Longstanding practice in the District of Delaware, pursuant to the Court's local rules and the Judges' form scheduling orders and other standing orders, mandated page limits for briefing.
For example, the Court's local rules set limits of 20 pages for opening, briefs 20 pages for answering briefs, and 10 pages for reply briefs, all in 12 point font. See LR 7.1.3(a)(4); LR 5.1.1(a). However, since about mid-2019, some Judges here have permitted or required word limits in lieu of page limits for some types of documents.
MN
The Honorable Maryellen Noreika
On Monday, Judge Noreika issued a post-trial ruling in Agrofresh v. Essentiv LLC, C.A. No. 16-662, modifying the jury's liability verdict and its damages award. She also criticized a briefing practice that she called "unhelpful and largely ineffective."
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 …
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 …
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.
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 …
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.
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 …
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 …
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 …
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 …
