A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Don't Overlook the Importance of Technological Comparability

David M. Fry, Sept. 29, 2021
Damages

Pop quiz: What's the easiest way to get prior licenses tossed from your reasonable royalty analysis?

Judge Andrews gave the answer today in a lengthy post-trial opinion in a case involving car seat technology. After determining that the asserted patents were valid and not infringed, he turned to damages.

Both parties relied on prior licenses that "deal generally with childcare products" to support their reasonable royalty analyses, including one "related to folding strollers" and one that "involves embedded chips that can alert a parent as a child safety feature[.]"

Judge Andrews disregarded both licenses because there was no evidence of technological comparability:

Neither party has made clear why the folded stroller in Scotty or the chip-based child safety feature of …
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Judge Andrews Rejects 50/50 Starting Point for Hypothetical Negotiation

Jeff Castellano, Sept. 21, 2021
Daubert

Damages experts in patent infringement cases typically rely upon the Georgia-Pacific factors to guide their reasonable royalty analysis. Those factors are designed to predict the result of a hypothetical (and thus, fictional) negotiation between the parties, had the parties been willing participants in such a negotiation. But it is important to remember that the starting point for the application of the Georgia-Pacific factors must be tied to the facts of the case, like the factors themselves.

Late last week, Judge Andrews excluded a plaintiff's damages expert for his use of a 50/50 starting point for the hypothetical negotiation that was not sufficiently linked to the facts, as required by Federal Rule of Evidence 702.

The issue came to Judge Andrews...

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Court Construes Claims as Means-Plus-Function, Holds Them Indefinite for Lack of Structure

Andrew E. Russell, Sept. 10, 2021
Claim Construction

A peloton?
Jonathan Petit, Unsplash

Before § 101 got big in the early-to-mid 2010's, I recall there being a lot more discussion about construing claims—particularly software claims—to be means-plus-function claims, and then trying to get them invalidated under § 112 ¶ 6 for lack of corresponding structure.

Lately that issue seems to be litigated less frequently, but an order from Judge Andrews today shows that it hasn't faded away completely.

He looked at two claim elements:

a [] translator device adapted to translate data between the exercise communication protocol and the computer communication protocol.

and

translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative …
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Judge Andrews Strikes Opening Brief for Non-Compliance with Local Rules

David M. Fry, Sept. 8, 2021
Legal Writing Local Rules

You're drafting a brief in D. Del., and you're not sure what it's supposed to look like. You're in luck! The local rules tell you exactly what sections you need to include in an opening or answering brief (see LR 7.1.3(c)(1) for more detail):

  1. Two tables (a table of contents and a table of authorities).
  2. "A statement of the nature and stage of the proceedings."
  3. "A summary of argument, setting forth in separately numbered paragraphs the legal propositions upon which the party relies."
  4. "A concise statement of facts, with supporting references to the record, presenting the background of the questions at issue."
  5. "An argument" with "appropriate headings distinctly setting forth separate points."
  6. "A short …
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Judge Andrews Rejects Attempt to Sidestep § 101 Via Amended Complaint

David M. Fry, Sept. 1, 2021
MTD 101

On Monday, Judge Andrews addressed a plaintiff's attempt to cure a § 101 dismissal by amending its complaint—certainly not something you see every day.

Earlier in the case, Magistrate Judge Fallon issued an R&R concluding that one of the asserted patents was directed to ineligible subject matter. Judge Andrews adopted the R&R and granted dismissal without prejudice.

The plaintiff then filed an amended complaint, which contained "eight new paragraphs with allegations . . . tout[ing] the supposed advantages and improved methods of the" previously dismissed patent.

Judge Andrews found that these allegations were not enough to avoid dismissal, granting partial dismissal of the amended complaint with prejudice:

These allegations do not resolve the issues that the Magistrate Judge …
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More Orders from Judge Andrews Rejecting Sealed Filings

Andrew E. Russell, Aug. 26, 2021
Protective Order Redactions

The dam continues to break on sealed filings.
The dam continues to break on sealed filings. Englebright Dam, Amit Patel, CC BY 2.0

We noted last week that Judge Andrews has been cracking down on parties filing entire exhibits under seal. Since then, he has issued three more orders regarding filings where exhibits were sealed in their entirety. Beyond those, in two instances he has rejected even more limited redactions:

ORAL ORDER: The justification for sealing is non-existent. Apparently, per Ms. Pascales letter . . . , Medacta is the party who wants to redact. The entire document [that was filed] is going to be unsealed on August 27, 2021, unless Medacta submits before then (1) the document with the redactions in yellow highlighting, and (2) a …
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A 353-Page-Long Statement of Contested Facts in a Pretrial Order Is "Ridiculous No Matter What"

Andrew E. Russell, Aug. 23, 2021
Trial LR 16.3

353? Ridiculous.
Andrew E. Russell, CC BY 2.0

Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."

These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …

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Pennypack Strikes Back: The Return of Curative Discovery

David M. Fry, Aug. 23, 2021
Motion to Strike Pennypack

Cave
Cade Roberts, Unsplash

Over the past year, we've noticed that the D. Del. judges have shown an increasing willingness to exclude late-disclosed evidence and theories. Until recently, motions to strike were difficult to win under the Third Circuit's Pennypack standard. If the prejudice caused by the late disclosure could be cured, it was almost impossible to get anything excluded.

Today, harkening back to an earlier time, Judge Andrews denied cross-motions to strike allegedly late-disclosed theories from the parties' opening expert reports. Although he found that the defendant's motion presented a close call on late disclosure, he concluded that "[e]ven if these infringement theories were untimely, I find, under the Pennypack factors, that their exclusion is not warranted."

At …

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Heads Up, D. Del. Practitioners: The Free Ride on Redacting Sealed Exhibits May Be Ending

Andrew E. Russell, Aug. 17, 2021
Protective Order Star Chamber

Is the dam about to break on over-redaction of filings?
Is the dam about to break on over-redaction of filings? Thomas Dumortier, Unsplash

Most patent cases involve a protective order, and the parties tend mark documents other than prior art as confidential or attorney's eyes only. As a result, many of the more substantive filings—particularly discovery motions, summary judgment motions, and pretrial orders—are filed under seal.

Unlike some other jurisdictions, particularly the Northern District of California, the District of Delaware's procedure for filing under seal is not burdensome. Once a protective order is entered, no motion is required to file a document under seal, and the parties simply file redactions within seven days.

Over time, parties have become more and more liberal with their redactions, often heavily redacting sealed …

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A Very Long Deposition

Nathan R. Hoeschen, Aug. 12, 2021
Depositions

Technical difficulties
Technical difficulties Glitch While Streaming, Michael Dziedzic, Unsplash

As we've previously discussed the district's local rules and longstanding practice prohibit speaking to a witness about the substance of his testimony during a deposition. Specifically, D. Del. local rule 30.6 states:

From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.

Normally, the application of this rule is pretty straightforward. But what …

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