A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

Here's What Has Changed in Judge Burke's New Form Scheduling Order

Andrew E. Russell, March 23, 2022
Concise Statement of Facts Case Narrowing

New
Nick Fewings, Unsplash

Yesterday, Magistrate Judge Burke released a new form scheduling order. There are redlines embedded below.

Here is a quick rundown of some of the changes in the patent scheduling order:

  • Added from Judge Andrews' scheduling order:
    • A requirement for plaintiffs to provide licenses and settlement agreements as part of their disclosures
    • A prompt in the scheduling order for the parties to consider a staged reduction of asserted claims and prior art, before and after claim construction (this comes up a lot)
  • Added from Judges Connolly, Noreika, and/or Hall's scheduling orders:
    • A requirement to include chart at the end listing the deadlines all together (convenient!)
    • A Concise Statement of Facts requirement for summary judgment
    • He …
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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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Always Leave the Court Enough Time Between SJ/Daubert Briefing and the Pretrial Conference

Andrew E. Russell, March 21, 2022
Stipulation KB

Caution Tape
Hiroshi Kimura, Unsplash

A reader helpfully flagged a stipulation denial by Judge Noreika last week (thank you!). The parties had a pretrial conference scheduled for July 18, 2022, and stipulated to move a number of deadlines, including for Daubert briefing. They moved the Daubert motion reply deadline from May 20, 2022 (52 days before the PTC) to June 10, 2022 (38 days before the PTC).

Judge Noreika denied the stipulation without comment. They smartly refiled, but without the Daubert deadline adjustment. This time it went through just fine, albeit with a comment stating that the Daubert deadlines were not moving:

SO ORDERED re 192 STIPULATION TO EXTEND TIME . . . IT IS FURTHER ORDERED that the Daubert motion/briefing schedule set by D.I. 134 shall NOT be extended ...
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Judge Stark Sworn In at Federal Circuit, Still Has Some Cases in Delaware

Andrew E. Russell, March 19, 2022
Congestion DED

Judge Stark's Swearing In Ceremony
U.S. Court of Appeals for the Federal Circuit

According to the Federal Circuit's website on Thursday, Judge Stark has been officially sworn in to the United States Court of Appeals for the Federal Circuit. According to their post, he was sworn in on the Lincoln Bible, held by his wife Beth Stark. Congratulations again to Judge Stark!

As we discussed on Thursday, the Court is still in the process of re-assigning Judge Stark's cases, with the majority so far going to other D. Del. Article III judges. Judge Stark still has a number of cases, including for example C.A. No. 19-01938-LPS, where he issued an order on Monday asking for briefing following a status report from the …

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No, You Probably Should Not Include a Certificate of Service in that (Public) Filing in D. Del.

Andrew E. Russell, March 16, 2022
NOS FRCP 5

Waste Basket
Gary Chan, Unsplash

It's a bit of a slow news day for the subjects we typically cover, so I wanted to write about an exciting and under-covered topic: Certificates of Service in the District of Delaware!

A Certificate of Service (COS) is a document at the end of the filing that says who the document was served on. Back in the days of paper filing, it was important to show who received a copy of a document.

Now we have CM/ECF, the Court's electronic filing system, which automatically generates a Notice of Electronic Filing (NEF) when anything is filed. Federal Rule of Civil Procedure 5(d)(1)(B) specifically says that "[n]o certificate of service is required when a paper is served …

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Judge Burke Declines to Find Non-Infringement in Daubert Context; Gives Thoughts on Proliferation of Summary Judgment Motions

Andrew E. Russell, March 15, 2022
Summary Judgment Non-Infringement

These dandelions are popping up like SJ motions!
These dandelions are popping up like SJ motions! Jonne Huotari, Unsplash

Today, in Personal Audio v. Google, C.A. No. 17-1751-CFC-CJB (D. Del.), Judge Burke addressed an apparent request for the Court to find non-infringement based on a claim construction issue, which came up for the first time in the context of a Daubert motion to exclude expert testimony.

The Court expressed some initial sympathy for the non-infringement argument, suggesting it may have had some merit:

[T]he Court notes more generally that the issue underlying Defendant’s Motion is Defendant’s assertion that the claim construction for “sequencing file,” . . . requires that “you can’t use a copy of the sequencing file to control playback and respon[d] to …
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Judge Stark Reassignments Start

Andrew E. Russell, March 11, 2022
Congestion Vacant Judgship

Following the Court's announcement of a transition plan last week, the Court issued an implementing standing order on Wednesday, and today we saw a wave of reassignments from Judge Stark cases—all to Judge Andrews.

A number of cases were re-assigned, including:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, C.A. No. 15-1168 (D. Del.)
  • Future Link Systems, LLC v. Amlogic Holdings, Ltd., C.A. No. 21-634 (D. Del.)
  • Finjan LLC v. Trustwave Holdings, Inc., C.A. No. 20-371 (D. Del.)
  • Celanese International Corporation v. Anhui Jinhe Industrial Co., Ltd., C.A. No. 20-1775 (D. Del.)

In each case, Judge Andrews ordered the parties to produce a status report within …

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Just a Miscellaneous Issue

Nathan R. Hoeschen, March 10, 2022
Motions In Limine

Just some miscellaneous issues, nothing to see here
Just some miscellaneous issues, nothing to see here A nice pile of junk, Lance Grandahl, Unsplash

I pretty frequently see pretrial orders filed with a section labeled "miscellaneous issues" or "additional matters" or, someday, hopefully, "fiddle faddle."

It's a good place to put questions for the Court that might not fit anywhere else -- e.g., whether a witness may testify remotely, or if a large and unwieldy exhibit may be brought in for the jury.

Sometimes, you'll see issues that are a bit more contentious -- usually something procedural that doesn't quite rise to the level of a motion in limine. Naturally, this represents something of a procedural gray area, especially for those judges that place limits …

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Stay Motion Denial Results in Guidance for the Parties—and for the PTAB

Andrew E. Russell, March 9, 2022
Motion to Stay IPR

Stay!
Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPR is instituted.

An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:

ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly ...
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D. Del. Announces Plan for Judge Stark's Departure That Includes Cancelling Mediations in Cases Before All Judges

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

The gloves are off.
The gloves are off. Arisa Chattasa, Unsplash

The Court announced it's plan for Judge Stark's departure today, and it includes some bold moves.

All attorneys who practice in D. Del. should read the announcement in full—it's not that long—but here are some highlights.

Pending Mediations Will Be Canceled

Unlike previous transitions, most district court cases will be impacted, because magistrate judge referrals for mediation and all pending mediations will be canceled except in select instances:

Other than mediations in bankruptcy appeals or unless specifically directed otherwise by the Court, all referrals to Magistrate Judges for alternate dispute resolution will be vacated and all currently scheduled mediations will be canceled.

Thus, mediations in non-judge-Stark cases will be canceled. …

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