I love a 1782 Application. It's like watching a foreign film -- you get to learn all these neat little tidbits about other countries and ponder what it might be like to live and die as a Moldovan Lawyer.
Huh, everyone wears hats hereAI-Generated, displayed with permission
Judge Williams decided one such application related to a suit in that most exotic of locations - Germany.
The applicant in In Re Ex Parte Application of Nokia Techs., C.A. No. 23-1395-GBW (D. Del. Apr. 18, 2024) (Mem. Order) was seeking source code and other docs from a little mom and pop shop called Amazon, for use in pending and contemplated German infringement proceedings.
Goodbye, inconvenient 30(b)(6) testimonyAI-Generated, displayed with permission
FRCP 30(b)(6) allows a party to notice the deposition of a corporation or other organization on a list of topics. That organization then presents one or more designees to testify on its behalf at deposition. The designee's testimony is treated as that of the corporation.
At trial, it's not unusual for a party to want to play the 30(b)(6) deposition testimony of an opposing party, even if the designee who gave the testimony also happens to be testifying as a fact witness.
Why? Because, often times, the party got exactly what they wanted out of the 30(b)(6) witness on some topic, and if they play the video they can be assured that …
Judge Williams dealt with an interesting indefiniteness argument this week, which doesn't appear to have been previously addressed by the Federal Circuit or a Delaware Court.
The issue arose in construing the term "real-time"—which is the sort of term that frequently sees an indefiniteness challenge. The defendant in B.E. Tech., L.L.C. v. Twitter, Inc., C.A. No. 20-621-GBW (D. Del. Feb 13, 2024) (Mem. Op) made all the usual arguments that the scope of the term was unclear—did it include something happening minutes later, hours, years!?—which Judge Williams rejected citing numerous cases successfully construing "real-time."
The defendant also raised the novel (to Delaware) argument that the term, which appeared only in a dependent claim, was indefinite because it was not clear what it added to the independent claim.
The independent claim was your classic software gobbledy-gook complete with "one or more servers" and selections "based at least on information." I won't bore you with it, but the thrust was that you use cookies to send targeted ads.
The gist of the defendant's argument was that this independent claim necessarily involved "real-time" ad-service. So, a person seeing a dependent claim that added "real-time" would be confused, hence, indefiniteness.
Judge Williams disagreed, finding the claim term not indefinite:
Defendants provide no authority supporting the proposition that a Court should find a dependent claim indefinite when it claims overlapping subject matter with either an independent claim or another dependent claim. Indeed, the Court has found no authority supporting this proposition, and voluminous authority rebutting it. The Court follows this line of authority: that two claims may have the same meaning does not inherently render them indefinite. Thus, Defendants' primary argument fails as a matter of law.
Id. at 5-6 (internal citations omitted).
Although unsuccessful here, it's a neat argument that I was surprised I hadn't seen before. We'll keep you in the loop if it comes up again.
There are many things to love about Delaware. There's the majestic beauty of the Brandywine. The excitement of tax-free shopping. The award-winning mollusk collection at the natural history museum. The easy train access to other cities with more than 6 restaurants. It is truly a special place.
Living the dream, babyAI-Generated, displayed with permission
All this is to say that, if I was to sue someone, I'd want to do it in Delaware. Sadly, that's not always possible.
Such is the lesson of ACCO Brands USA LLC v. Performance Designed Products LLC, C.A. No 23-437-GBW, D.I. 18 (D. Del. Jan. 17, 2024). ACCO was a downhome Delaware company (*cough* headquartered in Illinois *cough* …
Watch out for what may be in that draft scheduling order...AI Generated, displayed with permission
In International Business Machines Corporation v. Zynga Inc., C.A. No. 22-590-GBW (D. Del.), the parties agreed in the scheduling order to a rather vague set of case narrowing provisions:
On November 30, 2023, Plaintiff shall perform a first narrowing of the number of asserted claims. On December 7, 2023, Defendant shall perform a first narrowing of the number of asserted invalidity references.
. . . On February 28, 2024, Plaintiff shall perform a second narrowing of the number of asserted claims. On March 5, 2024, Defendant shall perform a second narrowing of the number of asserted invalidity …
I have no idea what the accused product looks like, but here is a "viral whole-genome sequencing experiment."National Cancer Institute, Unsplash
Last month, Judge Williams granted a permanent injunction in Natera Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW (D. Del. Nov. 21, 2023). The Court unsealed the opinion on Friday, and I thought there were enough interesting things about it to warrant a short post.
The Court granted the injunction only in part, and permitted the defendant to continue using the personalized cancer monitoring product, referred to as "PCM," for "ongoing clinical trials, for updating old studies undergoing peer review, and for limited quality control." The parties also agreed that the injunction should exclude use …
Many things find their way onto an exhibit list that are not clearly admissible, or even exhibits in the quotidian sense. The rules are often vague about the propriety of presenting things like prior pleadings and discovery responses, much less the mechanism for doing so, and thus its fairly common to see all these and the kitchen sink placed on an exhibit list. Once there, they mostly molder, unremarked upon, until they happen to become relevant enough to spark a dispute.
I'm usually pretty harsh on the quality of these AI drawings, but I think this one is a bangerAI-Generated, displayed with permission
Last week (whilst I was on vacation acquiring a flu that dogs my every step like grim death) Judge Williams set forth a pretty clear rule prohibiting the inclusion of privilege logs on an exhibit list:
The Court grants-in-part Milwaukee's motion to exclude the privilege logs, but denies the remainder of Milwaukee's motion without prejudice. The privilege logs are not relevant because the logs make no material fact more or less likely. Even if Milwaukee were to have waived privilege with respect to its clearance program, the privilege logs would not be relevant because the mere assertion of privilege is "unremarkable and irrelevant."
Persawvere, Inc. v. Milwaukee Elec. Tool, Corp., C.A. No. 21-400-GBM, at 6 (D. Del. Nov. 21, 2023) (Mem. Ord).
The parties raised the issue via a MIL seeking to remove the log from the exhibit list and to prohibit the playing of any testimony wherein deponents had claimed privilege. The whole thing was part of a larger dispute about waiver of privilege over testing of the accused products. Judge Williams granted the motion as to the privilege log itself (by my quick search, the first ruling on the issue in Delaware) but denied it as to the testimony, noting If the [testing] is put at-issue at trial, Persawvere's introduction of deposition testimony that includes a deponent asserting privilege may become relevant." Id.
It's always good to know where the lines are. Today, Judge Williams awarded attorneys fees after the plaintiff in a Defend Trade Secrets Act action maintained an "objectively specious" argument after the close of fact discovery:
A claim is objectively specious where there is a complete lack of evidentiary proof from the party suing. . . . [T]he Court agrees with [defendant] Backer that [plaintiff] ZIM litigated this matter with knowledge that its claims were objectively specious. While Backer contends that ZIM knew that its claims were objectively baseless when it filed the Complaint, the Court finds that ZIM understood that its claims were objectively specious by the close of fact discovery on January 12, …
Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.
We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:
ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court …
Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."
Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.
Uh Oh - An Emergency Extension Motion Fails
That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.). …
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