A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

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

As we noted recently, Chief Judge Stark has a practice of holding "§ 101 days," in which he hears oral argument on a number of § 101 motions all at once, each from a different case. He typically issues decisions from the bench regarding each motion—which is always exciting—and follows up later with a written decision.

At first it seemed that § 101 days tended to be fatal for the patents involved, but more recent hearings have shown otherwise.

On Friday, Chief Judge Stark posted the schedule and public access information for his next § 101 day, set …

Piper Saratoga Plane
Alan Lebeda, CC BY 2.0

Last week, Judge Andrews granted a motion for reargument in a products liability diversity action, permitting further argument on summary judgment after the Court had previously ended the case by finding against plaintiff at summary judgment.

In its original opinion, nearly a year ago, the Court found that a federal statute that limits products liability for aircraft parts manufacturers blocked recovery here, and entered a judgment for defendant on all claims.

Plaintiff's motion for reargument asserted that, in addition to bringing actions against defendant as a "manufacturer," it had asserted claims based on the defendant's role as a "rebuilder and seller" of airline parts, and then detailed an argument based on the statutory language, …

Given that we've devoted a good deal of coverage to redaction requests in the last few months, I thought it might be useful to present a brief primer on the procedure for actually requesting redactions to a transcript in the District of Delaware.

This procedure cannot be found in either either the local rules or the Court's CM/ECF procedures. Instead, it comes from the Court's "Policy on the Electronic Availability of Transcripts of Court Proceedings."

Under this policy the process begins when the court reporter dockets the transcript, which looks like this:

Screenshot 2021-03-04 143845.jpg
Nate Hoeschen

After that, things get a bit murky.

So I Have 21 Days to Request Redactions?

First off, that 21-day deadline ("Redaction Request Due 3/22") is actually …

Money
Pepi Stojanovski, Unsplash

It's a tough scenario: you think your opponent might have assigned away their patent rights, but you aren't exactly sure. And the only way you could know for sure is with information you don't have.

Most of the time in D. Del., disputes like this are addressed in a hearing transcript or an oral order. They don't make headlines, and they never hit Lexis or Westlaw, but they often provide helpful guidance for the future.

Yesterday, Judge Burke issued an oral order denying a request to compel a plaintiff to turn over its litigation funding documents. The defendants knew that the plaintiff had third-party litigation funding (and suspected that there might have been some assignment of …

Terracotta revetment with a griffin
The Met

Yesterday, Judge Noreika denied an early Section 101 challenge to two patents-in-suit, in light of a factual dispute regarding unconventionality of certain aspects of the claimed invention.

Although plaintiff managed to survive the § 101 motion, it failed to meet the relatively un-demanding standard for pleading direct infringement – a test that would have been satisfied if the plaintiff had simply "identified the . . . accused products and alleged that the accused products met 'each and every element of at least one claim' of the asserted patents, either literally or equivalently." ...

Calendar
Estée Janssens, Unsplash

As we previously mentioned, the Court has suspended all non-emergency jury trials until April 5, 2021, and has stated that, at least initially, it will permit only one jury trial to proceed at a time.

The Court tried repeatedly to re-start jury trials in November and continuing through early February—and got so far as jury selection—but ultimately all of the cases scheduled for trial either resolved or were delayed, mostly due to coronavirus concerns among the parties. At this point, the Court has recognized that, once jury trials restart, the trial calendar is looking extremely congested.

The Court Has Not Canceled All April Jury Trials (Yet)

Currently, there are two …

A sweetgum ball obliterated by a hatchet, a fate similar to that of plaintiffs' <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Temporary Restraining Order'>TRO</a>
A sweetgum ball obliterated by a hatchet, a fate similar to that of plaintiffs' TRO Andrew E. Russell, CC BY 2.0

The practice in Delaware has long been that calls to chambers are generally only appropriate in a relatively narrow range of circumstances, and "please decide my motion immediately" is not one of them.

It looks like one plaintiff's counsel may have learned this this hard way on Wednesday when they filed a TRO seeking to enforce an arbitration clause in an employment agreement, and then immediately called the court to urge that it receive immediate attention. Here is the Court's response, issued the same day as …

Artists rendition of the author patiently awaiting the return of jury trials
Artists rendition of the author patiently awaiting the return of jury trials We Don’t Deserve Dogs, Marten Bjork, Unsplash

This week brought to light yet another unexpected side effect of COVID-19 -- it's now harder to win a motion to bifurcate.

This interesting tidbit came to light in Judge Hall's opinion in Evertz Microsystems Ltd. v. Lawo Inc., C.A. No. 19-302, D.I. 259 (D. Del. Feb. 23, 2021). The defendant there moved to bifurcate the infringement and damages cases into separate trials near the close of fact discovery. In denying the motion, Judge Hall noted that the prejudice to the plaintiff, and strain on the Court, of holding two separate trials was greater than it would normally be because it was unlikely the second trial could be scheduled for years:

As the parties both know, this Court currently has an extremely congested docket. It would be difficult to schedule an additional trial in this action; thus, Evertz would likely have to wait additional years to have full resolution of its claims.

Id. at 3.

Its also worth noting that Judge Hall called out the "fairly litigious" nature of the case, with the parties "raising numerous discovery disputes before the Court" leading to concerns that "bifurcating and staying the issue of damages will result in (1) duplicate discovery requests and disputes as those already resolved and (2) new disputes over what is appropriately part of the liability phase versus the damages phase" that would further tax the Court." ...

Although the Pennypack factors for exclusion are notoriously difficult to meet, judges in D. Del. have been excluding late-disclosed theories more frequently than in the past.

Case in point: on Friday, Judge Andrews granted a motion to strike DOE theories asserted for the first time in an opening expert report. The plaintiff offered a number of excuses for disclosing the theories when it did—"it was only able to collect evidence to support its new DOE theories" after a COVID-delayed source code review, it lacked supporting evidence until a technical deposition in November 2020, and so on.

Judge Andrews not only rejected these excuses, but took it a step further—coming very close to finding that the plaintiff acted in …

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.