A Blog About Intellectual Property Litigation and the District of Delaware


Judge Burke Reiterates Difficulty of Obtaining Pre-Institution IPR Stays

David M. Fry, May 26, 2021
Motion to Stay IPR

Although the trend in D. Del. is to grant IPR stays post-institution, the inverse is also true: pre-institution have become much more difficult to obtain.

In an oral order denying a pre-institution stay last Thursday, Judge Burke took the opportunity to reiterate why these motions are generally denied:

[W]ith regard to the simplification factor, the Court (absent some unique circumstance not present here) does not see the wisdom in staying a case that is otherwise proceeding forward (with a schedule already in place), in favor of the occurrence of an event (grant of an IPR petition and subsequent institution of an IPR) that has not happened yet. The Court also notes that although, as a statistical …
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D. Del. Announces Transition to Phase 3 of Reopening Plan, Including Simultaneous Jury Trials

Andrew E. Russell, May 25, 2021
COVID-19 Trial Calendar

Hopefully we can all stop seeing this image soon!
Hopefully we can all stop seeing this image soon! CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Today the Court announced that it is proceeding to Phase 3 of the Court's reopening plan. According to the order, this means:

  • Simultaneous jury trials (!)
  • Reduction to 3 feet of social distancing
  • Masking required in all common areas
  • Masking in the courtroom is up to the individual judges

According to the Court's re-opening plan, this may also include a return to full staffing of the Clerk's Office (I'm not certain that hasn't already happened).

As set forth in the order, Phase 3 will start on June 7, 2021 which I believe is the start of the next scheduled jury trial.

The …

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Judge Burke Finds "Group Pleading" Insufficient

Jeff Castellano, May 25, 2021
MTD Dismissal

It is not uncommon for patent infringement plaintiffs naming multiple defendants to group those defendants in the complaint and make allegations of infringement generally, rather than separately detailing what wrongful acts each defendant is alleged to have done. The group pleading approach is not "impermissible per se," as Judge Burke recognized in a recent R&R, claims based on group pleading are subject to dismissal where they do not include "'enough facts to render it plausible that each defendant has performed at least one type of U.S.-related infringing act' or if it otherwise fails to provide each defendant with sufficient notice of the basis for the claims against it."

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The Perils of Including Too Few Material Facts

Nathan R. Hoeschen, May 24, 2021
Summary Judgment

Trailer presumably carrying material facts
Nathan Dumlao, Unsplash

As we've previously noted, Judges Connolly, Noreika and Hall all require parties to submit statements of material facts with any summary judgment motions. We've also noted the dangers of listing unnecessary "material facts." A new decision from Judge Connolly, however, suggests that a barebones statement of facts can be just as dangerous.

Motion for Summary Judgment Denied For Discussing Material Fact Not Included In Concise Statement

The defendants in Amgen Inc. vs. Hospira, Inc., C.A. No. 18-1064-CFC, moved for summary judgment of non-infringement, and submitted an accompanying statement facts as required by Judge Connolly. See id., D.I. 205, 207. The thrust of their argument was that the process for making their product included an "intervening …

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Court Declines to Hold Defendant to Claim Construction Position Taken in Uninstituted IPR Petition Absent Bad Faith

Andrew E. Russell, May 21, 2021
Judicial Estoppel IPR

Yesterday, Chief Judge Stark addressed whether "judicial estoppel" prevents a defendant from taking one position in an uninstituted IPR petition and asserting a contradictory position during claim construction in the district court:

[Plaintiff] Sequoia contends that [defendant] Red Hat is judicially estopped from arguing for a narrower construction than it proposed during the IPR . . . . Judicial estoppel is only appropriate when: (1) the party to be estopped is asserting a position that is irreconcilably inconsistent with one she previously asserted; (2) the party changed her position in bad faith, i.e., with an intent to play fast and loose with the court, and (3) the use of judicial estoppel is tailored to address the affront to the …
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Four+ Page Long Notice of Subsequent Authority Proves Effective

Andrew E. Russell, May 20, 2021
LR 7.1.2 Supplemental Pleading

In Delaware, Local Rule 7.1.2(b) sets deadlines for responding to motions, and states that

Except for the citation of subsequent authorities, no additional papers [other than the opening, answering, and reply briefs] shall be filed absent Court approval.

Based on this rule, parties file "notices of subsequent authorities" to present after-arising citations (and sometimes other content) to the Court.

But some attorneys disagree about just how much argument can accompany the "citation[s]" a notice of subsequent authority. The authority is mixed.

In some cases, the Court has declined to consider notices containing argument that are filed without leave. See, e.g., Forest Labs., Inc. v. Amneal Pharm. LLC, C.A. No. 14-508-LPS, 2015 U.S. Dist. LEXIS 23215, at *51 …

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You Won a Default Judgment? Congratulations! Now File Your Settlement Agreements.

David M. Fry, May 19, 2021
Damages Settlement Agreements

Checkered Flag
Bas van den Eijkhof, Unsplash

Default judgments are uncommon in Delaware patent cases. In the rare instance where a defendant misses an answer deadline, the issue is typically resolved with minimal court intervention, either because the plaintiff agrees to an extension or the court sets aside the entry of default.

But in a recent case against Aston Martin, LLC (brought by Display Technologies, LLC), it appears that a default judgment might actually be moving forward. (Side note: it isn't clear to us whether the correct legal entity was sued or served, and we take no position on that front.)

The complaint was filed in February 2020, the summons was served in May, and the clerk entered a default in July. The plaintiff eventually moved for a default judgment in December, seeking an award of $75,000 to $1 million (based on damages estimates from a client affidavit).

On Monday, Judge Andrews recognized that it would "be necessary to have a hearing in order to determine the amount of damages[,]" but made clear that he wasn't going to take the plaintiff's word for the damages number ...

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Willfulness Evidence Comes In During Liability Phase, Rules Chief Judge Stark

Jeff Castellano, May 18, 2021
Willfulness Damages

In a recent order, Judge Stark ruled that evidence of willfulness would come in during the liability phase of a jury trial in which liability and damages are being tried separately. The ruling was one of several issued in the lead up to the June jury trial in Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-LPS.

In his ruling, Judge Stark noted that "[t]he Court's interest in conservation of resources disfavors Defendants' request,"...

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Judge Noreika Points Out Nuance in O2 Micro, Declines to Construe Term

Andrew E. Russell, May 17, 2021
O2 Micro Plain Meaning

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the O2 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …
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Update on Upcoming Jury Trials: First D. Del. Patent Jury Trial to Start?

Andrew E. Russell, May 14, 2021
COVID-19 Trial Calendar

Summer Green Wheat
Artem Kniaz, Unsplash

It's been about two weeks since we last talked about the upcoming trial schedule. In that update, we noted that D. Del. jury trials are truly back, with at least one criminal jury trial having already concluded.

First Post-COVID Patent Jury Trial Next Week?

It looks like In Re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA (D. Del.) is still on track to be the first post-COVID-19 patent jury trial. It is set to start on Thursday 5/20 before Judge Andrews, and from all appearances it will go forward.

To my knowledge, the Court's COVID-19 protocols are still in effect; as such, only one jury trial may proceed at a time …

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