Last month we wrote about Chief Judge Connolly's comments on the "sad reality" of referrals of SJ motions to a magistrate judge in patent cases:
[T]he sad reality in patent cases filed in this district is that a referral of a summary judgment motion [for an R&R] pursuant to § 636(b)(l)(B) inevitably results in objections to the magistrate judge's report and recommendation, which the district court judge must review de novo. Such a referral therefore ends up doubling the amount of judicial resources needed to resolve the summary judgment motion in question. For that reason, I no longer make § 636(b)(l)(B) referrals of summary judgment motions in patent cases to a magistrate judge.
(3) Inaccessibility of the Clerk’s Office. Unless the court orders otherwise, if the clerk’s office is inaccessible . . . on the last day for filing under Rule 6(a)(1) [a period stated in days or a longer unit], then the time for filing is extended to the first accessible day that is not …
In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."
He explained the background as follows:
During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.
(emphasis added)
The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so...
As we've discussed at length, judges in the District of Delaware will usually let parties stipulate to reasonable adjustments to the case schedule, within certain limitations (including that stipulating to change the dispositive motion deadline may in some instances lead to the loss of the parties' trial date).
So it's always interesting to see when a stipulation is denied. In Osteoplastics, LLC v. Conformis, Inc., C.A. No. 20-405-MN-JLH (D. Del.), just before the close of fact discovery, the parties stipulated to a roughly 5 month delay in the remainder of the case. As the parties explain in the stip, the purpose of the delay is to provide the Court time to rule …
Yesterday, Chief Judge Connolly issued nearly identical oral orders across five cases, instituting a new procedure for referral of the case to a magistrate judge:
ORAL ORDER: On or before December 22, 2021, the parties shall either (1) submit to the Clerk of Court an executed Form AO 85 Notice, Consent, and Reference of a Civil Action to a Magistrate Judge, indicating their consent to have a United States Magistrate Judge conduct all proceedings in this case including trial, the entry of final judgment, and post-trial proceedings; or (2) a joint letter indicating that both parties do not consent to a reference of this action to a Magistrate Judge. The letter should not indicate which party or parties did not …
One of the oddities of beginning a case is the somewhat tortured interaction between Rules 26 and 16. Under Rule 26(d), most discovery can't be served until after the parties have their initial scheduling meet and confer. That conference, discussed in Rule 26(f), should take place "as soon as practicable—and in any event at least 21 days before a scheduling conference is to be held or a scheduling order is due under Rule 16(b)." Rule 16(b), in turn, requires the court to issue the scheduling order:
as soon as practicable, but unless the judge finds good cause for delay, the judge must issue it within the earlier of 90 days after any defendant has been served …
Chief Judge Connolly requires that the parties to his cases provide fairly detailed infringement and invalidity contentions early in the schedule, and requires a showing of good cause for any amendments to those contentions.
The question of what constitutes "good cause" is fact-specific, but Judge Connolly's form scheduling order does provide some helpful guidance:
Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include (a) recent discovery of material prior art despite earlier diligent search and (b) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.
Recently, the plaintiff in Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, moved to amend its infringement contentions. The motion was referred to Magistrate Judge Fallon.
Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?
Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):
(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.
We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.
Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:
ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …
Last week, Judge Hall denied a motion to dismiss claims of infringement under 35 U.S.C. § 271(g), finding that the plaintiff had "barely met the low threshold for alleging infringement of the asserted patents." The plaintiff's amended complaint alleged that the defendants imported and sold phone displays that were "remanufactured" overseas using patented methods of removing damaged glass covers from mobile phone displays so that replacement glass can be attached.
Judge Hall's R&R, issued in Viking Techs., LLC v. Squaretrade Inc., C.A. No. 20-1509-CFC-JLH, addressed four arguments made by the defendant, namely that the amended complaint: (1) did not adequately allege that the remanufacturing process performed all of the claimed steps; (2) failed to attribute specific misconduct to either defendant; (3) did not allege pre-suit notice; and (4) failed to allege infringement under 271(g) because the accused devices are not "made" by the accused process and are "materially changed" by subsequent processes.
On the first argument, the sufficiency of the allegations that the remanufacturing process met all claimed steps, Judge Hall found that "Viking has barely met the low threshold" for pleading infringement. Although the allegations of infringement in the complaint largely tracked the claim language, and did not include allegations of infringement for every claim mentioned in the complaint, Judge Hall found that the allegations were "sufficient to provide Defendants notice of the grounds on which Plaintiff’s claims rest," including "what portion of their business—mobile device repair—and what specific products—those that have had the display assemblies repaired/remanufactured—are accused of infringement." Citing the Federal Circuit's Nalco decision, she explained that there is simply "no requirement that a plaintiff plead facts establishing that each limitation of an asserted claim is met." ...
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