A Blog About Intellectual Property Litigation and the District of Delaware


SRF
The Honorable Sherry R. Fallon

Status Communications Between Litigation and Prosecution Counsel Were Not Privileged

Andrew E. Russell, Oct. 19, 2022
Prosecution Prosecution Counsel

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
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Can Defendants Move to Stay Vacant Judgship Cases After All?

Andrew E. Russell, Aug. 5, 2022
Congestion Vacant Judgeship

Defendants lining up to file their motions to stay
Defendants lining up to file their motions to stay Rob Curran, Unsplash

When the Court instituted its vacant judgeship procedures following Judge Stark's elevation to the Federal Circuit, the implementing order included procedures to keep cases moving if the parties do not consent to a magistrate judge to hear the case.

For example, the order directs parties to hold a Rule 26(f) conference within seven days of notifying the Court that the parties would not consent to a magistrate judge:

The parties shall cooperate in good faith to move the case forward. To that end, within seven days of filing the notice that the parties would not consent to a Magistrate Judge, the parties shall hold a Rule 26(f) …
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Court Orders Plaintiff to Supplement Initial Contentions to Explain Citations

Andrew E. Russell, July 29, 2022
Source Code Final Contentions

Do It Now
Brett Jordan, Unsplash

This happened earlier this month, but I wanted to post about it since this is a recurring issue.

In Rex Computing, Inc. v. Cerebras Systems Inc., C.A. No. 21-525-MN (D. Del. July 8, 2022), defendant filed a discovery dispute to compel plaintiff to supplement its infringement contentions to explain how the cited source code meets those limitations.

Plaintiff responded, in part, by noting that these are "initial contentions while discovery is ongoing." D.I. 94 at 1.

Nonetheless, the Court ordered plaintiff to supplement its contentions to explain how the code meets the limitations:

ORAL ORDER . . . Plaintiff shall supplement its infringement contentions on or before July 18, 2022. Citations …
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Delaware's Default Standard for Electronic Discovery Can Block Discovery re: Litigation Hold Notices & Preservation

Andrew E. Russell, June 14, 2022
Default Standard Motion to Compel

People still use paper documents?!?
People still use paper documents?!? Wesley Tingey, Unsplash

Magistrate Judge Fallon addressed a discovery dispute last week, and denied a motion to compel a response to interrogatories regarding efforts to preserve documents in anticipation of litigation:

ORAL ORDER: Having reviewed the parties' discovery dispute letter submissions . . . , IT IS HEREBY ORDERED that: . . . (3) Defendant's request to compel Plaintiff to supplement its responses to Interrogatory Nos. 16-17 and Request for Production Nos. 104-05 is DENIED. Discovery regarding efforts undertaken by Plaintiff to preserve documents in anticipation of litigation is barred under the Court's Default Standard for Discovery of ESI and Fed. R. Civ. P. 26(b)(3)(A) and (B), particularly in the absence of a credible …
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Judge Fallon Stays Action Involving IPR on Just One of Two Asserted Patents

Andrew E. Russell, June 10, 2022
Stay Pending IPR IPR

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity …
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Judge Fallon Grants Motion to Preclude Indefiniteness Arguments from Upcoming Markman Hearing

Andrew E. Russell, June 8, 2022
Markman Briefing Markman

It's summer! The perfect time for Markman briefing, obviously
It's summer! The perfect time for Markman briefing, obviously Aleksandr Eremin, Unsplash

As we've mentioned, with the exception of Judge Connolly, most current D. Del. district judges permit argument regarding indefiniteness during Markman.

But what about the magistrate judges? Magistrate Judge Fallon this week granted a motion to preclude oral argument at Markman regarding indefiniteness, noting that there is no requirement for the Court to address indefiniteness during claim construction:

ORAL ORDER re D.I. 54 Motion to Amend/Correct Scheduling Order: Having reviewed Plaintiff's partially opposed motion to amend the provisions of the scheduling order governing briefing on claim construction (D.I. 54), IT IS HEREBY ORDERED that Plaintiff's motion is GRANTED-IN-PART. Plaintiff's motion is GRANTED to the extent …
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Magistrate Judges in Vacant Judgeship Cases Cannot Resolve Motions to Strike

Andrew E. Russell, June 1, 2022
Motion to Strike Discovery

Magnifying Glass
Agence Olloweb, Unsplash

Since the Court's announcement of the current vacant judgeship program, there have been some lingering questions about what a magistrate judge in a vacant judgeship case can and cannot decide.

We got some insight on that question yesterday in Huber Engineered Woods LLC v. Louisiana-Pacific Corporation, C.A. No. 19-342-VAC-SRF (D. Del.). The referral order in that case is typical of VAC cases—it says that the magistrate judge can resolve only a limited scope of disputes:

this case is referred to Magistrate Judge Sherry R. Fallon solely for the following purposes: (1) to adjudicate discovery (including fact and expert discovery) and protective order disputes; (2) to issue or modify a scheduling order; (3) to …
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What Does a Party Need to Include in a Patent Complaint? Definitely All Asserted Patents...

Andrew E. Russell, May 18, 2022
Default Standard Twombly

Hawk
Mathew Schwartz, Unsplash

One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"

It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.

Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .

The Court normally permits parties to later add or remove asserted claims or accused products as ...

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Court Strikes Answer, Orders Default for Unrepresented Corporate Defendant

Andrew E. Russell, Jan. 31, 2022
Motion to Strike Answer

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Generally, corporations have to be represented to appear in Federal Court, or they are at risk of default. This is something that comes up surprisingly often, including when corporate defendants try to file their own filings without an attorney (by mailing them to the clerks' office), or when counsel for a corporate defendant seeks to withdraw mid-case.

Judge Fallon issued an opinion today showing the consequences of a corporation failing to retain counsel. Plaintiff brought suit and, requested entry of default after a corporate defendant failed to answer. That corporate defendant then filed an "answer"—which, based on the docket, was not an answer at all, in that it did not respond to plaintiff's claims. Plaintiff then moved …

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Don't Forget About FRCP 16 When Seeking Post-Deadline Amendment

Jeff Castellano, Jan. 12, 2022
Amended Complaint

FRCP 15 governs amendment to pleadings, so it would stand to reason that it would be the operative rule when seeking to amend a complaint. However, when seeking to amend after the deadline in the scheduling order, the movant must satisfy not only the relatively liberal requirements of Rule 15 but also the more exacting "good cause" standard of Rule 16. Unlike Rule 15, which permits amendment in the absence of undue delay, bad faith, or dilatory motive, Rule 16 requires diligence by the party seeking amendment.

Analog Clock
None, Ocean Ng, Unsplash

A recent ruling by Judge Fallon demonstrates the danger of ignoring Rule 16's requirements when seeking amendment after the deadline. The plaintiff in NRT Tech. Corp. v. Everi Holdings Inc., C.A. No. 19-804-MN-SRF sought to amend its complaint, asserting Walker Process and sham litigation antitrust claims, almost a full year after the expiration of the amendment deadline.

Judge Fallon noted that although plaintiffs "bear the burden of showing that they exercised diligence in seeking the proposed amendment under Rule 16(b)(4)," their motion "does not address the applicable good cause standard for motions to amend filed after the deadline."

Plaintiffs apparently argued that defense counsel should have alerted them of the applicability of Rule 16, but Judge Fallon rejected that ...

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