A Blog About Intellectual Property Litigation and the District of Delaware

IP Edge? Is that you?
IP Edge? Is that you? Ahmed Zayan, Unsplash

We've talked a lot about Judge Connolly's April 2022 standing orders on disclosure statements and litigation funding, including earlier this month when we Judge Connolly stayed an action after a plaintiff failed to fully comply with those orders.

(Plaintiff in that action, by the way, filed an updated disclosure statement claiming it has no knowledge to disclose—we'll have to see how the Court responds to that).

Yesterday, it happened again, but it was triggered by a clever filing by a defendant. In Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), the Court put an order on the docket for the parties to comply with its standing orders:

ORAL ORDER: The parties are directed to certify within five days that they have complied with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1. The parties are also reminded of their obligation to comply with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Third-Party Funding Arrangements. Ordered by Judge Colm F. Connolly on 5/13/2022. (nmf) (Entered: 05/13/2022)

In response, plaintiff filed an updated Rule 7.1 statement but, as far as I can tell, no litigation funding

Man rushing to get important facts into the record prior to appeal
Man rushing to get important facts into the record prior to appeal Man Holding Handbag, Andy Beales, Unsplash

Wow, it's hard to imagine how a party could have a fact disclosure that is later than this, other than maybe trying to offer new facts for the first time on appeal.

In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the parties had a jury trial in December 2021. The jury found infringement, no invalidity, willfulness, and damages of over $12 million against two defendants. The Court later entered a (mostly undisputed) permanent injunction.

The Court addressed the defendant's § 101 claims by motion and briefing after the …

Akram Huseyn, Unsplash

The District of Delaware announced today that it is instituting a 5pm filing deadline for all documents other than initial pleadings. Chief Judge Connolly issued an order revising section (F) of the Court's CMECF Procedures (part of the Court's other local rules):

Effective September 1, 2022, section (F) of the Court's Revised Administrative Procedures Governing Filing and Service by Electronic Means shall be further revised as follows, to reflect a new filing and service deadline of 5:00 p.m. Eastern Time for all documents other than initial pleadings:
(F) Deadlines
Filing documents electronically does not in any way alter any filing deadlines. Aside from initial pleadings, all electronic transmissions of documents (including, but not limited to, motions, briefs, appendices, and discovery responses) must be completed by 5:00 p.m. Eastern Time, in order to be considered timely filed and served that day. All electronic transmissions of initial pleadings must be completed prior to midnight Eastern Time, in order to be considered timely filed that day. When CM/ECF calculates a deadline, it will include intermediate weekends and holidays as prescribed in Fed.R.Civ.P. 6.

That's a lot of text. You may be wondering: did anything else change? No. The text is identical to the current version other than ...

Hand Washing
Tim Mossholder, Unsplash

In an opinion on Friday, visiting Judge Stephanos Bibas of the Third Circuit pointed out a split in District of Delaware cases regarding whether a party can bring unclean hands counterclaims in patent cases:

Nor does TexasLDPC persuade me this declaratory-judgment counterclaim fails as a matter of law. True, courts disagree whether “unclean hands” can support a declaration that a patent is unenforceable. Compare In re Gabapentin Patent Litig., 649 F. Supp. 2d 340, 348 (D.N.J. 2009) (concluding it cannot), and Kimberly-Clark Worldwide, Inc. v. Cardinal Health 200, LLC, 2012 U.S. Dist. LEXIS 104983, at *2–3 (D. Del. Jul. 27, 2012) (same),[ ]with The Meds. Co. v. Teva Parenteral Meds., Inc., 2011 WL 13141923, at *1 n.2 (D. Del. Oct. 6, 2011) (denying motion to dismiss or strike unclean hands counterclaim).

Judge Bibas sided with the cases holding that "unclean hands" is a proper counterclaim in a patent action:

Still, I will not stop Defendants from demanding a declaratory judgment about the unclean-hands doctrine. In my view, I may grant such relief. See Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1025–26 (Fed. Cir. 2008) (“[A] district court ...

Apples at which the patentee will not be getting a third bite.
Apples at which the patentee will not be getting a third bite. Pierpaolo Riondato, Unsplash

Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).

He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:

Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.

Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)

Id. at 19.

Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:

The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...

The view as you take off on the redeye after a one-hour deposition of a non-critical witness
The view as you take off on the redeye after a one-hour deposition of a non-critical witness Saman Tsang, Unsplash

At this point, the vast majority of the impact of COVID-19 on the District of Delaware seems to have passed. The Court has entered Phase 4, full return to normal operations. It's becoming uncommon, at this point, to see counsel or Court personnel wearing masks at the courthouse.

The COVID-19 pandemic was obviously a horrible tragedy, but one positive response to it has been the widespread adoption of remote depositions, which are far (far!) more efficient for certain circumstances. If you've ever flown cross-country for a deposition, then boarded the red-eye back immediately after the deposition, you may agree.

But sometimes the other side won't agree to a remote deposition. That's why I found this order from Judge Stark (who it seems is still working hard in Delaware) to be interesting:

ORAL ORDER: Having reviewed the parties' letters regarding a discovery dispute (see D.I. 543, 544), IT IS HEREBY ORDERED that Plaintiffs' request that MSN and Sandoz be required to produce Dr. Reus for an in-person deposition is DENIED. Virtual depositions have been permitted for fact discovery in this case due to the ongoing global health crisis. (See, e.g., D.I. 34 at 13-14) Defendants represent that their expert is at some greater-than-average risk of adverse health consequences were he to contract Covid and Plaintiffs fail to identify any meaningful prejudice that would ...

This case is not about pizza, but I am writing this post while hungry
shaian ramesht, Unsplash

Engineers move all of the time. They start at one company that makes pizza oven accessories and related widgets. They bring that company to the delicious heights of excellence, authoring patent after patent in their pursuit of the perfect crust. Then, having achieved all anyone could hope for, they move on to a competing pizza oven accessory conglomerate, to do it all over again.

That being the case, its surprising we don't see more disputes like the one in Signode Industrial Group LLC v. Polychem, LLC, C.A. No 22-519-VAC-CJB, D.I. 94 (D. Del. Aug. 10, 2022). Like our metaphorical Pizzaneer, Flavio Finzo worked for Signode for many years and was a named inventor on a couple patents in suit. After retiring he started a consulting firm that worked with Polychem to develop their competing product (something to do with straps, totally no pizza involved, I am just hungry).

Signode then moved for a protective order to prohibit the defendant from "eliciting or receiving" any confidential or privileged information from Mr. Finzo, alleging that several facts referenced in the answer could only have come from his confidential and/or privileged knowledge. Defendant agreed that they had not and would not elicit any privileged information, and agreed to treat any confidential information pursuant to the existing protective order. Judge Burke held that these concessions were ...

Dave Adamson, Unsplash

It happens all of the time: You've got arguments A, B, and C that you want to fit in your brief, but you don't have the space to address them all.

What to do? Cut the weaker arguments?

For most attorneys, the answer is: of course not! They move the lesser argument to a footnote in a hail-mary attempt to win if the better arguments fail.

Does it work? Not usually. Here in D. Del., judges have suggested that parties waive arguments when they present them only in cursory footnotes, and Judge Noreika recently noted that "courts traditionally do not consider arguments presented entirely in footnotes." Nw. Univ. v. Universal Robots A/S, C.A. No. …

Gary Chan, Unsplash

Hot on the heels of yesterday's post about Chief Judge Connolly's preferred style of Jury instructions, Judge Noreika just issued an Oral Order outlining her own preferences for the format and content of final jury instructions.

The parties in Aqua Connect, Inc. et al v. TeamViewer US, LLC, C.A. No. 18-1572-MN submitted their proposed final jury instructions to the Court about 2 weeks ago, which included several disputes. Yesterday Judge Noreika issued the Oral Order below requiring them to resubmit the proposal with several modifications:

The Court has reviewed the proposed final jury instructions and finds that submission does not conform with the Courts practices. Moreover, it appears as though the parties have not made …

Phases Mason Kimbarovsky, Unsplash

We've previously talked about how Chief Judge Connolly's new form orders split patent trials into phases, with willful infringement and damages tried only if there is a finding of infringement. We noted at the time that the new form order doesn't say in which phase invalidity goes—with infringement, or afterwards?

It looked like we got an answer late last month, when Chief Judge Connolly held a phased jury trial in Magnolia Medical Technologies, Inc. v. Kurin, Inc., C.A. No. 19-97-CFC-CJB (D. Del.). There, the Court split the trial into two phases, with infringement by itself and then invalidity and damages together.

In Magnolia, the jury found infringement, so …