A Blog About Intellectual Property Litigation and the District of Delaware


Chief Judge Connolly Limits Parties to 10 Claim Terms (Or, Why It's Helpful to Pay Attention to Seemingly-Obscure Precedent)

Andrew E. Russell, Feb. 23, 2022
10 Terms Stipulation

As frequent readers of this blog already know, some judges in Delaware have limited parties to a total of 10 terms for construction across all asserted patents.

We've noted at least one previous instance where Chief Judge Connolly seemed to limit the parties to 10 claim construction disputes. Last week, the Court made an even clearer statement on the issue.

The parties in MG FreeSites Ltd v. ScorpCast, LLC, C.A. No. 20-1012-CFC-JLH (D. Del.) filed their joint claim chart in advance of claim construction, and listed 15 terms in dispute. They also included a footnote smartly noting Chief Judge Connolly's practice not to permit argument on indefiniteness at the claim construction stage.

They then filed a stipulation …

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Court Criticizes Plaintiffs' "Heading-Scratching Decision" to Meet and Confer Only One Hour Before Deadline, Sua Sponte Strikes Part of Status Report

Andrew E. Russell, Feb. 22, 2022
Joint Status Report Sua Sponte

Clock
Tristan Colangelo, Unsplash

The District of Delaware sometimes requires the parties to file joint status reports, usually either at dates set in the scheduling order (e.g. an "interim status report") or following developments in the case that require more information, like a stipulated stay that has expired, or after a communication from the parties regarding a development in the case.

Typically, by convention, plaintiff handles the initial draft of these reports—but not always. Either way, one side will send a draft, and the other side will prove its position, sometimes reflexively opposing whatever is in the initial draft. The final report will often be split, with "Plaintiff's position" and "Defendant's position," although sometimes the parties will agree to a …

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March Jury Trial Update

Emily S. DiBenedetto, Feb. 21, 2022

marcin-skalij-lfCm8yyTGIo-unsplash
Marcin Skalij, Unsplash

This month, COVID has not directly caused jury trial delays for the District of Delaware, though we don't know of any jury trials that went forward in February.

In the next few months, the Court has a busy docket, filled with patent cases and sprinkled with cases before visiting judges. In particular, Judge L. Felipe Restrepo, sitting by designation from the 3rd Circuit Court of Appeals, is scheduled to handle three out of the sixteen upcoming cases. Judge Stark is also scheduled to handle two upcoming jury trials, though this appears likely to change given his confirmation to the Federal Circuit.

February Jury Trials Off the Calendar

None of the expected February jury trials went forward, though no delay or cancellation was due to COVID.

  • 2/7/2022: Skeans v. Key Commercial Finance LLC, C.A. 18-1516-CFC-SRF (D. Del.): In this fraud/estate case, Plaintiff requested that the in-person pretrial conference be adapted into a virtual one after Plaintiff’s residential community went into a COVID lockdown, preventing his physical attendance. (D.I. 117). Thereafter, the trial was postponed due to "a change in the Court's trial calendar," with the parties' consent.
  • 2/14/2022: Chugai Pharmaceutical Co., Ltd. v. Alexion Pharmaceuticals, Inc., C.A. 18-1802-MN (D. Del.): The parties stayed this five-day patent trial at the last moment, according to the docket. The Court previously rescheduled it from January due to COVID concerns for witnesses and attorneys traveling from outside the U.S. (D.I. 399).
  • 2/22/2022: Deshields v. JR Rents Inc., C.A. 20-1626-MN-SRF (D. Del.): Stipulated ...
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Giving Away the Crown Jewels

Nathan R. Hoeschen, Feb. 17, 2022
Default Standard Source Code

Computer Screen
Arget, Unsplash

As we must have discussed in one of the prior 238,000,000 entries (estimated) on this blog, the Default Standard for Discovery requires an accused infringer to produce it's "core technical documents" early in the case (60 days after the scheduling conference), to allow the patentee to prepare its infringement contentions. This leads to the question of what exactly constitutes a "core technical document?" and, in particular, is source code a "core technical document"?

This question has gone largely unaddressed in the years since the Default Standard was adopted [editor's note: with at least one exception back in 2012]. This week, however, Judge Stark gave us a parting gift of a bit of clarity, holding that …

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Be Careful What You File

Andrew E. Russell, Feb. 16, 2022

Surprise Monkey
Jamie Haughton, Unsplash

When filing briefs under seal, Attorneys often forget that they are eventually going to have to file a public version of everything they file under seal, including exhibits.

This happens a lot with summary judgment and Daubert briefs, where attorneys can sometimes be so deep in the weeds of the substantive portions of their motions that they don't have a lot of time to consider the mechanics of getting it on the docket. They may be eager to attach things to prove their case, but can lose sight of why it's not always be advisable to submit thousands of pages of exhibits.

This often comes to a head when redactions are due. Some Delaware judges have …

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How Much Is Enough to Convey Standing?

Jeff Castellano, Feb. 15, 2022
Standing MTD

A patent licensee must hold "all substantial rights" in the licensed patents in order to maintain a patent infringement suit on its own. What constitutes "all substantial rights" is often the subject of dispute in cases brought by licensees without their licensors. Courts faced with these disputes will often examine the nature and scope of the rights transferred by the license, including the right to use the patent, the right to sublicense, and the right to sue.

Judge Andrews recently resolved a standing dispute in favor of the licensee, finding that the license in question...

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Judge Noreika: Likely Trial Witnesses Get In-Person Depositions In the U.S., Not Remote Depositions

Andrew E. Russell, Feb. 14, 2022
Depositions Deposition

COVID-19
Fusion Medical Animation, Unsplash

Not all attorneys love remote depositions, even if they are much more convenient and practical in many cases (especially for foreign witnesses). The parties in Supernus Pharmaceuticals, Inc. v. Lupin Limited, C.A. No. 21-1293-MN (D. Del.), an ANDA case, brought two disputes before Judge Noreika about remote depositions:

  1. Whether all parties should be required to make all witnesses available live, instead of via remote deposition; and
  2. Whether all parties, including a defendant who brought counterclaims, should be required to bring their witnesses to the United States for deposition without the other parties having to engage in Hague Convention procedures.

Plaintiff sought to force live, in-person depositions of all witnesses in the …

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Stipulation Denied

Andrew E. Russell, Feb. 11, 2022
Case Management Stipulation

Parties in Delaware can generally freely stipulate to many things that don't directly impact the Court, including common things like schedule adjustments, authenticity of documents, protective orders, and ESI procedures—as long as you stay away from trouble spots like increasing page limits or dates for dispositive motions or trial. But every once in a while a stipulation is denied, and it's always interesting when and why that happens.

Last month, the parties in ImmerVision, Inc. v. LG Electronics U.S.A., Inc., 18-1630-MN-CJB (D. Del.) filed a stipulation staying the action pending the outcome of objections to the magistrate judge's claim construction R&R. They noted that, if the R&R is adopted, plaintiff would stipulate to non-infringement and the …

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Oh Captain, My Captain

Nathan R. Hoeschen, Feb. 10, 2022
Visiting Judges Congestion

Andreas Dress, Unsplash

It is with heavy heart that I announce that Judge Stark has finally been confirmed to the Federal Circuit. Appointed to our little Court in 2010, Judge Stark's time with us has been all too brief, and he will be dearly missed by all of us who practiced before him and/or shared his love of T. Swift (2/2)

With Judge O'Malley set to retire on March 11, Judge Stark is likely to be sworn in very shortly thereafter. If the past is any guide, we can soon expect Judge Stark's active cases to be transferred to visiting visiting judges or magistrates while the district awaits a new Article III judge.

We here at IP/DE will keep you updated on any Judge Stark happenings at the Federal Circuit, on the theory that he will always carry a piece of Delaware with him, like a traveling embassy for the first state.

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Original Complaint Supports Post-Suit Inducement and Willful Infringement, Finds Judge Burke

Jeff Castellano, Feb. 9, 2022
Willfulness MTD

It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.

In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...

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