A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

On the Dire Consequences of Failing to Follow Standing Orders

Nathan R. Hoeschen, Jan. 27, 2022
Objections to R&Rs

Remember Me!
Sear Greyson, Unsplash

If you only occasionally practice in the district, you might be unaware of an old standing order on the procedure for objecting to R&R's. The unimaginatively titled "October 9, 2013 Standing Order for Objections Filed Under Fed. R. Civ. P. 72" contains requirements for filing objections that do not appear in either the local rules or FRCP 72.

Most of these requirements are simple logistical matters -- the length and timing of briefs, requiring courtesy copies, etc. A recent ruling from Judge Connolly, however, shows the imprtance of following these requirements precisely.

The defendant in In Personal Audio LLC v. Google LLC, C.A. No. 17-1751-CFC-CJB, D.I. 715 (D. Del. Jan 21, 2022) had lost a …

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February Jury Trial Update

Emily S. DiBenedetto, Jan. 26, 2022
Congestion COVID-19

Masks
Isaac Quesada, Unsplash

February Jury Trials

After completing all planned December jury trials uninterrupted by COVID-19, the January docket became lighter after the Court continued several trial dates to later this year due to COVID-19 concerns. One of these continued trials, a patent case, was rescheduled to February; the Court also has three other jury trials on the calendar for next month.

In December, the Court reauthorized the use of video and telephone conferencing pursuant to the CARES Act. Relatedly, Governor Carney reinstituted a mask mandate, requiring individuals in Delaware to wear masks while in public spaces, with select exceptions.

Review of December Jury Trials

In our November update, we identified five upcoming December jury trials. Three proceeded as …

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Judge Andrews Denies Request to Produce Un-Redacted Documents

Jeff Castellano, Jan. 25, 2022
Document Production

In a brief order issued last week, Judge Andrews denied a plaintiff's request that the defendant be ordered to re-produce tens of thousands of redacted documents from its production in unredacted form. According to the order, the defendant had produced 24000+ documents with redactions. The parties had agreed, via the protective order, that confidential information irrelevant to the case at hand or information not otherwise discoverable could be redacted.

REDACTED PAGE
Jeff Castellano

Nonetheless, plaintiff argued that the defendant's "voluntary production of the fully-redacted documents inherently admits that they contain responsive material … Something underneath these full-document redactions must be responsive, or [defendant] would not have produced the documents."

In reliance on a sworn declaration from defendant's attorney and his own review of a sampling of the redacted documents, Judge Andrews concluded that there was no basis on which to find the redactions were inappropriate:

After reviewing the unredacted version of Plaintiffs’ Exhibit A, I have concluded that [defendant's] justifications for its redactions to Exhibit A – that the first document pertained to a different product and that the second document and the redacted portions of the third document are covered by the work product doctrine and attorney-client privilege – are sound. [Plaintiff] has given me no reason to doubt that a review of the remaining redacted documents would produce similar results and no reason to question the trustworthiness of Mr. Barry’s sworn declaration.

Notably, defendant's counsel Mr. Barry stated in his declaration that he had "personally reviewed" all of the redacted documents and had identified 39 that were erroneously redacted. It appears that the declaration went some way to reassuring Judge Andrews that the redactions were not overdone. ...

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Judge Andrews: No Broad Rule 30(b)(6) Deposition Before Preliminary Injunction Hearing

Andrew E. Russell, Jan. 24, 2022
Preliminary Injunction Discovery

Bay Materials, LLC v. 3M Company, C.A. No. 21-1610-RGA (D. Del.) is a competitor patent infringement case where a smaller company is trying to prevent a larger competitor—3M—from allegedly copying its "flagship product," a "multilayer polymer sheet material" called "Zendura™ FLX."

The plaintiff moved for a preliminary injunction immediately upon filing the case, and the parties filed a stipulation agreeing to a discovery and briefing schedule. The parties disputed whether the defendant should be able to take an FRCP 30(b)(6) deposition of the plaintiff as part of the preliminary injunction discovery.

Defendant sought the 15-topic FRCP 30(b)(6) deposition to prevent plaintiffs' witnesses from "claim[ing] a lack of knowledge about relevant topics." Plaintiff argued that the notice was …

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Judge Noreika Tries New Summary Judgment Procedure in Light of Trend Towards "Shotgun Theories and Voluminous Submissions"

Andrew E. Russell, Jan. 21, 2022
Summary Judgment FRCP 56

Visualization of the average D. Del. judge's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Summary Judgment'>SJ</a> motion pile (circa 2021, pre-Judge Stark departure)
Visualization of the average D. Del. judge's SJ motion pile (circa 2021, pre-Judge Stark departure) Christa Dodoo, Unsplash

Last month Judge Noreika issued an order praising Chief Judge Connolly's ranking-based summary judgment procedure, and imposing a similar procedure—at least for one case.

Under his SJ procedures, Chief Judge Connolly addresses each party's motions in their ranked order, and if a single motion is denied, he may decline to consider all remaining motions.

Judge Noreika issued her order after the parties in the case, Dali Wireless, Inc. v. Commscope Techs. LLC, C.A. No. 19-952-MN (D. Del.), sought …

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Judge Noreika Provides Additional Guidance on Timing of Contentions, Markman Process

Jeff Castellano, Jan. 19, 2022
Scheduling Orders Contentions

As discussed in a previous post, Judge Noreika now requires that Markman briefing occur after the exchange of final infringement and invalidity contentions. But the Judge's oral orders setting forth that requirement did not expressly anchor the Markman process or the contention deadlines to any other dates in the overall schedule.

As we pointed out in our last post, it would make sense to set those deadlines late in the fact discovery period: "Although this order encourages parties to exchange claim construction positions 'early in the case,' it seems likely that parties will propose later Markman deadlines in addition to earlier final contention deadlines, to ensure that sufficient fact discovery has occurred to create meaningful final contentions."

Judge Noreika recently offered additional guidance along these lines regarding the relative timing of contentions, fact discovery, and claim construction...

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Court Rejects State Law Claims That Defendant Stole Cryptocurrency Mining Idea

Andrew E. Russell, Jan. 18, 2022
State Law Claims Preemption

Bitcoin
Dmitry Demidko, Unsplash

Judge Burke issued an R&R today on two things we don't see very often: a successful motion for judgment on the pleadings, and preemption of state law claims by federal patent law.

The case, Bear Box LLC v. Lancium LLC, C.A. No. 21-534-MN-CJB (D. Del.), involves a patent on more-energy-efficient cryptocurrency mining systems. One of the plaintiffs claims to have met one of the defendants at a conference and, later, confidentially disclosed his ideas for improved cryptocurrency mining. Then, he says, the defendants patented his ideas.

According to the Court, plaintiffs brought two correction-of-inventorship claims, plus three state law claims:

  • Conversion ("theft of inventions")
  • Unjust enrichment (claiming inventorship of plaintiff's invention) …
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Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

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Court Issues Permanent Injunction, Sidesteps Need for Analysis: "It Is Regrettable That the Parties Could Not Resolve This Without Me"

Andrew E. Russell, Jan. 14, 2022
Post-Trial Relief Congestion

Pipeline
Mike Benna, Unsplash

Judge Andrews resolved a request for a permanent injunction in a patent case today, in a way I haven't seen before.

In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the plaintiff won an infringement jury verdict in a trial last month.

The patents involve mixing gasoline with butane automatically, rather than through a process that involves manual intervention. The accused infringement involves the mixing of gasoline and butane on a pipeline.

Plaintiff immediately moved for a permanent injunction, and sought a hearing on the injunction on December 22 or 23, just before the holidays. The patent relevant to the permanent injunction expires in April …

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Don't Forget About FRCP 16 When Seeking Post-Deadline Amendment

Jeff Castellano, Jan. 12, 2022
Amended Complaint

FRCP 15 governs amendment to pleadings, so it would stand to reason that it would be the operative rule when seeking to amend a complaint. However, when seeking to amend after the deadline in the scheduling order, the movant must satisfy not only the relatively liberal requirements of Rule 15 but also the more exacting "good cause" standard of Rule 16. Unlike Rule 15, which permits amendment in the absence of undue delay, bad faith, or dilatory motive, Rule 16 requires diligence by the party seeking amendment.

Analog Clock
None, Ocean Ng, Unsplash

A recent ruling by Judge Fallon demonstrates the danger of ignoring Rule 16's requirements when seeking amendment after the deadline. The plaintiff in NRT Tech. Corp. v. Everi Holdings Inc., C.A. No. 19-804-MN-SRF sought to amend its complaint, asserting Walker Process and sham litigation antitrust claims, almost a full year after the expiration of the amendment deadline.

Judge Fallon noted that although plaintiffs "bear the burden of showing that they exercised diligence in seeking the proposed amendment under Rule 16(b)(4)," their motion "does not address the applicable good cause standard for motions to amend filed after the deadline."

Plaintiffs apparently argued that defense counsel should have alerted them of the applicability of Rule 16, but Judge Fallon rejected that ...

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