To keep the patent assertion entity from coming back from dead, kill it with counterclaimsAI-Generated, displayed with permission
One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
While counterclaims are generally low-cost, they are not free and still involve some work.
They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties …
Aaaand we're back. You'll note one of the stipulations listed as "iffy" (legal term) was stipulations to extend page limits. We got a good example of just how iffy those can be last week from Judge Noreika:
IT IS HEREBY ORDERED that the Stipulation is DENIED. The request to extend page limits was filed seven minutes before the over-the-page limit brief was filed. The effect of this was that Plaintiff granted itself an extension without leave of Court and without respect for the Court and its rules. THEREFORE, IT IS FURTHER ORDERED that the Motion for Preliminary Injunction is DENIED for failure to comply with the page limits. Counsel may re-file the motion with a brief that complies with the Court's rules.
Janssen Biotech, Inc. v. Amgen, Inc., C.A. No. 22-1549-MN (D. Del. Mar. 2, 2023) (Oral Order)
Obviously, it didn't help that the parties filed their stip just minutes before the relevant brief, giving the Court no opportunity to act on it. But it led me to wonder just how often these stipulations are denied in ...
Judge Noreika is well known at this point for requiring real, substantive meet-and-confers on claim construction. In multiple cases, she has directed parties to further meet-and-confer after finding their initial efforts insufficient.
She issued another such order this week, this time directing the parties to have what appears to be a supervised meet-and-confer, in person in the courtroom:
ORDER . . . The parties did not comply with the Court's February 13, 2023 Oral Order requiring a good-faith meet and confer. Instead, the parties spoke for just 20 minutes about 10 disputed terms, as well as "hearing logistics" and a proposal by MarkForged to request deferral of certain claim constructions until dispositive motions. There is no breakdown indicating …
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 …
Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).
This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.
I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to …
Disqualification motions are tough. In the last 10 years, I count 2 successful motions in Delaware patent cases and 10 losers (although the counting is more complicated than usual as the issue tends to involve an inordinately large number of objections and requests for reargument, and often springs up again as the case evolves).
Still, one can learn things even from a failed attempt. Harbour Antibodies BV v. Teneobio, Inc., C.A. No. 21-1807-MN, for instance, gives us some insight into an issue that I'm surprised doesn't come up more often in this world of multinational megacorps and ultrafirms.
The plaintiff, Harbour, was a plucky little biotech startup that represented by the less little DLA Piper. DLA …
Every protective order I've ever seen has a provision at the end requiring the parties to return or (more likely) destroy any confidential information (with some limited exceptions) from the other party when the case is over. It's generally not a contentious paragraph.
Judge Fallon, however, dealt with a discovery dispute on this issue, that I was surprised had never come up before -- what happens when there are multiple unrelated defendants, as in ANDA cases? Do you destroy the documents when the relevant defendant drops out of the case, or can you keep them until the whole consolidated mess is over and done with?
At the jury trial in ArcherDX, LLC v. Qiagen Sciences, LLC, C.A. No. 19-1019-MN (D. Del.), the plaintiffs argued for $752,006 in U.S. royalties, and the jury awarded $1,593,762.
The higher number happened to exactly match the $752,006 they asked for for U.S. royalties, plus the lost profits number:
The $1,593,762 U.S. royalty award, however, is much higher than the estimate provided by Plaintiffs’ expert, and, in fact is equivalent to the expert’s suggested award for lost profits ($841,756) plus U.S. royalties ($752,006).
The parties both agreed that it was a mistake, and that the jury had intended to award the $752,006 that plaintiffs had asked for.
As we've mentioned in the past, in D. Del. patent cases, the Court often sets deadlines for submission of a "status report" (or, sometimes, a "joint status report" or "interim status report").
These orders can be somewhat vague. The Court doesn't always request "a joint status report regarding xyz." Instead, at times, it will issue a generic request for a status report, like this:
ORAL ORDER - IT IS HEREBY ORDERED that, on or before 9/23/2022, the parties shall submit a joint status report. ORDERED by Judge Maryellen Noreika on 9/16/2022.
To which the natural human response is "a status report about what?" Usually, though, it's pretty obvious from the docket. In the case above, C.A. No. 21-459-MN, the case is stayed pending appeal of another case, and the order follows a more than year-long delay with no action. The Court probably wants to know the status of the appeal.
The next question is often "how much detail does the Court want?" The answer seems to vary depending on the context. It's usually safe to assume that the Court does not want disputes or argument from the parties, and that it likely appreciates a concise statement of only what the Court needs to know to take action. But it can be hard to say for sure ...
An interesting transcript just hit the docket in CBV, Inc. v. ChanBond, LLC, C.A. No. 21-1456-GBW (D. Del.), a contract case, after the transcript restrictions expired. The hearing itself took place back in April, before Judge Noreika.
In the case, defendant ChanBond filed a letter seeking emergency relief after it inadvertently served a sealed filing on out-of-town counsel for another party, who allegedly took the position that he need not maintain the confidentiality of the document, either under the Court's order sealing the document or local rule 26.2 (which provides a confidentiality obligation prior to the entry of a protective order, as explained below).
Out-of-town counsel responded to the request for emergency …
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