A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Covenant Not to Sue Results In Dismissal With Prejudice

Jeff Castellano, Aug. 10, 2021
Covenant Dismissal

Although a plaintiff may seek to dismiss its claims of infringement without prejudice after providing a covenant not to sue, the Court has discretion to impose a dismissal with prejudice, depending on the terms of the covenant and other factors.

In that vein, the plaintiff in a patent infringement suit pending before Judge Andrews argued "that the Court should dismiss its infringement claims without prejudice because the covenant it has provided to [defendant] CSL prevents their reassertion." Judge Andrews rejected this "paradoxical" argument ...

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Judge Andrews Reverses Magistrate Judge's Finding of Prosecution Disclaimer

Andrew E. Russell, Aug. 9, 2021
Magistrate Judges Claim Construction

This remote definitely can't decode compressed video streams by itself.
This remote definitely can't decode compressed video streams by itself. Glenn Carstens-Peters, Unsplash

Prosecution disclaimer can be tough to prove. Practiced prosecution counsel seem to know how to phrase things in such a way that a patent examiner understands them to be different from the claimed invention, but a later court may still find the opposite.

In an opinion today, Judge Andrews reversed a prosecution disclaimer finding by Magistrate Judge Fallon. The patent claims involves a "tethered digital butler" that can perform smartphone-like functions in a lower-cost way by using cheaper hardware that may be "tethered" to a desktop computer, which takes care of the heavy lifting.

Specifically, the claims discuss a "palm held remote," and the parties disputed …

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Judge Andrews Gives His Thoughts on Privilege of Pre-Litigation Scientific Testing Results, Strikes "Unsolicited" Declarations

Andrew E. Russell, Aug. 2, 2021
Privilege Litigation

Science!
Hans Reniers, Unsplash

On Friday, Judge Andrews issued an opinion adopting a Special Master opinion, which held that certain pre-litigation testing documents were not covered by attorney privilege.

Pre-Litigation Testing Not Protected by Attorney-Client Privilege If Not Provided to Attorneys

The Court found that the pre-litigation scientific testing was not covered by attorney-client privilege, even though they may have been done "at the direction of" a law firm, because the core purpose was for the client's understanding rather than for facilitating legal advice:

I do not think [plaintiff] First Quality has shown that the attorney-client privilege applies to any of the [relevant] disputed . . . documents. Plaintiff's position is that everything [the expert] Dr. Malburg did falls "well …
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Judge Andrews: "Simply Needing More Time Is Not Good Cause" to Push Trial

David M. Fry, July 23, 2021
Scheduling Trial Calendar

As jury trials in Delaware continue to get back on track, the judges' trial calendars are jam packed for 2021 and 2022. What does this mean if you have an upcoming trial date and need to move it?

In some cases, you might be out of luck. Yesterday, Judge Andrews denied an unopposed motion to extend a case schedule that would have pushed trial from June 2022 to September 2022. The purpose for the request was to provide additional time to complete fact discovery.

In an oral order, Judge Andrews rejected the request outright:

The Parties say they need more time, but simply needing more time is not good cause. The Court's schedule is already completely full …
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Arbitrability Goes to the Arbitrator, Judge Andrews Rules

Jeff Castellano, July 20, 2021
Arbitration Covenant

When parties seek to dismiss or stay a patent dispute in federal court in favor of arbitration pursuant to an agreement, someone needs to decide whether the parties' dispute falls within the scope of the agreement's arbitration provision (and is thus arbitrable). Whether that question is decided by the court or the arbitrator depends on the language of the agreement. So, in essence, the court must interpret the agreement for the limited purpose of divining the parties' intent (or lack thereof) to shunt arbitrability to the arbitrator.

In a recent order in Nidec Corp. v. Seagate Technology LLC, C.A. No. 21-52-RGA, Judge Andrews found...

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Does an Expert Have to Write His Own Report?

Jeff Castellano, July 6, 2021
Expert Reports Daubert

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

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When Is a Party "Fully Represented" in an IPR for Purposes of Issue Preclusion?

David M. Fry, June 30, 2021
Collateral Estoppel

Whenever collateral estoppel comes up in a patent case, it usually generates some interesting discussion. Yesterday's decision from Judge Andrews in TQ Delta v. 2Wire is no different.

After the Federal Circuit reversed a PTAB determination of unpatentability on an unasserted claim, the plaintiff moved to estop the defendant from challenging the validity of two related claims in the district court litigation.

Judge Andrews concluded that summary judgment was inappropriate because the defendant adequately "explained how the differences between the [asserted claims] and [the adjudicated claim] alter the invalidity analysis[,]" but he also addressed an interesting question: Is a petitioner "fully represented" in an IPR when another petitioner is taking the laboring oar before the PTAB?

The defendant …

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Judge Andrews Addresses Infringement By Standard-Compliant Products

Jeff Castellano, June 29, 2021
Summary Judgment Standards Essential

Industry standards can be helpful for a patentee tasked with proving infringement of standard-compliant products. Standards often lay out mandatory features, such that a patentee may be able to use infringement of the standard itself as a shortcut to establish infringement of a standard-compliant product (although there are limits on that type of proof, including that the patent must cover all possible implementations of the standard).

The question of whether infringement by a standard can be used to shortcut infringement proofs for a product recently came up before Judge Andrews on a summary judgment motion by the plaintiff in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA.

The defendant's products in TQ Delta were accused of implementing an infringing functionality . . .

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Update on Judge Andrews' Order to File Settlement Agreements to Determine Damages After Default

Andrew E. Russell, June 22, 2021
Damages Settlement Agreements

Last month we wrote about Judge Andrews' order that a plaintiff who won a default judgment against Aston Martin, LLC must file any settlement agreements from seven other patent suits, in order to help the Court determine the proper damages award.

Plaintiff has now responded.

We wondered in our last post whether the Court would permit plaintiff to file under seal. The answer is yes: the Court found the following short paragraph from the briefing to be sufficient to permit filing the settlement agreements and settlement amounts under seal:

Good cause exists to seal these Settlement and License Agreements. The Agreements contain confidentiality clauses such that if the documents were not filed under seal, Plaintiff might be in breach …
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Do You Need a COVID-19 Jury Instruction?

Jeff Castellano, June 15, 2021
Jury Trials COVID-19

As jury trials re-start in this District and elsewhere, litigants may wonder whether and how to help the jury understand the impact of the pandemic on the court and, more specifically, the proceedings they are about to witness. In at least one case in this District, competing jury instructions touching on those topics were proposed by the parties just prior to the start of a jury trial last month. In that case—In re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA—the parties took slightly different approaches, although they seemed to agree that the jury should be instructed not to read anything into the precautionary measures taken by the Court and the parties. ...

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