A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

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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Status Communications Between Litigation and Prosecution Counsel Were Not Privileged

Andrew E. Russell, Oct. 19, 2022
Prosecution Prosecution Counsel

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
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Chief Judge Connolly Orders Briefing on Court's Authority to Issue Its Standing Order re Disclosure Statements

Andrew E. Russell, Oct. 17, 2022
Standing Orders FRCP 7.1

Get your popcorn ready...
Linus Mimietz, Unsplash

We've talked a lot about Chief Judge Connolly's standing orders on disclosure and litigation compliance, including about how he recently ordered in-person hearings regarding compliance with those orders in a fairly large number of cases.

Chief Judge Connolly's standing order on Rule 7.1 statements requires disclosure of all individual or corporate owners of certain entities, going all of the way up the chain and including indirect owners:

[I]n all cases assigned to Judge Connolly where a party is a nongovemmental joint venture, limited liability corporation, partnership, or limited liability partnership, that the party must include in its disclosure statement filed pursuant to Federal Rule of Civil Procedure 7.1 the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified.

Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1 (D. Del. April 18, 2022).

We wrote about one instance, in VLSI Technology LLC v. Intel Corporation, C.A. No. 19-426 (D. Del.), where the Court ordered the plaintiff to confirm compliance with its standing order, and stayed the case when the plaintiff filed an inadequate response.

Now we have an update

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Default! Default! Default!

Nathan R. Hoeschen, Oct. 13, 2022
Default Judgment

The sweetest victory
AI-Generated, displayed with permission, displayed with permission

One of my most vivid memories of life as a young lad, was a wrestling tournament when I was 12-ish. I was not a gifted wrestler, and I knew it, as did everyone with a passing interest in the sport. I'd made it through several rounds of tournaments, mostly by virtue of being in a less populous weight class and being not quite last. By the time I got to sectionals -- the last tournament before state -- It was just me and two other guys, both of whom looked to be about 45. They were from neighboring farm towns (where they presumably did the work of a whole team of oxen themselves …

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