On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:
ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The …
We're back! Our trial was a success, Nate is back from his travels, and things have cooled down enough for us to resume regular posts this week.
While we were tied up, there was some progress in the Mavexar cases. If you recall, Chief Judge Connolly had ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware to answer for the entities' potential fraud on the Court. She objected, stating that she would not appear.
Since then, the July 20 hearing occurred, and as promised she did not appear—although her counsel, and counsel for Backertop, did show up. The transcript for that hearing is below.
Judge Connolly issued a post-trial opinion in a false advertising case this week that contained another interesting bit of damages arcana under the Lanham Act.
AI-Generated, displayed with permission
The trial in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662 (D. Del. July 17, 2023), seemed to go great for the plaintiff with the jury finding 9/10 of the defendant's advertisements were false and awarding $21.2 Million in compensatory damages and $23.7 Million in punitive damages. As we say in Delaware, "that's a lotta crabs"*
It all went tails up in post-trial briefing however, when the defendant moved for JMOL of no damages. The court began by summarizing the elements of a Lanham Act claim in the Third Circuit
1) that the defendant has made false or misleading statements as to his own product [or another's]; 2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; 3) that the deception is material in that it is likely to influence 3 purchasing decisions; 4) that the advertised goods traveled in interstate commerce; and 5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will, etc.
CareDX, at 3-4 (emphasis added) (quoting Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241,248 (3d Cir. 2011))
The highlighted factor is the interesting one. You see, actual deception is ...
"We need to call the Court!"AI Generated, displayed with permission
The Court has been somewhat quiet this week as far as new decisions, so I figured I'd take this opportunity to lay out a few quick thoughts on recurring issues that come up in depositions in the District of Delaware.
This is some (but not all) of what you might hear when asking Delaware counsel "depositions are coming up next month, is there anything I should know?" (Experienced Delaware counsel might also talk about a few more topics, such as how to avoid accidentally making your witness prep materials discoverable—but those are for another post).
Here's the list:
When sending a notice of deposition, be sure to leave at …
As I mentioned on Monday, my co-bloggers Nate, Emily, and I are swamped at the moment, with a trial this week and another coming up in a week and a half—so this will be a less fulsome post than I'd like.
But I wanted to pass along the "Notice of Objection to and Non-Participation in Judicial Inquisition" attached below, in which the Mavexar-related entity Backertop Licensing LLC and its owner refuse to appear for the Court's scheduled July 20, 2023 hearing (and to produce any further documents), in direct contravention of an order of the Court:
NOTICE OF OBJECTION TO AND NON-PARTICIPATION IN JUDICIAL INQUISITION
Former Plaintiff Backertop Licensing LLC (“Backertop” or “Plaintiff”) hereby gives …
It's easy to think that, once an opposing party takes a position on the record as to a legal issue, it can never change that position. Not so.
Today Judge Andrews addressed an argument that defendants who lost at trial were nonetheless bound by their "judicial admissions," thus preventing them from taking a (purportedly) contradictory position after trial. Not surprisingly, the defendants disagreed:
Plaintiff argues that Defendants made representations before and at trial that directly contradict positions that Defendants must take in order to prove an interference-in-fact. . . . Plaintiff notes that Defendants' representations were "judicial admissions." . . . . Therefore, Plaintiff argues, Defendants cannot establish an interference-in-fact between the '537 patent and the '207 patent, and I must dismiss the counterclaim against the '537 patent as moot for lack of subject matter jurisdiction.
Defendants respond that Plaintiff does not invoke estoppel—or any other legal theory—that would support dismissing their claims. . . . Defendants add that, in any case, they are not estopped from abandoning their trial positions, nor from invoking theories that Plaintiff presented at trial, because Plaintiff prevailed over them at trial.
We wrote last month about the "mansplaining brief," which caught some eyes around town when it (and the declaration attached to it) accused the Court of "gender harassment and discrimination."
We set out the full background in our post, but generally the Court ordered the sole member of a Mavexar-related LLC to attend a hearing here in Delaware.
She then filed a motion for reconsideration offering numerous objections, including among other things that (1) the Court had no power under FRCP 45 to compel her attendance, since she lives in Texas; and (2) that she is a working mother and therefore unable to travel to Delaware.
All across the district, defendants silenty wonder: "Oh crap, is this gonna be a thing now?"NASA, Unsplash
Here's one you don't see every day. Back in March, Judge Burke granted a § 101 motion to dismiss as to the claims of two of the six asserted patents in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB (D. Del. Mar. 31, 2023).
In that opinion, the patentee did not dispute that the claims were directed to the abstract idea of synchronizing a file across a network:
Plaintiff, for its part, does[ not] dispute that synchronizing multiple versions of a file across network computers is an abstract idea, and the Court agrees that it is. Again, …
As Delaware counsel, I sometimes have to say something along the lines of "the Court is going to see right through that" or "nobody is as sly as they think they are."
Usually this is in the context of something like slipping wholesale invalidity arguments into a claim construction brief (seriously? You think you are going to win SJ of anticipation at claim construction?) or "just flagging" a completely unrelated and irrelevant issue in a discovery dispute.
I saw an example of this last week in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361−GBW−CJB, D.I. 290 (D. Del. Jun. 26, 2023).
The Delaware bar lately, arguing over redactions to discovery dispute lettersHasan Almasi, Unsplash
Based on the redaction disputes I've seen in couple of cases lately, some of us here in Delaware have forgotten that the high Avandia standards for access to public materials do not apply to discovery dispute letters and their attachments, as Judge Fallon confirmed last month:
[T]he common law right of access does not extend to discovery motions and supporting materials because the "underlying discovery material itself is not a judicial record." Genentech, Inc. v. Amgen, Inc., C.A. No. 17-1407-CFC et al., 2020 WL 9432700, at *3 (D. Del. Sept. 2, 2020) (citing Leucadia, Inc. v. Applied Extrusion Techs., Inc., …
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