A Blog About Intellectual Property Litigation and the District of Delaware


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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Does Filing an Amended Complaint Moot Your Preliminary Injunction Motion?

Andrew E. Russell, May 14, 2021
Motion to Stay Preliminary Injunction

david-clode-PMyak6AHT1Y-unsplash.jpg
David Clode, Unsplash

In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.

Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.

Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.

After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …

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The Goldilocks Fallacy

Nathan R. Hoeschen, May 13, 2021

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Hans-Jurgen Mager, Unsplash

How many 101 motions are too many? How many are too few?

There's a limit to the number of claims you can reasonably brief, especially if there's no agreement on representative claims. Moreover, if you're accused of infringing 2076 claims at the start of case, you can be fairly sure that most of them will drop out of the case naturally as the case progresses. So it might make sense to just eat the elephant bite by bite -- challenge 1 or 2 claims that are both vulnerable and likely to stay in the case.

On the other hand, dismissing just one or two patents might not do much to make your life easier going forward …

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Correction: Judge Connolly Does NOT Permit Formal Argument on Indefiniteness at Markman

Andrew E. Russell, May 13, 2021
Corrections IPDE

Last month, we took a look at how the different judges handle indefiniteness at Markman, a question that comes up a lot.

We reported that every judge will hear argument about indefiniteness issues at Markman. But in the Judge Connolly specific section, we noted that he has never held a term indefinite in a Markman opinion, and has instead deferred ruling on the issue until summary judgment (citing two examples). See the full post for details.

Yesterday, at a hearing, Judge Connolly mentioned a blog post and stated that the post was incorrect in suggesting that he considers indefiniteness at Markman. He clarified that he does not permit indefiniteness argument at Markman. Instead, he might entertain early …

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Can You Depose Claim Construction Experts in Delaware?

David M. Fry, May 12, 2021
Claim Construction

By and large, the view from the bench is that expert testimony provides little value in the claim construction process. It's litigation-driven extrinsic evidence, and it often plays no role in the court's final analysis. But if you choose to rely on an expert during claim construction, will you have to make them available for deposition?

Judge Stark answered this question on Friday with a resounding yes. After reiterating the general view that "[e]xpert opinions and declarations constitute extrinsic evidence . . . and are at times unhelpful," he confirmed that:

a party asking the Court to rely on such extrinsic evidence should expect to make its expert(s) available for deposition prior to a claim construction hearing, should …
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