A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Court Denies Request to Reopen Discovery After Third-Party Letter Suggests Possible Standing Issue

Andrew E. Russell, April 18, 2021
Letter Trial

In In Re Chanbond, LLC Patent Litigation, Judge Andrews denied a request for post-pretrial-order discovery on Friday. The request came after Defendants received an e-mail from attorneys from third-party Deirdre Leane alleging that her consent was required for any settlement between the defendants and plaintiff ChanBond:

On September 2, 2020, Defendants received an email from Ms. Leane’s counsel, informing them of a dispute between Ms. Leane and ChanBond. . . . The email stated, “As we read Section 8.3 of the ISA, Ms. Leane’s written consent is required given that a license is a transfer of an interest in the patents-in-suit, which in turn are material assets of ChanBond.” . . . The email warned, “[P]lease take notice …
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Court Rejects Stipulated Dismissal as End-Run Around Requesting Interlocutory Appeal

Nathan R. Hoeschen, April 15, 2021
Interlocutory Appeal

Not today litigants
Not today litigants Pavel Kononenko, Unsplash

We've noted previously that it is tremendously difficult to win a motion for interlocutory appeal in Delaware (and pretty much everywhere else). So it comes as no surprise that litigants—innovators all—will occasionally come up with new ways to achieve the same result without all the difficulties attendant with actually moving. We now know that at least one of these methods does not work.

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters LLC, C.A. No. 19-2157-RGA (D. Del.) filed a joint stipulation dismissing the 5-patent case following a claim construction opinion that apparently definitively absolved the defendant of infringing 2 of the patents. Id., D.I. 163. The stipulation, however, only dismissed the claims as to those 2 patents with prejudice while specifically reserving the plaintiff's right to "reassert the [remaining] [p]atents in the future, including in the event of a reversal and remand to this Court following the expected appeal from the final judgment entered pursuant to this Joint Stipulation of Non-Infringement." Id.

Despite that fact that this was a joint stipulation ...

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Daubert on Defense

Nathan R. Hoeschen, April 1, 2021
Daubert

This picture of a duck is unrelated to the article
Ross Sokolovski, Unsplash

Under Judge Andrews' form scheduling order, the parties are allotted a certain number of pages for both Daubert and summary judgment briefs. Given how difficult it is to win most Daubert motions in the district, it might sometimes make sense to forego filing one in order to devote more pages to briefing a seemingly stronger SJ motion.

Yesterday, Judge Andrews gave the district a reason to rethink this strategy.

The defendants in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No 14-1102-RGA-CJB, moved for summary judgment of non-infringement, relying largely on their expert's opinion that the devices did not practice a particular limitation. D.I. 213 at 3 (D. Del. Mar 31, 2021). The plaintiff responded by pointing to various alleged errors in the defense expert's methodology, but failed to actually file a Daubert motion to strike the opinion. See id. Judge Andrews found this failure fatal to the plaintiff's case, stating:

M2M’s objections may be the appropriate subject of a Daubert motion, but M2M does not cite any authority for the proposition that critiquing an expert’s methodology in the absence of a motion to exclude the testimony is sufficient to create a material dispute of fact.

Id. at 4.

The bit of this opinion that I find interesting is ...

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Another Late Expert Opinion Bites the Dust

David M. Fry, March 31, 2021
Motion to Strike Pennypack

We keep writing about how hard it is to win a motion to strike in D. Del., which is generally true. That said, it's still possible to get late-disclosed theories and evidence excluded, especially when there's no good explanation for the delay.

Yesterday afternoon, one plaintiff learned that lesson the hard way. As often happens, the plaintiff argued that the defendant's expert raised new opinions on motivation-to-combine in his reply report.

But instead of moving to strike (or seeking leave to submit a sur-rebuttal report, or dealing with the issue during expert depositions...), the plaintiff simply waited until summary judgment briefing. There, it submitted a rebuttal declaration from its own expert in support of its answering brief on invalidity. …

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Divided We Infringe

Nathan R. Hoeschen, March 26, 2021
Divided Infringement

Hatchet on Log
Andrew E. Russell, CC BY 2.0

Judge Andrews issued an interesting opinion on Wednesday discussing the level of control necessary for divided infringement -- an issue that has not come up much in the district.

As the Federal Circuit laid out in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, (Fed. Cir. 2015), divided infringement requires the parties that collectively perform all of the method steps to be part of a joint enterprise, or for one of them to "direct or control the other's performance." Id. at 1022–23.

This "direct or control" requirement has historically been a pretty good grounds for motions to dismiss or summary judgment in the district. In the 5 years since Akamai …

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The Rare Daubert Motion That Consistently Succeeds

Nathan R. Hoeschen, March 18, 2021
Damages Daubert

Daubert motions are as tough as they are common. It seems every case spawns at least one on each side, and the vast majority are denied with the Court finding that any deficiencies in the expert's methodologies are merely grounds for exploration on cross-examination.

One type that consistently beats these odds (at least in Delaware) is directed to damages experts that attempt to use the damages figures from prior jury verdicts as starting points for a hypothetical negotiation.

Judge Andrews in particular has held a hard line on this issue as shown in his decision on Wednesday in Sprint Communications Company L.P. v. Charter Communications, Inc, C.A. No. 17-1734-RGA, D.I. 573 (D. Del. Mar. 16, 2021). …

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I Don't Object, Your Honor!

Jeff Castellano, March 16, 2021
R&R Section 101

Objections to Reports and Recommendations are something like an appeal. The District Judge is tasked with addressing the alleged errors of the Magistrate Judge de novo only to the extent they are "properly objected to." Fed. R. Civ. P. 72(b)(3). Thus, it is the job of the parties to raise objections to an R&R in a procedurally proper way. If they fail to do so, the District Judge is hamstrung to an extent. This outcome was on display in a recent ruling by Judge Andrews, in which both sides failed to properly object to a portion of the Magistrate Judge's R&R, leaving a patent with "serious" validity problems alive (for now).

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Judge Andrews: Claim Not Indefinite, Despite Possible Drafting Error

Andrew E. Russell, March 15, 2021
Indefiniteness Claim Construction

A nautilus. It's nice when significant cases have memorable names.
A nautilus. It's nice when significant cases have memorable names. Shawn Low, Unsplash

Claim construction opinions tend to be highly fact-specific, so even though they can be critically important to the parties in a case, we don't always post about them on this blog.

Judge Andrews issued an interesting claim construction opinion today, however, which addressed indefiniteness due to a potential drafting error in a claim.

The opinion involved claim language for a mechanical device:

. . . wherein the . . . assembly comprises a housing comprising the syringe and the stirring motor . . .

Defendants argued indefiniteness in light of the dual use of "comprising," because a person of skill in the art cannot determine a …

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Are Your Citations "(cleaned up)"?

Andrew E. Russell, March 12, 2021
Legal Writing

Law360 published an article yesterday by Carrie Garrison about an "exciting shift in the legal world," after Justice Thomas used the parenthetical "(cleaned up)" in a SCOTUS opinion:

Under that doctrine as it existed in 1946, a judgment is “on the merits” if the underlying decision “actually passes directly on the substance of a particular claim before the court.” Id., at 501–502 (cleaned up).

This parenthetical, as Ms. Garrison points out, was suggested in 2017 as an alternative to longer parentheticals like "(internal quotation marks omitted)" under Bluebook Rules 1.5 and 5.2.

This sounds like a great way to save some space, particularly in light of the ongoing adoption of word limits by the District of Delaware …

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Judge Andrews Allows Amended Complaint, but Orders Immediate Claim Narrowing

David M. Fry, March 10, 2021
Claim Narrowing

The first part of this headline is no surprise. As long as a motion to amend is filed before the deadline in the scheduling order, it's very hard to lose. In fact, Judge Andrews didn't even issue a written opinion on this one (another plug for the importance of monitoring oral orders in D. Del.):

I do not see undue delay, and Defendant basically concedes that any prejudice can be pretty easily ameliorated. The Court is not concerned about the prospect of a five-day trial with seven patents from seven families. That scenario will never come to pass.

The surprising part is what happened next. After dismissing the defendant's concerns, Judge Andrews ordered the plaintiffs to narrow their …

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