A Blog About Intellectual Property Litigation and the District of Delaware


Patent
Patent

How Far Can an Expert Stray from Their Report at Trial?

Andrew E. Russell, Aug. 11, 2023

Michał Mancewicz, Unsplash

One of the more common issues to come up at trial is whether an to what degree an expert can exceed what is in their report. I've heard varying opinions on this from judges in Delaware and elsewhere. Some judges hold experts pretty tightly to their report; others apply something more akin to notice pleading, where the expert merely has to stay within the broad outline of what was addressed.

If you're going to have an expert on either side at trial, it's a good idea to know where your judge stands on this issue beforehand. We got a data point from Judge Andrews on this last week, when he issued a memorandum order on a …

View

A New Markman Hearing Procedure from Judge Burke

Andrew E. Russell, Aug. 10, 2023
Markman Hearing Claim Construction

Six
Arisa Chattasa, Unsplash

Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:

ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …
View

Judge Andrews Declines to Lift Stay After IPR Leaves Just 4 of 83 Claims Standing

Andrew E. Russell, Aug. 7, 2023
Lift Stay Stay Pending IPR

Analog Clock
None, Ocean Ng, Unsplash

On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:

ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The …
View

We're Back! And We Have a Mavexar Update

Andrew E. Russell, Aug. 6, 2023
Mavexar Contempt

Crab in Net
Andrew Russell, displayed with permission

We're back! Our trial was a success, Nate is back from his travels, and things have cooled down enough for us to resume regular posts this week.

While we were tied up, there was some progress in the Mavexar cases. If you recall, Chief Judge Connolly had ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware to answer for the entities' potential fraud on the Court. She objected, stating that she would not appear.

Since then, the July 20 hearing occurred, and as promised she did not appear—although her counsel, and counsel for Backertop, did show up. The transcript for that hearing is below.

The Court discussed the production …

View

What a Successful Equitable Estoppel Defense Looks Like

Andrew E. Russell, July 13, 2023
Equitable Estoppel Affirmative Defenses

I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model.
I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model. SpaceX, Unsplash

In answering patent infringement complaints, defendants often do their best to throw in any potentially supportable equitable estoppel / implied license defense they can think of. But in patent actions, these defenses can be hard to prove and are rarely successful. They typically drop off at some point later in the case.

This week we got a great example of what a successful equitable estoppel defense looks like, in an opinion from Judge Bataillon granting summary judgment on that basis.

Basically, it involved lots of incredibly strong facts.

The defendant is Sirius …

View

A Mavexar-Related LLC and Its Owner Explicitly Refuse Court Order to Appear for Hearing, Shouting "Come at Me, Bro!"

Andrew E. Russell, July 12, 2023
Mavexar

Come At Me Bro Crab
chanphoto, Unsplash

As I mentioned on Monday, my co-bloggers Nate, Emily, and I are swamped at the moment, with a trial this week and another coming up in a week and a half—so this will be a less fulsome post than I'd like.

But I wanted to pass along the "Notice of Objection to and Non-Participation in Judicial Inquisition" attached below, in which the Mavexar-related entity Backertop Licensing LLC and its owner refuse to appear for the Court's scheduled July 20, 2023 hearing (and to produce any further documents), in direct contravention of an order of the Court:

NOTICE OF OBJECTION TO AND NON-PARTICIPATION IN JUDICIAL INQUISITION
Former Plaintiff Backertop Licensing LLC (“Backertop” or “Plaintiff”) hereby gives …
View

Shocker! The "Mansplaining" Brief Fails: Court Compels Mavexar LLC Member Involved in 97 Patent Cases to Attend Hearing

Andrew E. Russell, July 10, 2023
Mavexar FRCP 45

Travel
Dino Reichmuth, Unsplash

We wrote last month about the "mansplaining brief," which caught some eyes around town when it (and the declaration attached to it) accused the Court of "gender harassment and discrimination."

We set out the full background in our post, but generally the Court ordered the sole member of a Mavexar-related LLC to attend a hearing here in Delaware.

She then filed a motion for reconsideration offering numerous objections, including among other things that (1) the Court had no power under FRCP 45 to compel her attendance, since she lives in Texas; and (2) that she is a working mother and therefore unable to travel to Delaware.

(She also said that she "feels harassed" by …

View

Patentee Successfully Reverses Court's § 101 Ineligibility Finding by Amending Complaint

Andrew E. Russell, July 9, 2023
§ 101 Motion to Amend

All across the district, defendants silenty wonder:
All across the district, defendants silenty wonder: "Oh crap, is this gonna be a thing now?" NASA, Unsplash

Here's one you don't see every day. Back in March, Judge Burke granted a § 101 motion to dismiss as to the claims of two of the six asserted patents in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB (D. Del. Mar. 31, 2023).

In that opinion, the patentee did not dispute that the claims were directed to the abstract idea of synchronizing a file across a network:

Plaintiff, for its part, does[ not] dispute that synchronizing multiple versions of a file across network computers is an abstract idea, and the Court agrees that it is. Again, …
View

Judge Williams Joins the Other D. Del. Judges in Limiting Parties to 10 Claim Terms

Andrew E. Russell, June 26, 2023
Markman Briefing 10 terms

Caution Warning
Bernd Dittrich, Unsplash

We've written a lot about the common D. Del. practice of limiting parties to 10 claim terms per case (at least for the Markman hearing).

We talked about a similar order from Judge Andrews earlier this month, and previous orders by Judges Connolly, Noreika, and Burke. Now, Judge Williams has set the same limit, in at least one action:

ORAL ORDER: Having reviewed the parties' Joint Claim Construction Brief (D.I. 96), IT IS HEREBY ORDERED that the Court will construe a maximum of ten (10) terms/term sets during the August 1, 2023 Claim Construction Hearing. The parties shall meet and confer and, no later than July 17, 2023, the parties shall file …
View

Answers to Some Common Questions About Joint Claim Construction Briefing in D. Del.

Andrew E. Russell, June 14, 2023
Joint Claim Construction Briefing Sandbagging

We're really starting to run out of good, free pictures of sand bags for these posts.
We're really starting to run out of good, free pictures of sand bags for these posts. Karen Barrett, Unsplash

At this point, all of the D. Del. judges have adopted a joint claim construction brief procedure invented by Judge Andrews, where the parties serve opening, answering, reply, and surreply briefs, and then file a single combined joint claim construction brief that presents the arguments term-by-term. This means that the parties and the Court can work from a final, combined joint brief where all of the arguments match up.

This is a great procedure and everyone seems to like it. Certain questions tend to come up about it, though.

Common Questions on the Joint Claim Construction Brief

First, parties …

View
Newer
Older

Archive