims because fact discovery was nearly complete and because it had crafted its invalidity case with the 30 asserted claims in …

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