A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Filed Under: Things That Make You Say "Huh."

Andrew E. Russell, Dec. 9, 2020
SJ MIL

Lightbulb
Person Catching Light Bulb, Júnior Ferreira, Unsplash

This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.

Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").

So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:

I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …
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Judge Andrews Strikes Down "Frivolous" Privilege Claims

Jeff Castellano, Dec. 8, 2020
Privilege Discovery Dispute

Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."

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Plaintiff Throws (Almost) Everything at § 101 Motion to Dismiss, Loses

Andrew E. Russell, Dec. 7, 2020
MTD § 101

I couldn't find a picture of
I couldn't find a picture of "teleorthodontics" H. Shaw, Unsplash

Today, Judge Connolly held ineligible a patent directed to "teleorthodontics," i.e., a business method for practicing orthodontics remotely through the use of 3D scans of a patients' mouth.

The outcome is not all that unusual—Judge Connolly characterized the patents as essentially "do it with a computer" patents for orthodontics, where the patent claims performing a traditionally offline activity remotely using conventional computers and commercially available 3D scanners.

And, as the Court noted, other courts have held telehealth business method patents ineligible under § 101. Here, according to the Court, the patents at issue simply applied available commercial technology to the abstract idea of connecting patients and orthodontists …

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District Judge Reverses Magistrate, Orders Production of Purported Common Interest Material

Andrew E. Russell, Dec. 6, 2020
FRCP 72 Common Interest Privilege

Corporations, looking down at the tattered remains of their common interest privilege
Corporations, looking down at the tattered remains of their common interest privilege Foggy skyscrapers, Matthew Henry, Unsplash

When magistrate judges are referred a dispositive matter, they issue an R&R that goes to the district judge. In Delaware, an R&R typically notes the objection period at the end, and the losing party typically (but not always) files objections.

When magistrate judges are referred a non-dispositive matter, they issue an order (and possibly an opinion). The order typically does not mention any review period or process for review.

What parties often forget is that you can object to a magistrate judge's order just as easily as you can to an R&R under FRCP 72. And, in fact, the District Court …

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Court Raises Doubts About Feasibility of February 1 Jury Trial in the District of Delaware

Andrew E. Russell, Dec. 3, 2020
Bench Trial COVID-19

In light of the ongoing delays in restarting patent jury trials, and the rising COVID-19 numbers nationwide, it's no surprise to see Judge Andrews recognize that parties may be better served by having a bench trial in the near future rather than waiting an indeterminate time for a jury to be available:

ORAL ORDER: The court doubts that a jury trial will be feasible on Feb. 1. On the other hand, a bench trial would be very feasible. The parties are requested to discuss with each other whether they would mutually agree to a bench trial on Feb. 1, and, if they both do agree, report that fact to the court by no later than Dec. 9. If one …
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Judge Andrews Gives Parties Homework to Discourage Discovery Disputes

Nathan R. Hoeschen, Dec. 3, 2020
Discovery Dispute Sanctions

Excellent, now set it on fire . . . the hoop
Excellent, now set it on fire . . . the hoop Border Collie jumping through the hoop at NZDAC Gore New Zealand, Andrea Lightfoot, Unsplash

In Delaware, there are a few hoops to jump through if you want to bring a discovery dispute before the Court. Local Rule 7.1.1 is the most basic, and requires the parties to make "reasonable efforts" to resolve their disputes, including verbal communications between opposing Delaware Counsel.

Next, each Judge has their particular procedures for bringing the dispute, either requiring a joint phone call to chambers (Judges Connolly, Noreika, and Andrews) or a joint letter outlining the issues and confirming that the parties have met and conferred (Judge Stark). In either case, the parties …

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Judge Connolly Rejects Joint Request for Video Hearing

David M. Fry, Dec. 2, 2020
COVID-19

Phone Booth
Phone booth in London city centre, Katarzyna Pracuch, Unsplash

Sometimes it's better to be heard than seen. Although most of the D. Del. judges have been holding hearings by video since March, Judge Connolly has consistently held his hearings and conferences by telephone.

Yesterday, the parties in one of his cases filed a joint request to hold a Markman hearing by video instead of by phone. They explained their rationale (to "allow for more effective and efficient presentations" and help direct the court's "attention to exhibits and demonstratives"), and offered to handle all of the logistics.

The court was not interested. Judge Connolly issued a one-sentence oral order the same day, saying only that "the Markman hearing will be held by telephone."

What's the takeaway? It's been almost nine months since the court issued its first COVID-related standing order, and the judges have had plenty of time to hone their procedures. It might not hurt to ask, but don't expect them to change what's been working.

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Chief Judge Stark Confirms $137m Damages Award on 65% Royalty Theory, But Reverses Jury Finding of Willfulness

Andrew E. Russell, Nov. 30, 2020
Damages Willfulness

Dollar Bills
Sharon McCutcheon, Unsplash

Chief Judge Stark today released his opinion on post-trial motions in Roch Diagnostics Co. v. Meso Scale Diagnostics, LLC, C.A. No. 17-189-LPS (D. Del.), following a jury trial last year that resulted in a $137m verdict and a finding of willfulness.

Damages Award on 65% Royalty Theory Confirmed

The Court denied a post-trial motion to undo the jury's damage finding, which equated to an approximately 65% royalty rate (or more, depending on the royalty base).

Interestingly, the jury awarded damages after a one-sided royalty rate presentation by Roche, the accused infringer. The Court had previously excluded the patentee's damages expert's opinion as to the royalty rate, because it used the wrong date …

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Trials? Maybe?

Nathan R. Hoeschen, Nov. 20, 2020
COVID-19

anastasiia-chepinska-OBmBHmrc3pw-unsplash.jpg
Local business closed during the coronavirus covid-19 quarantine, Anastasiia Chepinska, Unsplash

Like the rest of the nation, Delaware is presently descending into an apocalyptic vortex of pestilence and despair. As we've chronicled in numerous posts, this is having no small effect on the business of conducting trials. Thankfully, however, a few orders out this week suggest that there's still some hope that trials scheduled in the very near time might yet go forward.

The first of these was in Guardant Health, Inc. v. Foundation Medicine, Inc., C.A. No. 17-1616-LPS-CJB. This case had been set to be Judge Stark's first post-pandemic patent jury trial before being mysteriously continued earlier this month.

Today, however, the Court issued an …

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