A Blog About Intellectual Property Litigation and the District of Delaware


Court Orders Production of Foreign Sales Data

Andrew E. Russell, March 8, 2022
Discovery Dispute Discovery

Dollar Bills
Sharon McCutcheon, Unsplash

The question of whether a defendant has to produce foreign sales information seems to come up more frequently these days in patent cases, with plaintiffs coming up with new ways to reach—or at least attempt to reach—those sales in U.S. patent cases.

Yesterday, Magistrate Judge Hall resolved a dispute about whether a plaintiff is entitled to discovery on foreign sales. She held that even though their foreign-sales damages theory appeared shaky, the foreign sales discovery was warranted:

ORAL ORDER: Having reviewed the parties' letters in connection with the motion for teleconference to resolve discovery dispute, and having heard oral argument via teleconference on March 7, 2022, IT IS HEREBY ORDERED that the second and third …
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New Judge Noreika Procedure Pays Off: After Extra Pre-Trial Claim Constructions, Court Vacates Trial Date and Requests Proposed Form of Judgment

Andrew E. Russell, March 7, 2022
Summary Judgment FRCP 56

Speed
Arthur Poulin, Unsplash

In January, we noticed an interesting new procedure from Judge Norieka where, rather than address the pending motions on eleven grounds in detail, she ordered the parties to file a joint letter ranking their summary judgment motions and identifying any disputes over claim scope.

When the parties identified some "dispositive" claim construction disputes in the letter, the Court ordered briefing on those disputes.

Now, the Court has held its Markman hearing (less than a month after close of briefing), and issued an oral ruling on the new constructions at the hearing. It found for the defendants on all disputes.

The parties then filed a letter, where the plaintiff admitted that, if the Court sticks with …

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D. Del. Announces Plan for Judge Stark's Departure That Includes Cancelling Mediations in Cases Before All Judges

Andrew E. Russell, March 3, 2022
Visiting Judges Congestion

The gloves are off.
The gloves are off. Arisa Chattasa, Unsplash

The Court announced it's plan for Judge Stark's departure today, and it includes some bold moves.

All attorneys who practice in D. Del. should read the announcement in full—it's not that long—but here are some highlights.

Pending Mediations Will Be Canceled

Unlike previous transitions, most district court cases will be impacted, because magistrate judge referrals for mediation and all pending mediations will be canceled except in select instances:

Other than mediations in bankruptcy appeals or unless specifically directed otherwise by the Court, all referrals to Magistrate Judges for alternate dispute resolution will be vacated and all currently scheduled mediations will be canceled.

Thus, mediations in non-judge-Stark cases will be canceled. …

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What Are Technology Tutorials in Patent Cases, and Are They Worth It?

Andrew E. Russell, March 2, 2022
Technology Tutorial Summary Judgment

Looks like they went with the low-cost version
Looks like they went with the low-cost version Markus Winkler, Unsplash

In the District of Delaware, five of our eight judges use form scheduling orders that provide a deadline for the submission of a "Technology Tutorial" around the time of claim construction.

Former Judge Stark required the parties to submit a tech tutorial in patent cases with the opening claim construction brief. Judge Stark's form order, for example, provided that:

Tutorial Describing the Technology and Matters in Issue. Unless otherwise ordered by the Court, the parties shall provide the Court, no later than the date on which their opening claim construction briefs are due, a tutorial on the technology at issue. In that regard, the parties may separately …
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Judge Fallon: No New § 101 Theories After Ineligibility Determination Reversed by Federal Circuit

Andrew E. Russell, March 1, 2022
JMOL FRCP 50(a)

Disappointment Ice Cream
Sarah Kilian, Unsplash

Back in 2019, the parties in C.R. Bard, Inc. v. AngioDynamics, Inc., C.A. 15-218-JFB-SRF (D. Del.) went to trial on infringement claims for a patent involving a "means of identification" of certain medical devices.

During trial, at the close of plaintiffs' case, visiting Judge Bataillon granted an oral FRCP 50(a) motion for JMOL for the defendant (wow!), finding that the patent was ineligible as directed to an abstract idea involving labeling and printed matter.

The Federal Circuit later reversed, holding that the claims were patent eligible. Defendant then sought rehearing en banc, arguing that the panel's determination that the claims were patent eligible would cut off its ability to present other ineligibility arguments …

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Delaware State and Federal Courts Lift Mask Mandates

Andrew E. Russell, Feb. 28, 2022
DED COVID-19

Masks
Afif Kusuma, Unsplash

Effective today, the District of Delaware lifted its mask mandate for public areas:

NOW THEREFORE, it is HEREBY ORDERED that:
1. Effective immediately, masking in public areas of the Court (lobby, corridors, elevators, restrooms, etc.) is no longer required. People may choose to wear a face mask at their discretion. Prior standing orders of the Court that imposed mask requirements are VACATED to the extent, and only to the extent, such orders imposed mask requirements.
2. Judges retain the discretion to impose mask requirements in their courtrooms as they see fit.

Delaware state courts are likewise ending their mask mandate, starting on Wednesday of this week.

In a message to the bar, Delaware Supreme Court Chief …

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Chief Judge Connolly Bifurcates Patent Trial: Infringement First, then Invalidity, Damages, and Willfulness

Andrew E. Russell, Feb. 26, 2022
Trial Trial Procedure

Bifurcated Cake
Henry Be, Unsplash

Bifurcation into liability and damages phases used to be common, with former Judge Robinson often splitting liability and damages, at one point saying that “bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Dutch Branch of Streamserve Dev. AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, 2009 U.S. Dist. LEXIS 76006, at *2 (D. Del. Aug. 26, 2009).

These days, bifurcation still happens here, but it is a bit less common than it was back then.

Earlier this month, though, Chief Judge Connolly raised bifurcation in a way I hadn't heard of, suggesting that the parties split infringement from invalidity and other issues, with jury deliberations in between:

At …
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Another Bite at the Apple

Nathan R. Hoeschen, Feb. 24, 2022
Objections to R&Rs

Apple with a bite
Dainis Graveris, Unsplash

Referring a motion to a magistrate, as Chief Judge Connolly recently noted, often fails to result in the efficiency gains one might expect, because it "inevitably results in objections to the magistrate judge's report and recommendation which the district court judge must review de novo." Fundamental Innovation Systems Int. LLC v. Lenovo (U.S.), Inc., C.A. No. 20-551-CFC, D.I. 68 (D. Del. Nov. 23, 2021) (referring to SJ motions).

This led me to wonder if objections to report and recommendations should be so common, i.e., do they have any real chance at success? Analyzing the results for objections to R&R's filed in Delaware patent cases in 2021, seems to show that they …

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Another Judge Stark Reassignment Pending His Departure

Andrew E. Russell, Feb. 24, 2022
Congestion Judicial Vacancies

Fork in the Road
Jens Lelie, Unsplash

Ever since Judge Stark was confirmed to the Federal Circuit, one of the most common questions I've received is: what will happen to his current cases, and when will we know?

There have already been some reassignments to visiting judges, but few clear indications of what may happen in the bulk of Judge Stark's current cases. We got some more hints yesterday in this oral order from Judge Stark:

ORAL ORDER: IT IS HEREBY ORDERED that this case will be reassigned to another judge and the pretrial conference (currently scheduled for March 24) and jury trial (currently scheduled for April 6) will be rescheduled by that judge. Accordingly, the current pretrial conference and trial dates are …
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Likelihood of Stay Pending IPR in W.D. Texas vs. Delaware

Emily S. DiBenedetto, Feb. 23, 2022
IPR Stay

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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