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Intellectual Property

Court Gives Parties in 11 Patent Cases the Choice to Consent to Magistrate Judge Burke, or Get a Random Visiting Judge

Andrew E. Russell, Jan. 18, 2023
Visiting Judges Congestion

Roll the Dice
Leon-Pascal Janjic, Unsplash

Since 2021, Judge Connolly has occasionally issued orders asking parties to either consent to a magistrate judge or have their case re-assigned to a visiting judge. The parties in three out of five of that first round of cases consented, and we've seen several rounds of these orders since then.

The Court also offered parties a similar choice in the wake of the departure of Judge Stark, before Judge Williams was confirmed. I haven't seen hard numbers on this, but in May of last year we estimated that around 20% of those cases consented rather than waiting for the new district judge and risking re-assignment to a visiting judge.

These consent-or-visiting-judge referrals have continued through Judge …

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Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.

The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:

  • December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
  • December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
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No, You Can't Use One Date for a Royalty Calculation and Another for the Hypothetical Negotiation, Without Evidence of Earlier Infringement

Andrew E. Russell, Jan. 5, 2023
Expert Witness Damages

Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . .
Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . . Luca J, Unsplash

It seems like people are always messing up with patent damages experts. There are just a lot of ways to get tripped up on damages, and—obviously—big incentives to take risks to drive damages numbers up or down.

We had another example of that on Monday, when visiting Judge McCalla granted a Daubert motion and excluded testimony from an expert who applied a later date for the start of infringing sales for the royalty calculation, and an earlier date for the hypothetical negotiation. The expert apparently used a December 2014 date for his royalty calculation:

Wonderland argues that neither Evenflo nor Mr. Peterson presented evidence of any manufacture or testing that occurred at the dates that Mr. Peterson suggested. . . . Wonderland supports its assertion by pointing to sections of Mr. Peterson’s report and deposition in which Mr. Peterson . . . uses December 2014 and not an earlier date as the starting point for calculating royalty damages based on his hypothetical rate. . . .

But the expert used an earlier date for the reasonably royalty calculation, arguing that the earlier date is when the infringement actually began:

When using a hypothetical negotiation to assess damages, “the date of the hypothetical negotiation is the date that the infringement began.” . . . Mr. Peterson asserts that a date falling between December 2013 and April 2, 2014 “more naturally aligns with the actual date of first infringement.” . . .

But the Court found that the party had failed to put forth evidence of the earlier date, and ...

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On the Importance of Consistency

Andrew E. Russell, Dec. 30, 2022
Privilege Objections to R&Rs

Up Down Arrow
愚木混株 cdd20, Unsplash

We got a good "what not to do" example today, relayed in an opinion by Judge Williams.

In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).

As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:

In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).

Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on

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Finding Short Meet-and-Confer Did Not Show Good Faith, Judge Noreika Orders In-Person Meet-and-Confer by Lead Trial Counsel

Andrew E. Russell, Dec. 28, 2022
Meet-and-Confer Claim Construction

Attorneys at Table
AI-Generated, displayed with permission

This is an interesting order from earlier this month that we never had a chance to post about.

In Ecobee, Inc. v. EcoFactor, Inc., C.A. No. 21-323-MN (D. Del.), the parties had a Markman hearing scheduled for December 8. As she often does, in the leadup to the hearing, Judge Noreika issued an order directing lead counsel for the parties to meet-and-confer to reduce the number of disputes:

ORAL ORDER . . . IT IS HEREBY ORDERED that, on or before 12/1/2022, local and lead counsel (i.e., those attorneys that will be leading trial) for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the …
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Judge Andrews Splits Counterclaim Patents into Separate Trial

Andrew E. Russell, Dec. 21, 2022
Trial Case Dispositive Motions

Kiwi Split in Half
engin akyurt, Unsplash

In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.

During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.

The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed …

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Another Order to Produce Litigation Funding Discovery—This Time Against What Looks Like a Practicing Entity

Andrew E. Russell, Dec. 5, 2022
Litigation Funding Discovery Dispute

Money
Pepi Stojanovski, Unsplash

Last week, Chief Magistrate Judge Thynge issued an opinion addressing a motion by accused infringers to compel the patentee to produce litigation funding discovery and opinion letters relating to the patents-in-suit.

While it involves litigation funding discovery, this case is a bit different from the recent Mavexar hearings. Here, the patentee is MHL Custom, Inc. who, it appears, is a practicing company and not an NPE. Beyond that, the case is still active (unlike some of the Mavexar cases) and the discovery is sought by the defendant, not the Court itself. In other words, this is a more typical ruling.

But the opinion is still notable. The Court granted the accused infringers' motion for three categories …

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Amicus Brief Mentions Backertop's Failure to Disclose Mavexar Under C.D. Cal. Rules; Backertop Tries to Fix It

Andrew E. Russell, Dec. 1, 2022
Mavexar Litigation Funding

I'm not sure what to make of the name
KWON JUNHO, Unsplash

We mentioned the other day that Backertop Licensing LLC, one of the Mavexar-related LLCs, had filed two new cases in the Central District of California. We talked about how the C.D. Cal. requires disclosure of parties with a pecuniary interest, and how Backertop had not disclosed Mavexar.

Yesterday, the HTIA filed an amicus brief at the Federal Circuit that pointed this situation out (citing our post!):

In the past week alone, an entity that appears related to Mavexar (Backertop Licensing, LLC) filed suit without disclosing Mavexar’s financial interest, despite a local rule requiring disclosure of “all persons … and corporations … that may have a pecuniary interest in the outcome of the case.”

Also yesterday, Backertop filed new ...

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Six Amicus Briefs Filed in Support of Chief Judge Connolly's Litigation Funding Orders

Andrew E. Russell, Dec. 1, 2022
Mavexar Litigation Funding

Artist's depiction of amicus attorneys standing guard outside of the District of Delaware
Artist's depiction of amicus attorneys standing guard outside of the District of Delaware AI-Generated, displayed with permission

There has been so much activity in the Mavexar cases this week that it's hard to keep up. Over the last two days, various parties have requested leave to file a total of six amicus briefs in response to the Mavexar petition for a writ of mandamus in the Nimitz case, and the respondent filed their brief as well.

All of the briefs were great, and many repeat some of the same arguments. I thought it might be worthwhile to take a spin through them and mention a few notable or unique points in each.

(If you need an overview, check out our …

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Chief Judge Connolly Comes Out Swinging, Issues Searing 78-Page Opinion Rebutting Petition for Writ of Mandamus

Andrew E. Russell, Nov. 30, 2022
Mavexar Litigation Funding

Charging Bull
AI-Generated, displayed with permission

Well this clears things up.

Background of the Mandamus Petition

We've talked about how Chief Judge Connolly has held multiple hearings in the Mavexar actions, examining the owners of several patent assertion LLCs and discovering that the real party in interest seems to be Mavexar LLC. The witnesses testified that Mavexar recruits people to serve as plaintiffs, but then runs the litigation themselves—including seemingly all substantive decisions, even settlement.

After the most recent hearings, Chief Judge Connolly issued a series of orders requiring production to the Court of various communications between the LLCs, their attorneys, and Mavexar. One of the entities involved, Nimitz, immediately filed a petition for a writ of mandamus to stop the Court's …

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