A Blog About Intellectual Property Litigation and the District of Delaware


An AI rendering of an object that is both a sword and a shield. I can't argue with it.
An AI rendering of an object that is both a sword and a shield. I can't argue with it. AI-Generated, displayed with permission

There are certain exclusion arguments that stand out as tending to work more often than others—things like a Rule 702 motion for failure to apportion, a motion to exclude a Doctrine of Equivalents argument offered for the first time in a reply expert report, or a motion to exclude an exhibit not on the exhibit list. It's not that they win every single time, but parties often seem to have an uphill battle against them.

Another argument on that list is "using privilege as a sword and a shield." It's not uncommon for a party to get …

Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.

She's so lonely
She's so lonely Dima Solomin, Unsplash

Judge Andrews issued an interesting decision yesterday that illustrates the unique difficulties of proving infringement of a means + function claim.

In ViaTech Techs., Inc. v. Adobe Inc., C.A. No. 20-538-RGA (D. Del. July 17, 2024), the Court construed a means + term as having two functions:

  1. communicating with a dynamic license database, and
  2. monitoring use of the digital content by a user to determine (yadda, yadda, not …

Is it such a long flight?
Is it such a long flight? AI-Generated, displayed with permission

It's hard to believe it has been almost a year, but last August we wrote about a Mavexar-related witness who refused to travel to Delaware to testify, instead insisting that she would offer testimony only remotely.

The Court fined her $200 per day for contempt of Court. She immediately appealed, arguing that the Court cannot force her to attend as she is outside of the 100-mile subpoena radius permitted under FRCP 45. The Court denied her motion to stay the fine pending appeal.

Yesterday, the Federal Circuit issued an order affirming the contempt sanction (and doing so pretty enthusiastically). The Federal Circuit made clear that the Court's inherent authority absolutely …

Remote trial testimony was briefly a hot-button issue in the district (on account of the whole plague thing). But in our new, vaccinated, world it has receded to a background issue only rarely surfacing.

Todd Cravens, Unsplash

So there's not many opinions on exactly what sort of hardships might qualify someone to testify remotely under Rule 43(a). Thankfully Judge Fallon's opinion today in AAG Glass, LLC v. Laminados de Aller, S.A., C.A. No. 21-638-SRF (D. Del. July 15, 2024) (Mem. Order), gives us a few examples of what hardships do not justify remote testimony.

Losing Your Visa After A DUI

Okay, this one is a bit of a gimme. The defendant witness, Roberta Garcia, was a …

Phases
Mason Kimbarovsky, Unsplash

In Koninklijke Philips N.V. v. Thales DIS AIS USA LLC, C.A. No. 20-1713 (D. Del.), the plaintiff brought patent infringement claims for several patents, plus a DJ claim seeking a declaratory judgment of no FRAND license defense, citing a previous Delaware case finding no such defense absent a sworn affidavit that the defendant would sign a global FRAND license.

In the alternative, if the defendant submitted a signed affidavit, Plaintiff's complaint sought a "declaratory judgment determining the appropriate worldwide FRAND licensing terms for Philips’ world-wide portfolio of patents under ETSI policies."

With its answer, the defendant included just such a signed affidavit, along with its own DJ counterclaim and breach of contract counterclaim …

Danger Landmines
AI-Generated, displayed with permission

One of our more popular posts over time has been a post about what you can and cannot stipulate to in D. Del.

In the post, we note that certain kinds of stipulations are kinda iffy, in that "the parties can file a stipulation [about the issue] but the Court may deny or modify it, or the stipulation may have unexpected consequences." One of those categories is requests to move the trial date.

We got a good example of that this week in Rotolight Limited v. Videndum PLC, C.A. No. 22-0098-JLH, D.I. 119 (D. Del. July 8, 2024). The parties tried to stipulate to move the trial date back by …

The (long breath) Delaware Default Standard for Discovery, Including Discovery of Electronically Stored Information (ESI), is well, a default. It's designed to be flexible enough to accomodate the big case and the small.

Not sure what's going on with Big T's legs in this one
Not sure what's going on with Big T's legs in this one AI-Generated, displayed with permission

This leads to seeming anomalies like section 5(b), which sets forth an in-depth procedure for electing search terms, but does not actually require the parties to use them:

If the producing party elects to use search terms to locate potentially responsive ESI, it shall disclose the search terms to the requesting party. Absent a showing of good cause, a requesting party may request no more than 10 additional terms to be used in connection with the electronic search. Focused terms, rather than over-broad terms (e.g ., product and company names), shall be employed . The producing party shall search (i) the non-custodial data sources identified in accordance with paragraph 3(b); and (ii) emails and other ESI maintained by the custodians identified in accordance with paragraph 3(a).

So, do the parties ever have to use search terms? Judge Williams gave us one of the first clear answers to that question I've seen in Biogen Inc. et al v. Sandoz Inc., C.A. No. 22-2290-GBW, D.I. 364 (D. Del. June 17, 2024):

IT IS HEREBY ORDERED that Biogen's request to compel Defendants to conduct additional search terms is GRANTED-IN- PART. Defendants have not run any keyword searches on ESI yet, so contend that the Delaware Default Standard does not apply. While there is no per se obligation to use ESI search terms, a party has a separate obligation to comply with discovery obligations. Defendants' current manual searches for emails have turned up only a few hundred emails. This production is facially unreasonable. it strikes the Court as implausible that two international companies, in the course of manufacturing, commercializing, and seeking approval of a complex biosimilar drug created only a few hundred responsive emails. While not every case requires search terms, in the circumstances of this case, Defendants have not provided a workable alternative. Defendants' suggestion that Biogen must provide all of the terms, and guess-and-check their way into a reasonably proportionate search, is not how the Delaware Default Standard was meant to operate. Thus, IT IS HEREBY ORDERED that Defendants shall propose search terms to respond to Biogen's requests for productions. Biogen will then have the opportunity to, in accordance with the Delaware Default Standard, propose ten search terms of their own across ten total custodians.

Id. (internal citations omitted).

There you go, there is no "per se obligation" to use search terms, you have to offer a workable alternative.

This image makes sense if you get to the end of this post, I swear.
This image makes sense if you get to the end of this post, I swear. AI-Generated, displayed with permission

Last week, during our blog break, visiting Judge John Frank Murphy of the Eastern District of Pennsylvania issued a fascinating disqualification decision in a patent action, Veeva Systems Inc. v. Tact.ai Technologies, Inc., Aktana, Inc., C.A. No. 23-1032 (D. Del. July 3, 2024).

In short, an attorney represented the current defendant, Veeva, against a trade secret and patent infringement suit back in 2013. That suit related to software called "Appoved Email." The attorney supervised the defense team and ultimately helped draft a settlement agreement that included a cross-license of some Veeva patent applications. Id. at 2-5.

Since then, …

If you've spent way too much time on the internet lately, you'll likely have seen way too many memes about how kids today don't understand the order of operations. The typical format is some bookface (tm) post along the lines of:

999,999 out of 1,000,000 people get this wrong:
3 + 4(3+2) - 2 X 3 = ?
  1. 17
  2. The darkness at the end of all time
  3. 97
  4. (audible belch)

And then there's someone confidently giving the wrong answer.

"Remras!" Camylla Battani, Unsplash

Of course, the correct answer can only be arrived at by following the prescribed order of operations. This same concept comes up quite often in civil procedure, but the application is often less straightforward than good old …

District Court Seal

We heard from the Court last week that it has selected a new magistrate judge for the District of Delaware: Eleanor G. Tennyson.

The announcement describes her background:

The United States District Court for the District of Delaware is pleased to announce its selection of Eleanor G. Tennyson as a United States Magistrate Judge. Ms. Tennyson fills the position vacated by Judge Jennifer Hall upon Judge Hall’s elevation to the District Court.
Ms. Tennyson is an honors graduate of Grinnell College and received her master’s degree in chemistry from the Clemson University Graduate School of Chemistry. Ms. Tennyson earned her law degree from the University of Iowa College of Law where she was managing editor of the Iowa Law Review. …