A Blog About Intellectual Property Litigation and the District of Delaware


MN
The Honorable Maryellen Noreika

Rule 31 Depositions by Written Questions In Light of COVID-19 Travel Restrictions

Andrew E. Russell, Nov. 11, 2020
Depositions FRCP 31

COVID-19
COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Here's something you don't see every day.

After a discovery dispute about bringing a parties' European witnesses to the US for deposition during the pandemic, Judge Noreika ordered that depositions of a defendants' witnesses may initially take place by written questions under FRCP 31:

ORAL ORDER . . . IT IS HEREBY ORDERED that . . . Plaintiff may request a deposition of the witnesses pursuant to Federal Rule of Civil Procedure 31. Any such deposition shall be subject to Local Rule 30.6, with the "commencement" of the written deposition being when Defendants' counsel receives the written questions and the "conclusion" of the deposition being when Defendants' counsel serves the response …
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No Interlocutory Appeal of Contract-Based Patent Standing (Ever?)

Andrew E. Russell, Nov. 2, 2020
Standing MTD

Stop Sign
Luke van Zyl, Unsplash

Late last week, Judge Noreika denied a motion for interlocutory appeal of an denial of a motion to dismiss for lack of standing.

Security Interest Doesn't Prevent Suit After Debt Repaid

In moving to dismiss, defendant argued that the PTO assignment records show that the the patentee had assigned its patents to a lender as collateral and, after the debt was repaid, had never received an assignment back or any release of the security interest.

Plaintiff countered that the security interest was extinguished once the debt was repaid, regardless of any release or assignment specific to the patent. So no separate assignment back was needed.

Judge Noreika sided held that the judgment had been satisfied …

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Fees Motion Clears One Hurdle, Trips Over Another

Jeff Castellano, Oct. 27, 2020
Fees

Last week, Judge Noreika denied defendant Shopify Inc.'s motion for attorneys' fees under 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party."), holding Shopify partly accountable for the amount of fees it incurred during the relatively short pendency of the case. While the opinion is worth reading in its entirety, there are two particularly notable aspects to the decision.

What Shopify won't be getting
Sharon McCutcheon, Unsplash

First, Judge Noreika found that Shopify was the "prevailing party," on the basis of the plaintiff's voluntary dismissal of its case with prejudice. While the Court had not issued any merits-based decisions prior to the dismissal, and did not itself effectuate the dismissal (it was self-executing under Rule …

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Potential Civil Jury Trial Starting Oct. 26

Andrew E. Russell, Oct. 9, 2020

Judge Norieka is considering holding a civil jury trial starting October 26, 2020 in Butler v. Hanover Foods, C.A. No. 19-1221-MN (D. Del.). The parties had their pretrial conference last week, and the judge intends to issue a decision next week about whether to go forward with the trial.

If the Court decides to go forward, this will be the first post-COVID civil jury trial I've heard about so far.

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Judge Noreika Awards Fees and Fees-on-Fees

Andrew E. Russell, Oct. 2, 2020
Final Judgment FRCP 54

About 204,261 of these.
About 204,261 of these. Sharon McCutcheon, Unsplash

Judge Noreika today awarded $204,261.31 in attorneys’ fees to a plaintiff in a trademark action, after the defendants fired their counsel, failed to obtain new counsel, and eventually had a default judgment entered against them.

She also awarded fees-on-fees, granting attorney fees for bringing the successful fees motion but not for a previous unsuccessful fees motion.

The previous motion was denied due to timing issues. Plaintiffs had filed it more than 14 days after the default judgment, and Judge Thynge issued an R&R holding that the 14-day fees deadline under FRCP 54 had passed.

Judge Noreika then offered the plaintiffs a second chance to file the fees motion. She ultimately disagreed …

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Judge Noreika Rules that "Justice and Equity" Are Not Standalone Considerations in Collateral-Estoppel Analysis

Nathan R. Hoeschen, Sept. 17, 2020
Preclusion Estoppel

Plaintiff Estopped as Nearby District Moves to Overtake
Plaintiff Estopped as Nearby District Moves to Overtake Abed Ismail, Unsplash

Judge Noreika had a rare holding estopping a plaintiff from asserting the lone patent-in-suit patent due to collateral estoppel after trial.

The Court held a five-day bench trial in Biogen Int'l GmbH v. Amneal Pharms. LLC, C.A. No 17-823-MN in December 2019, dealing with a host on invalidity issues, including obviousness, enablement, and written description. The parties completed post-trial briefing in March 2020, and and a final opinion was thus expected in the not-too-distant future.

Unfortunately for Biogen, they also sued a different defendant, Mylan, in the Northern District of West Virginia on the same patent. That case went to trial in February 2020, on the sole …

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Judge Noreika Sets Procedure for In-Person Bench Trial Next Month

Nathan R. Hoeschen, Sept. 3, 2020
Trial COVID-19

Expert Witness Examines Evidence at Upcoming Bench Trial
Expert Witness Examines Evidence at Upcoming Bench Trial Ani Kolleshi, Unsplash

As the court moves closer and closer to resuming normal operations, Judge Noreika has released a new order describing the procedures for her first COVID-19 bench trial with live attorneys (although still remote witnesses).

TriMed, Inc. v. Arthrex, Inc., C.A. No 18-666-MN, was originally slated for a jury trial on September 14, 2020, but was converted to a bench trial on the same dates following a teleconference on July 30.

Other than the lack of in-person witnesses, the trial appears to be remarkably similar to a bench trial in the before-times, with the only major concessions to the pandemic being required masks, the use of electronic witness …

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Eleven Terms Enter, Ten Terms Leave

Nathan R. Hoeschen, Aug. 27, 2020
10 Terms Claim Narrowing

Claim Construction Meet and Confer Ends in the Usual Way
Claim Construction Meet and Confer Ends in the Usual Way Ein Gedenkbuch an das glorreiche Jahr 1866 in Wort und Bild, British Library, Unsplash

Last Friday, Judge Noreika ordered the parties in two separate actions to submit revised joint claim charts "identifying no more than a total of ten (10) terms to be argued at the [claim construction] hearing."

The Ongoing Struggle to Limit Terms

This represents a bit of an escalation in the Court's struggle to reduce the number of terms it construes, largely led by our newest Judges, Noreika and Connolly. Last year, Judge Noreika begin issuing her "now-standard post-briefing order directing the parties to meet and confer in an attempt to narrow issues prior to the …

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Whoops, Better Make Sure The Entity You Are Suing Is Actually a Delaware Corporation

Andrew E. Russell, Aug. 13, 2020
Jumara Transfer

I'm not sure that these are actually Georgia peaches.
I'm not sure that these are actually Georgia peaches. Joanna Stołowicz, Unsplash

Judge Noreika granted a motion to transfer yesterday in a case against an Equifax entity, where 3 of the Third Circuit's Jumara factors favored transfer, and only one (plaintiff's choice of forum) weighed against.

My first thought was—Did the plaintiff really have only one factor in it's favor?

Judge Noreika usually credits the fact that the Defendant is a Delaware corporation, and I thought Equifax was one.

Turns out, so did plaintiff. The complaint lists the defendant as a Delaware corporation. But—as the Court notes—Equifax Information Services is actually a Georgia entity. Plaintiff messed up.

So the transfer makes sense. The plaintiff is Hawaiian, meaning …

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The Limits on Section 101 Abstraction

Jeff Castellano, Aug. 4, 2020
Section 101 Abstract Idea

When mounting a Section 101 challenge, it is tempting to reduce the claimed invention to the broadest abstract concept possible (for example, "communications" or "data transfer"). The Federal Circuit has not given defendants much incentive to be more selective or specific in that regard. However, there are limits, and the defendants in APS Techs. v. Vertex Downhole, Inc., C.A. No. 19-1166-MN found them.

Oil Rig
Oil Rig Worksite Ltd, Unsplash

In a July 29, 2020 order Judge Noreika denied defendants' motion to dismiss because defendants' Section 101 challenge "oversimplified the claim to an improper level of abstraction." Defendants asserted that the claims were directed - at their heart - to "data transmission." Although Judge Noreika expressed some …

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