As we've noted in the past, it's fairly routine to stay cases once an IPR is instituted. But the Court has at least once denied a stipulated stay where the IPRs were not yet instituted.
Last week the visiting Judge Choe-Groves denied a stipulated stay where the PTAB had instituted an IPR for two out of three patents-in-suit—leaving one patent not subject to an IPR, as the parties explained in the stip:
WHEREAS, Teladoc filed three petitions for inter partes review (“IPR”) (Nos. IPR2024-00618, IPR2024-00616; and IPR2024-00617) of the Asserted Patents;
WHEREAS, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs on the ’554 and ’142 Patents on September 16, 2024 and September 17, 2024; …
I have to assume "Orca Security Ltd." is a company that provides bodyguards for killer whales.Lachlan Gowen, Unsplash
Given how often parties use search terms, you'd think we would see precedent on them more often. But opinions about the use of search terms for document production only come out occasionally. It may be that many of these disputes are resolved on teleconferences, where the generally escape the notice of anyone who is not on that case.
Anyway, this week the Court unsealed a new opinion regarding document production and the use of search terms.
In Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF (D. Del.), the parties agreed in an ESI stipulation that they would search using search terms. The searched terms resulted in about 110,000 unique hits in the defendants documents—but it produced only about 25,000 documents. It argued the remainder were non-responsive to the plaintiff's discovery requests.
The plaintiff moved to compel production of the remaining 85,000 documents. The Court granted the motion, relying primarily on the fact that the defendant is withholding so many documents that hit the search terms:
The ESI Order provides that "the parties will have substantially completed production of all non-privileged custodial ESI responsive to the parties' Priority Requests, subject to any unresolved objections[,]" by August 30, 2024. (D.1. 71 at 6; D.I. 106) Even if the court were to construe this provision broadly to support Defendant's position that documents hitting on search terms can be withheld based on relevance,' relevance is broadly construed in the context of discovery. . . . The fact that Defendant is withholding more than seventy-five percent of the documents hitting on the parties' agreed-upon search terms amounts to "specific, compelling evidence suggesting that [Defendant] is withholding responsive ESI material." Doe 1 v. Baylor Univ., 2018 WL 11471253, at *2 (W.D. Tex. May 6, 2018).
. . . Plaintiff explains that search terms combining "orca* AND" with keywords deemed to be relevant to the issues in the case resulted in about 35,000 unique documents across custodians, but Defendant's production includes less than 3,000 documents for that keyword combination. . . . These documents are facially relevant, satisfying Plaintiff's initial burden to establish the relevance of the requested information. . . . Defendant offers no argument or examples supporting its position that documents hitting on these agreed-upon search terms are not responsive.
Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF, D.I. 182 (D. Del. Oct. 22, 2024).
It's interesting that the Court focused primarily on the relevance of the documents to the issues in the case, rather than whether the documents were responsive to plaintiff's discovery requests. The scope of the plaintiff's requests was not discussed in the decision—possibly because ...
If law has one guiding principle, it is that words matter. The precise choice of verb or adjective can be the difference between friend and foe, peace and war, victory and defeat.
You've read Faust, you get it.
History's most famous lawyer?AI-Generated, displayed with permission
We saw a great example of this principle this week in I-Mab Biopharma, v. Inhibrx, Inc., C.A. No. 22-276-CJB (D. Del. Oct. 17, 2024) (Mem. Order). I-Mab was prought under the DTSA which allows damages to be calculated as either (1) damages for actual loss plus unjust enrichment or (2) a reasonable royalty. 18 U.S.C. § 1836(b)(3)(B).
The defendants—who unsurprisingly preferred a lower damages figure—served an expert damages report that noted that plaintiff's "actual damages" might be "zero." The plaintiff moved to exclude the opinion under Daubert, arguing that their damages theory was based on a reasonable royalty, and thus an opinion that their "actual damages" might be zero was neither here nor there, and was unduly prejudicial.
The defendant countered that the expert had meant that "Dr. Manning is 'not offering an opinion on actual losses, but instead references ‘actual damages’ as reflective of damages I-Mab may be awarded'—in other words, according to Defendants, the zero damages opinion is an opinion that Plaintiff’s reasonable royalty damages may be zero." Id. at 8 (quoting D.I. 364 at 23).
Judge Burke, however, found the expert's choice of words dispositive, and struck the so-called "zero damages opinion"
The Court agrees with Plaintiff that Defendants are ignoring the “actual words” that Dr. Manning used, as he did not opine in the zero damages opinion that Plaintiff’s “reasonable royalty damages” are zero (nor do Defendants point to anywhere else in Dr. Manning’s report where he opined that Plaintiff’s reasonable royalty damages should be zero). Nor do Defendants explain why an opinion that Plaintiff’s “actual damages . . . are zero” should be interpreted to actually mean that Plaintiff’s “reasonable royalty damages are zero.” Moreover, the Court agrees with Plaintiff that Dr. Manning does not seem to provide any facts or analysis in support of the zero damages opinion. Thus, Defendants have not sufficiently explained how, inter alia, Dr. Manning’s zero damages opinion is relevant in light of Plaintiff’s argument to the contrary; therefore it must be excluded.
Yes, real jurors would not be dressed like this. You'll have to use your imagination.AI-Generated, displayed with permission
I think most attorneys admire counsel who can think outside-the-box and push the law forward.
I still remember the original, magistrate-judge-level oral argument in TC Heartland, where the Court asked counsel "if your argument is correct . . . there's really only two venues in which the suit can go forward, am I right?" and counsel answered with the oral argument equivalent of "yup"—even though that outcome was directly contrary to controlling Federal Circuit precedent and how everyone had done things for decades.
Then they appealed all the way to the Supreme Court, and changed the law for everybody. Mic …
Longtime readers of the blog will know that I've got a bit of a thing for motions for fees. FeeHead is the term I like to use, although FeePle is also acceptable in close company. FeeLine and FeeLing are just hurtful.
I think I'm just going to start using this image for all of the posts and just make the caption whatever the dinosaur is shouting. Here "It's a great name!"AI-Generated, displayed with permission
Anyways.
I like a fee motion because they usually have the best facts. Today's case, Mirtech, Inc. v. Agrofresh, Inc., C.A. No. 20-1170-RGA (D. Del. Oct. 18, 2024) (Mem. Op.), actually has pretty boring facts, but addresses some novel legal issues with fees that even I, the resident FeeHead, hadn't seen before.
The parties had a wide-ranging dispute that included various trade secrets and alleged breaches of an earlier settlement agreement. That settlement agreement contained a provision allowing the prevailing party in any "action to enforce its rights under th[e] agreement" to have its fees reimbursed by the loser. Following a prolonged litigation, both parties moved for fees under this provision.
In assessing who was the prevailing party, Judge Andrews was faced with several claims that had been dismissed without prejudice, but which had never been reasserted in an an amended complaint. The parties disputed whether the party winning the dismissal had "prevailed" on those claims:
Even though I dismissed the Mir Parties’ claims without prejudice and with leave to amend, the Mir Parties chose not to amend the complaint. AgroFresh cites to Morton Int’l, Inc. v. A.E. Staley Mfg. Co., 460 F.3d 470, 477 (3d Cir. 2006), for the proposition that a dismissal without prejudice becomes a final order when the plaintiff “elected to stand on the complaint.” Morton concerned whether a dismissal without prejudice was a final order that would provide an appellate court with jurisdiction, as opposed to identifying a prevailing party on an issue. I think that similar logic would apply to deciding the prevailing party issue. The Mir Parties previously expressed that they “do not intend to amend the complaint” (D.I. 41), and they have not done so. Furthermore, AgroFresh argues that the statutes of limitations on the Mir Parties’ claims have expired, meaning the claims are no longer viable. The Mir Parties do not address this. This is not a situation where the dismissal “has no preclusive effect on the plaintiff’s ability to re-file” or has no “material alteration of the legal relationship of the parties.”
ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us.AI-Generated, displayed with permission
Well this is a new one. In Apple Inc. v. Masimo Corp., C.A. No. 22-1377-JLH (D. Del.), the parties dispute whether the patentee, Apple, has a right to a jury trial. That hinges on whether Apple is seeking damages—if it can only get an injunction, it has no right to a jury trial. Id., D.I. 745 at 5.
The Court found that Apple had, in fact, asked for a total of $250 in damages for infringement of four design patents and five utility patents, and that it was therefore entitled to a jury trial. That's two-hundred and fifty dollars—you're not missing any zeros or a "k" afterwards.
(By my math, assuming at least five attorneys and two paralegals are involved, I'd guess that Apple's total damages figure is equal to the cost of about four minutes of trial time by Apple's trial team, or less. It's probably less.)
Apparently, Apple's damages figure results from the fact that $250 is the statutory minimum damages for infringement of a design patent under 35 USC § 289. According to the Court, Apple's experts testified that the $250 statutory minimum for the design patents under § 289 also constituted the entire damages award for the utility patents under § 284. Id., D.I. 745 at 4-5 n.1. Apple also wants the Court to treble that to $750. Id.
But Masimo really doesn't want a jury trial here. It pushed hard for a bench trial, to the point where its counsel apparently brought $900 in cash to court and ...
Most readers already know the answer to the question in the title. This post is, honestly, mainly for newer attorneys and people who search for this question.
But it's something that comes up a lot! When a jury first issues a verdict on a verdict form, it shows up on the docket like this:
Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904, D.I. 285 (D. Del. Sept. 27, 2024).
Often, there will be a panicked question from (typically) a newer associate on the case, along the lines of "Why is the verdict sealed? Are we not allowed to tell the client? What can we send them?"
Fear not! The verdict sheet is sealed because it has the juror names/signatures, and the Court typically issues a redacted version the same day that can be shared with the client or anyone else. The docket entry will look like this:
286 REDACTED VERSION of 286 Sealed Jury Verdict. (nms) (Entered: 09/27/2024)
Id., D.I. 286.
Until then, a verdict announced in open court is not sealed and can normally be shared. The only sealed item is the verdict form containing the juror's names.
There's not a lot of space in a discovery dispute letter to get into the real nitty gritty of the dispute. You've gotta put in the standard, say the word "Pennypack" 20 or 30 times, and work in the phrase "flies in the face of" at least once.
AI-Generated, displayed with permission
A recent opinion from Judge Burke, however, illustrates the folly of briefing disputes in this way, even if it is satisfying.
The defendant in Attentive Mobile Inc. v. Stodge Inc., C.A. No. 23-87, D.I. 400 (D. Del. Oct. 16, 2024) moved for a protective order to prevent the depositions of two employees. The opening letter apparently got quite into the weeds about the nature …
The patentee's TRO attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit.Tim Mossholder, Unsplash
Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.
(Because this was not an ANDA, there was no automatic stay.)
The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …
(Eds. Note -- The title took significantly longer to write than the article. You're welcome)
The Foman factors are about as ubiquitous and well known as any test in the law, coming down as they do from a sixty-some year old Supreme Court case, and relating to one of the most common possible motions. A check of Lexis shows a little under 40,000 cites.
As a quick refresher for any of you law students who have been assigned the blog by a particularly devious and brilliant professor, Foman v. Davis, 371 U.S. 178, 182 (1962) held that "In the absence of any apparent or declared reason -- such as undue delay, bad faith or dilatory motive on the part of …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
