A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

What Does a Party Need to Include in a Patent Complaint? Definitely All Asserted Patents...

Andrew E. Russell, May 18, 2022
Default Standard Twombly

Hawk
Mathew Schwartz, Unsplash

One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"

It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.

Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .

The Court normally permits parties to later add or remove asserted claims or accused products as ...

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The Risk of Daubert Motions in Bench Trials

Andrew E. Russell, May 17, 2022
Bench Trial Daubert

Open Gate
Stephen O'Donnell, Unsplash

Yesterday, the Court denied three Daubert motions in a short pretrial order in the lead up to a bench trial in a patent action, citing the Third Circuit's conclusion that Daubert motions in a bench trial may waste judicial time, and also noting that the issues are better addressed the judge in context at trial:

WHEREAS, “[w]hen the role of the gatekeeper to admit or exclude evidence (the judge) and the role of the factfinder to assess and weigh the evidence . . . (the jury) are one and the same, the judge who becomes the factfinder as well as the gatekeeper . . . should not be required to waste judicial time.” In re Unisys, 173 F.3d 145, 155–58 (3d Cir. 1999).
WHEREAS, having reviewed the motions to preclude, the Court has determined that it can better address the issues in context at trial when the Court can hear testimony and better understand the bases for the experts’ opinions;
. . .
THEREFORE, IT IS HEREBY ORDERED that
1) the motions to preclude (D.I. 222, 223, 224) are DENIED with leave to renew during trial to the extent appropriate. . . .

The Court also suggested that the parties could present their evidence at trial and then, potentially, ...

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Chief Judge Connolly Warns ANDA Plaintiff to Cut Back from 16 to 4 Asserted Claims Before Trial or Face Consequences

Andrew E. Russell, May 16, 2022
ANDA Congestion

Four
David Pisnoy, Unsplash

On Friday, Chief Judge Connolly issued an order in the lead-up to an ANDA bench trial compelling the plaintiff to reduce its number of asserted claims by 75% to 4 claims, or face consequences:

ORAL ORDER: WHEREAS, the parties filed the proposed pretrial order (D.I. 225) on May 10, 2022; WHEREAS, the bench trial in this case is 24 days away, and, according to the pretrial order, Plaintiffs are still asserting 15 claims across eight patents . . . ; and WHEREAS, Plaintiffs' assertion of 15 claims across eight patents at this juncture makes clear that Plaintiffs have yet to focus adequately on the relative strength of their various infringement claims, the limited resources of …
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Smart Moves by Manager Who Received Confidential Competitor Info Result in Summary Judgment of No Trade Secret Misappropriation Under DTSA

Andrew E. Russell, May 13, 2022
DTSA Trade Secret Litigation

Exercise Bikes
Jonathan Petit, Unsplash

We don't see too many DTSA cases here (at least in comparison to patent cases), but this one is interesting.

In Peloton Interactive v. iFIT Inc., C.A. No. 20-1535-RGA (D. Del.), a mechanic at defendant iFIT had a childhood friend who was working as a freelance prop man helping shoot some commercials for iFIT competitor Peloton.

According to the Court, the iFIT mechanic found out about his friend's work and, despite allegedly knowing the scripts for the commercials were under an NDA, convinced his friend the prop man to forward him the scripts, which he did (along with a note "Dont [sic] forward or show my name.").

The iFIT mechanic then forwarded the scripts to the hero of this story, an iFIT Vice President of Product Development, referred to in the opinion as "Mr. Willardson." Mr. Willardson immediately shut down the idea of using the competitor's information and involved in-house counsel:

On October 26, 2020, after returning to the office, Mr. Chambers printed a copy of the Scripts from his email. . . . After reading a portion of the Scripts, Mr. Chambers brought the document to his immediate supervisor, Mr. Willardson, VP of Product Development. . . . Mr. Willardson quickly flipped through the Scripts and told Mr. Chambers not to share the document with anyone. . . . Mr. Willardson then put the Scripts in a sealed envelope and gave the envelope to iFIT's in-house counsel. . . . Mr. Chambers and Mr. Willardson have both testified that they never disseminated the Scripts.

They should give this guy a ...

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Word Salad Tastes as Bad as it Sounds

Nathan R. Hoeschen, May 12, 2022
JMOL

The good (well, better) kind of salad
The good (well, better) kind of salad Go to Ryan Concepcion's profile Ryan Concepcion, Unsplash

JNOV's (JMOL's after a jury verdict for lawyers of a newer vintage) are always longshots. To prevail on such a motion "a party must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied by the jury’s verdict cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (cleaned up). It's always noteworthy (or so we bloggers tell ourselves) when one succeeds.

This is especially true in NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA, D.I. 371 ( …

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Judge Noreika Denies Some Voluminous § 101 Motions to Dismiss Without Reaching Merits, Citing Efficiency Concerns

Andrew E. Russell, May 11, 2022
MTD § 101

"The white one in the middle is representative..." Andrew E. Russell, CC BY 2.0

This week, Judge Noreika denied a § 101 motion because it challenged more than 60 claims, and because the parties disagreed as to whether any claims were representative:

WHEREAS, Plaintiff’s [§ 101] motion does not precisely specify which claims’ eligibility it is challenging . . . , but in any event details challenges to more than sixty claims’ eligibility . . . without any agreement about representativeness . . . ;
WHEREAS, should this case proceed to trial, the asserted claims will be narrowed through the parties’ disclosures and discovery and, as such, most of the claims subject to the Plaintiff’s § 101 motion will not …
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Magistrate Consent Numbers (Pithy Title Unavailable)

Nathan R. Hoeschen, May 8, 2022
Magistrate Judges

Take your pick
Aditya Chinchure, Unsplash

As we've mentioned a time or three in the last few months, in the wake of Judge Stark's confirmation to the Federal Circuit, parties in his former cases were given the option to either consent to a magistrate judge of their choosing or await assignment to a sitting Article III judge - most likely a helpful visitor from another district.

On this slow news day, I thought it might be helpful to look back at the results of this novel procedure over the past few months and see how many litigants have chosen to consent, and to whom. I for one was a bit surprised at the results, to wit:

  • Not consenting: 48
  • Consenting: 12

Our resident math majors will note that exactly 20% (my personal guess was closer to 50%) of cases consented to having one of our magistrate judges conduct all proceedings. Interestingly, in every case the parties chose to select their magistrate, rather than allowing the Court to choose resuling in the following distribution:

  • Judge Burke - 7
  • Judge Hall - 3
  • Judge Thynge - 2

These numbers are quite preliminary as the majority of the VAC cases have yet to make their decision on a magistrate, but it will be interesting to see how these numbers change and what effect, if any, it will have on case management in the district.

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Chief Magistrate Judge Thynge to Retire Effective March 31, 2023

Andrew E. Russell, May 5, 2022
Congestion Magistrate Judges

Sunset in Lewes, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Andrew E. Russell, CC BY 2.0

The District of Delaware announced today that Chief Magistrate Judge Thynge is set to retire in March 31, 2023:

The United States District Court for the District of Delaware announces that Chief Magistrate Judge Mary Pat Thynge has informed the Court of her intention to retire, effective March 31, 2023, ending more than 30 years of exemplary judicial service.
Judge Thynge is the longest serving U.S. Magistrate Judge in the history of the District of Delaware. She began her tenure as a Magistrate Judge of the Court in June of 1992, after 16 years in private practice.
Judge Thynge will be sorely …
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Brush Up on Your Tennessee Local Patent Rules: Visiting Judge McCalla Brings Taste of Home Jurisdiction

Andrew E. Russell, May 3, 2022
Visiting Judges Congestion

Tennessee
Drew Beamer, Unsplash

Visiting Judge McCalla has taken about 13 patent cases so far here in Delaware, including some additional assignments late last month. A reader who has a case before him flagged an interesting point: Judge McCalla brings some of his home-state rules with him.

In his orders on hearings and scheduling conferences, for example, he directs the parties to either the Northern District of California local patent rules or the District of Tennessee local patent rules:

1. A video motion conference re: Motion to Dismiss (ECF No. 11) will be held . . .
2. The parties should refer to the Northern District of California or the Western District of Tennessee Patent Rules.

See, e.g., New York University v. Resmed, Inc., C.A. No. 21-813-JPM (D. Del. Mar. 28, 2022).

Likewise, scheduling orders in his cases may look a bit alien to regular Delaware practitioners, as he uses the District of Tennessee form. That form results in a two-page scheduling order like the attached, which focuses primarily on a few of the initial dates and guidelines, rather than ...

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Reminder: "Relevancy Redactions" Are Not a Thing

Andrew E. Russell, May 3, 2022
Discovery Dispute Document Production

REDACTED PAGE
Jeff Castellano

Judge Andrews resolved a discovery dispute yesterday where plaintiff challenged defendant's "relevancy redactions." According to the plaintiff:

[Defendant] DuBois routinely applied, and refuses to remove, so-called relevancy redactions to the few documents it has produced in this case. . . . The DuBois redactions that [plaintiff] Ecolab has challenged are not addressed to preserving any privilege and are improper, particularly in view of the protective order that serves to safeguard DuBois’ confidential information in this case.

Judge Andrews seems to have shot this down quickly, holding that the defendant cannot redact for reasons other than privilege:

ORDER: By no later than May 30, 2022, Defendant shall produce to Plaintiffs all documents redacted for reasons other than preservation of …
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