A Blog About Intellectual Property Litigation and the District of Delaware


Better Track Down that Bar ID Card! D. Del. Institutes New Electronics Policy

Andrew E. Russell, May 9, 2023
DED

"No, I don't have a bar ID, I'm an expert witness. But you can't expect me to sit through this whole trial at $550/hr without looking at Reddit on my phone." AI Generated, displayed with permission

Prior to today, it has generally been easy to bring phones and other electronics (except for standalone cameras and recording devices) into the District of Delaware courthouse. The security team checks IDs, but did not require further identification to keep your phone.

Today, the Court issued a new electronics policy, which requires members of the public to lock their phones and other devices away upon entering the courthouse:

1. All cameras and personal electronic devices shall be subiect to inspection upon entry to the J. Caleb Boggs Federal Building and United States Courthouse. Such devices may not be used in violation of Federal Rule of Criminal Procedure 53 (prohibiting courtroom photography and broadcasting in criminal cases) and Local Civil Rule 83.2 (prohibiting photographs and broadcasting). The Court may authorize exceptions for investitures, ceremonial or naturalization proceedings, law school moot court proceedings, and activities sponsored by a bar association for continuing legal education.
2. Subject to the exemptions set forth in Paragraph 4 of this Standing Order, all cameras, cellular telephones, smart phones, smart watches, and similarly sized personal electronic devices shall be ...
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How Long Is Too Long for Good Cause?

Andrew E. Russell, May 8, 2023
Pennypack Good Cause

Andrew Russell

When a party asks to do something outside of the time limits set by the scheduling order, the Court looks to whether there is "good cause" under FRCP 16(b)(4) to modify the scheduling order. Good cause requires diligence, generally meaning that the movant could not have reasonably met the deadline it's trying to move.

Last week we got two examples of diligence analyses from the Court, one that found that a party was diligent, and one that didn't. I thought it would be interesting to line them up and compare them.

"Immediately" = Good Cause

First, Judge Fallon found good cause where a plaintiff sought to depose a third-party witness after the close of fact discovery, after the …

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Judge Williams Is Not Kidding When It Comes to His 3-Motion-in-Limine Limit. Beware...

Andrew E. Russell, May 5, 2023
Ranking Sorting

Split Cup
Tania Melnyczuk, Unsplash

Most judges in the District of Delaware limit the parties to three motions in limine per side. Visiting judges sometimes permit more, but I get the sense that this limit is something native D. Del. judges generally don't want the parties to change when submitting a proposed scheduling order.

But I can't recall a patent case where the parties did not use all of their motions in limine, and want more (even if they didn't ask the Court). These evidentiary issues can just have a large effect on trial. Plus, with a mountain of work bearing down on you in the leadup to trial, it's great to think you might knock out some opposing …

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"This Is Not Some Arcane Requirement"

Nathan R. Hoeschen, May 4, 2023
Objections to R&Rs

A few weeks ago, Andrew wrote a post on a case where Judge Connolly denied objections to a magistrate's order for failing to identify the standard of review. Well, don't call it a comeback, but it happened again, this time in a case before Judge Andrews.

DALL·E 2023-05-04 21.04.32 - 3d render of a judge break dancing
AI-Generated, displayed with permission

The objection in question actually failed under the rules on two counts—both failing to cite the relevant standard of review, and failing to include the certification that new arguments were not being raised. Judge Andrews found both failures fatal:

The first question on review is, what is the standard of review? The Local Rules recognize this: "Objections . . . shall identify the appropriate standard of review." I note that requiring the statement of a standard of review is helpful to the reviewing court. It might also help the disappointed party to consider whether it should even file objections. Barry does not identify a standard of review. . . . Barry did not comply with the Standing Order. His objections are thus overruled. I need proceed no further. . .
The Court has a standing order that states: "Any party filing objections . . . must include . . . a written statement either certifying that the objections do not raise new legal/factual arguments, or identifying the new arguments and describing the good cause for failing to previously raise [them] before the Magistrate Judge." Barry did not file such a written statement with his objections. Seaspine pointed this out. . . . Seaspine asserts that Barry has raised arguments that he did not raise before the Magistrate Judge. Had Barry filed the required statement, I would know what his position on Seaspine's assertion is. Even after Seaspine raised the issue, Barry did not seek leave to file a statement providing the required information. This is not some arcane requirement. It is a practical one, designed to make referrals to magistrate judges as efficient as the referral system can be. Barry' s objections are thus overruled. I need proceed no further

Barry v. Stryker Corporation, C.A. No. 20-1787-RGA (D. Del. May 4, 2023) (Mem. Order)

At this time, the bloggers code of ethics requires me to call this a trend. Stay safe out there.

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Court Awards $485k in Fees Against Blackbird NPE. Good Luck Collecting!

Andrew E. Russell, May 3, 2023
Fees Fee Awards

Money: Something defendants probably won't be seeing here.
Money: Something defendants probably won't be seeing here. Giorgio Trovato, Unsplash

We've talked before about the Court's decision to award fees against Blackbird Tech LLC, based on Blackbird's "objectively baseless post-Markman litigation strategy."

Back in August, the Court ordered the parties to submit a stipulated fee amount, or for the defendant to submit a fee accounting. Since then, Defendant submitted a fee accounting showing $485,420.74 in fees, consisting of $404,734.68 for lead counsel and $80,686.06 for local counsel. Blackbird filed a very short statement opposing the fees amount.

The substance of Blackbird's statement is entirely redacted, but we can tell from the Court's order that they basically just argued that they are out of business:

Blackbird responded [to the fee accounting] with a "Statement" containing less than a page of text. (D.I. 275). Blackbird says it is out of business, has no assets, and is winding up under Massachusetts law.

M2M Solutions LLC v. Sierra Wireless America Inc., C.A. No. 14-1102-RGA, D.I. 279 at 1 (D. Del. Apr. 25, 2023).

The Court held that the fact that Blackbird is out of business has no impact on the fee award amount, but noted the (very, very likely) difficulty of collecting on fees:

That may all be true, but that does not state any reasons why I should not make the award. It merely suggests that collecting on the award may be difficult to impossible.

Id.

Redactions Strike Again

If you are someone who frequently files fee declarations after winning fee motions, you probably know that it can be tricky to support the reasonableness of fee requests. Most firms keep their rates ...

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Every Second Counts

Nathan R. Hoeschen, May 2, 2023
Scheduling

It's no secret that the Court is busy, and it's only getting busier. Time being such a limited resource, requests for special (expedited) treatment are particularly fraught.

AI-Generated, displayed with permission

An important codicil (legal words for 200 Alex (#notmyAlex)) to this rule is that, once you receive this special treatment, you really can't change your mind. This rule was brought into sparkling clarity in Taiho Pharmaceutical Co., Ltd. v. Eugia Pharma Specialities Ltd., C.A. No. 19-2309-CFC (D. Del. May 1, 2023) (Oral Order), which really speaks for itself:

Plaintiffs have filed a motion to extend by two weeks the deadline for their posttrial brief and findings of fact. During these proceedings, both sides insisted on quickly proceeding to a bench trial on the validity of the '284 patent, even though that patent does not expire until 2029. The Court accommodated the parties' request, and it has repeatedly noted the importance of the parties adhering to the Court's schedule given the Court's high caseload. Plaintiffs now seek to extend their posttrial briefing schedule by an additional two weeks because they have chosen to hire additional counsel. Plaintiffs have significantly burdened the Court's resources to date and proceeded to trial knowing that they had to abide by the Courts post trial schedule. Now therefore, Plaintiffs' motion is DENIED.

So there you go—if you're going to go fast, go fast.

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Chief Judge Connolly: "There Is Evidence to Suggest that Mavexar and Its Principals May Have Used [Empty Vessel] LLC plaintiffs and Their Nominal Owners . . . to Perpetrate a Fraud on This Court, the PTO, and Numerous Defendants."

Andrew E. Russell, May 1, 2023
Mavexar

The Mavexar crab is starting to sweat.
The Mavexar crab is starting to sweat. AI-Generated

It looks like activity is picking up again in the Mavexar cases. If you haven't followed all of our coverage so far (I don't blame you!), here is a summary of where we left off.

Today, Chief Judge Connolly issued an order denying a Mavexar entity's motions to set aside or stay compliance with the Court's March order requiring them to produce various documents, including potentially privileged documents.

He found that Supreme Court precedent shows that the District Court retains jurisdiction regarding collateral issues—like this one—even after a dismissal. According to the Court, that remains true regardless of whether the issues are raised by the parties or by the Court itself (as …

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Counting By Argument, Rather Than By Claim, When Narrowing Claims

Andrew E. Russell, May 1, 2023
Claim Narrowing § 112

Abacus
Sami, CC BY 2.0

There was an interesting oral order from Judge Burke last week in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38 (D. Del. Apr. 28, 2023). Defendant apparently asserted a large number of § 112 defenses based on lack of enablement or written description. The Court held that the defendant had to narrow it's defenses.

The parties further disputed whether the parties should count § 112 arguments by limitation or by claim. The Court held that they should be counted by claim limitation, not by claim:

With respect to the parties' dispute as to whether an argument that a claim is invalid under section 112 based on a particular claim limitation counts …
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Defendants' Promise to Give Up a Throw-Away Argument Fails to Persuade Court to Stay Action

Andrew E. Russell, April 28, 2023
Ex Parte Reexamination Stay

Trash Cans
Lucas Beck, Unsplash

The defendants in Corteva Agriscience LLC v. Monsanto Company, C.A. No. 22-1046-GBW (D. Del. Apr. 27, 2023) moved to stay after a third party initiated an ex parte reexamination of the patents-in-suit.

To meet the "simplification" factor in moving to stay, defendants offered to drop their obviousness-type double patenting defense:

The first factor—whether granting the stay will simplify the issues for trial—disfavors a stay. Defendants assert a stay would simplify the case. First, Bayer claims it will agree to not argue that the '555 Patent is invalid for obvious-type double patenting ("OTDP") on the basis of U.S. Patent No. 11,149,283 ("the '238 patent" ) and that dropping this argument will simplify the issues for trial. D.I. 41 at 9.

The Court quickly dispatched with that idea, noting that it was essentially a throw-away argument:

However, Defendants recognize that Corteva can overcome the OTDP argument if Corteva files a terminal disclaimer. 3 Id. at 9-10. Because it is likely that this OTDP argument will not make it to trial anyway, the Court does not find that Bayer's offer to drop the argument will simplify the case.

The Court found that the factors did not favor a stay, especially considering the plaintiff had added two additional patents in the time since defendants filed their motion, and those two patents are not subject to re-examination. Beyond that, a stay would likely preclude injunctive relief (due to a patent expiration).

All told, it's not clear how they could have prevailed on this motion at all after the plaintiff asserted the two additional patents.

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