A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

A Play in Which Lawyers Argue About What an "Argument" Is

Nathan R. Hoeschen, Feb. 22, 2021
Claim Narrowing

Continuing in the vein of last week's discussion of claim narrowing, Judge Andrews issued an interesting opinion on Friday discussing the number of invalidity arguments a defendant was allowed to present at trial.

Although we still occasionally see orders in the district limiting the number of prior art references a defendant is allowed to assert, it has become increasingly common in recent years to see the Court limit the number of prior art arguments or combinations or defenses an accused infringer can assert -- either instead of, or in addition to, a set number of references.

The question of how to count "arguments" has generated a fair amount of opinions in the district, with slightly varying results. Judge Burke gave …

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Home Is Where the Heart Is Incorporated

Nathan R. Hoeschen, Feb. 19, 2021
Motion to Transfer

Typical Delaware Corporate Headquarters
Typical Delaware Corporate Headquarters Annie Spratt, Unsplash

Moving to transfer a case out of Delaware is tough. This is doubly true when Delaware is the Plaintiff's "Home Turf," in which case its choice of forum is entitled to "paramount consideration." See Intellectual Ventures I LLC v. Altera Corp, 842 F. Supp. 2d 744, 754 (D. Del. 2015).

We've previously covered the split in district on the question of whether Delaware is necessarily the home turf of every entity incorporated here, or if a plaintiff needs more than a P.O. box and a certificate on file with the Secretary of State for its choice of venue to warrant "paramount consideration."

As he noted in FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-LPS, D.I. 34 (D. Del. Feb. 10, 2021), Judge Stark "believe[s] that an entity's state of incorporation is part of its home turf" regardless of any other connections it may or may not have with the district. See id. at 6-7.

The interesting bit about the FG decision is the Judge Stark's analysis was unaffected by the fact that the Plaintiff had admittedly chosen to assert the same patents against another Delaware entity in a different district (W.D. Tex.) just one week prior. See id. n.3. Although defendant pointed out that this pretty strongly suggested that the plaintiffs interest in litigating this particular suit in Delaware was more a product of strategy than a commitment to litigating in its beloved state of incorporation, Judge Stark was unmoved and proceeded to deny the motion to transfer.

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Some Analysis of a Motion for Reconsideration that Actually Worked

Andrew E. Russell, Feb. 18, 2021
LR 7.1.5 Reconsideration

Light Bulb
Alessandro Bianchi, Unsplash

While motions for reconsideration are frequently filed, they are not frequently granted. Typically they are shut down pretty easily. The rules put the moving party in a box, because parties can neither repeat arguments from their brief nor offer new arguments.

These motions are sometimes granted, though, and Judge Connolly granted one such motion late last month. I thought it would be interesting to look at what worked.

What happened?

The Court had originally granted a motion to exclude expert testimony from a defendant's infringement expert, on the grounds that the expert had testified that the presence of additional structure in a means-plus-function claim results in non-infringement.

We discussed this opinion at the time, pointing out that violating a well-established rule like that one is a great way to get an expert opinion excluded. ...

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Don’t Waive Your R&R Objections!

David M. Fry, Feb. 17, 2021
R&R Indirect Infringement

Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.

The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.

Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:

Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.

Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …

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Early Summary Judgment or "Pig in a Poke"?

Jeff Castellano, Feb. 16, 2021
FRCP 56 ANDA

Pigs
Kenneth Schipper Vera, Unsplash

Judge Andrews recently rejected the requests of several defendants in a Hatch-Waxman (or "ANDA") case to file an early motion for summary judgment, calling the request a "pig in a poke."

Judge Andrews, like most judges in this District, does not as a matter of course permit dispositive motions in ANDA cases or early dispositive motions in general. Nonetheless, two defendants in Astrazeneca AB v. Alembic Pharms. Ltd., C.A. No. 20-202-RGA, sought leave to file an early motion for summary judgment of no infringement under the doctrine of equivalents (plaintiff's only infringement theory).

Judge Andrews made short work of the request, first noting that the

defendants do not make a …
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Claim Narrowing in Patent Cases: Some Data on Limits on Asserted Claims and Prior Art References

Andrew E. Russell, Feb. 15, 2021
Contentions KB

Case narrowing is an issue that comes up in most patent cases at some point, whether in the scheduling order, as a discovery dispute, or at the pretrial conference (or, possibly, all three).

Average amount of prior art references each defendant seeks to assert.
Average amount of prior art references each defendant seeks to assert. Cristina Gottardi, Unsplash

When requested, judges in Delaware typically implement an initial two-stage reduction in asserted claims and prior art references, with the first stage occurring before claim construction, and the second afterward.

Of course, sometimes they will implement other schedules depending on the needs of the case and the requests of the parties. And, for cases that reach a pretrial conference, the Court often imposes an additional limit on the number of claims for …

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Chief Judge Stark Suggests Requirement for Copyright Infringement Contentions, Similar to Patent Infringement Contentions

Andrew E. Russell, Feb. 12, 2021
Infringement Contentions Copyright

Books
Alfons Morales, Unsplash

In May 2020, West Publishing and Thomson Reuters filed a copyright action against ROSS Intelligence LLC, alleging that ROSS (through a third party) scraped content from WestLaw to start its own Artificial-Intelligence-based legal research platform. (ROSS has since ceased operations but persists solely to litigate this case.)

Down the line, I imagine the case may raise some interesting questions about AI and copyright. For example, what are the copyright implications of ROSS's use of Westlaw's copyrighted compilation of otherwise public domain materials to train an AI? Isn't that fair use (talk about transformative!)? If not, what are the damages? And so on.

For now, ROSS has moved to dismiss on the ground that West failed to …

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Don't Count on Extra Pages in D. Del.

David M. Fry, Feb. 10, 2021
Page Limits Local Rules

Paper
ron dyar, Unsplash

It's hard to get a significant increase to the normal briefing limits in D. Del., even if both sides agree. Sometimes a judge will grant a small increase (if there's a good reason), but for the most part, they're reluctant to grant requests that will have a large impact on their workload.

Case in point: In a multi-defendant ANDA case that went to trial last month, the parties submitted a post-trial briefing schedule asking Chief Judge Stark to allow "in excess of 500 pages of briefing and an additional almost 500 pages of proposed findings of fact[.]"

Judge Stark quickly rejected the proposal and ordered shorter limits. And although he allowed "[a]ny party that strenuously objects …

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Can You Serve Process on a Foreign Defendant by Email? Maybe.

Jeff Castellano, Feb. 9, 2021
Litigation FRCP 4

Service of process on a foreign defendant can be tricky. If the foreign defendant will not agree to waive service under Rule 4(d), a plaintiff is left with methods of service under Rule 4 that are often complex and time-consuming, and come with no guarantee that the service will ultimately be effective.

And while Rule 4 does not set a deadline for service of process on foreign defendants, as it does for domestic defendants, the time to serve is not unbounded. Helpfully, Rule 4 provides a fallback that opens up the door to other--perhaps less onerous--methods of service, including simply sending an email (in the right circumstances).

When Can You Serve by E-mail?

She just served a defendant in Taiwan
She just served a defendant in Taiwan Brooke Cagle, Unsplash

Last week Magistrate Judge Hall permitted service on a foreign defendant by email pursuant to FRCP 4(f)(3), which provides that, in addition to various other methods of service, service of process may be achieved "by other means not prohibited by international agreement, as the court orders."

As Judge Hall recounted, plaintiff DivX LLC first attempted service by certified mail on Taiwanese defendant Realtek Semiconductor Corp., but Realtek apparently refused to accept the mail delivery. ...

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FRCP 30(b)(6) Amended; Still Doesn't Provide Rules for Objections

Andrew E. Russell, Feb. 8, 2021
Depositions Litigation

FRCP 30 was amended in December 2020 to add a meet-and-confer requirement:

FRCP 30(b)(6) Amendment
U.S. Government Publishing Office

The amendment also suggests (by removing "then") that a party may designate its 30(b)(6) witness as part of the parties' discussions before the notice goes out.

No revised PDF of the rules is available yet, but Cornell's very-frequently-relied-upon page has already been updated.

No Change to Objection Procedures

One issue that commonly arises here in Delaware is that the parties serve an FRCP 30(b)(6) notice but do not receive objections until immediately before the deposition, leaving no time to resolve the issues.

Why is that? Because there is no deadline in the FRCP or the D. Del. local rules for objections to a …

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