A Blog About Intellectual Property Litigation and the District of Delaware

Elisha Terada, Unsplash

IP/DE launched 3 years ago today, with our first post published on May 25, 2020. The site started off as my pandemic project. I'm thrilled that it's still going three years later—and we don't plan to stop posting any time soon.

As I said in that first post, my goal has always been for IP/DE to be a "less formal, just-what-you-need-to-know style of blog"—the kind of legal blog I'd want to read! Something that "covers only the most interesting parts of opinions, orders, transcripts, and news, in the shortest way I can."

We've continued to strive to hit that goal, although our posts are often longer than I'd like, and we sometimes tend to write about …

Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.

It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.

In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s …

I've got a real oddball fact pattern for you today. I'm not sure there's a takeaway for your everyday litigation life, but please remember to hug your experts -- you'll be glad you did.

AI-Generated, displayed with permission

The last time the plaintiff in Personal Audio LLC v. Google LLC, C.A. No. 17-1751-CFC (D. Del. May 22, 2023) spoke to their expert was in August 2021 when he submitted a declaration opposing a Daubert motion.

Sadly, he passed the following January.

Unfortunately, no one told the plaintiff.

Amazingly, two months after that the expert consulting firm plaintiff had been working with reached out to see if the expert was still needed. I can only imagine they were hoping …

Artist's depiction of an attorney on the phone with the Wall Street Journal, trying frantically not to say anything embarassing.
Artist's depiction of an attorney on the phone with the Wall Street Journal, trying frantically not to say anything embarassing. AI Generated

The Wall Street Journal posted a nice article today summarizing Chief Judge Connolly's efforts against Mavexar, with comments from myself and Maya Steinitz. Here's how they summarize the situation:

A federal judge in Delaware is on a campaign to eliminate hidden funding of intellectual-property lawsuits against companies, a crackdown that is roiling the patent-law industry.

They go on to give a solid overview of what has happened so far, and they mention the upcoming hearing that the Court set for June 8.

It's good to see this in the spotlight—it's an important issue that people care about!

Alpine Forget-me-not. Myosotis alpestris (1925)
Alpine Forget-me-not. Myosotis alpestris (1925) Mary Morris Vaux Walcott

Stipulations to extend time are a popular, both as a topic on this blog and in how routinely they are filed. Usually, stipulations to extend time are granted without incident, so we highlight the outliers as reminders that sometimes there’s more to it than mere agreement between the parties.

Don’t forget! If you’re stipulating to extend the:

  1. Deadline for discovery completion, or
  2. Postponement of trial

You must include the reasons for the request in your stipulation or motion. And the local rules require you to include either a supporting affidavit by the requesting counsel’s client or a certification that counsel has sent a copy of the request to the client.

This latter requirement reminds me of pre-college: in which students who received sub-optimal test scores needed to get a parental signature to prove to the teacher that the parent had seen the score and reviewed the offending test.

The parties in The Trustees of the University of Pennsylvania v. Genentech, Inc., C.A. 22-145-MN-JLH demonstrated how to correct deficiencies. Earlier this month, Judge Noreika issued an oral order denying their prior ...

Undo Button
Sergi Kabrera, Unsplash

On Wednesday, Judge Andrews issued an order in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., C.A. No. 20-430-RGA (D. Del. May 17, 2023) rejecting an attempt to evade judgment in an ANDA action based on the filing of an amended ANDA.

The defendant in the case had won on one method of treatment, and lost on the other. It filed an amended ANDA seeking to remove the infringing treatment from the label:

Defendant filed an ANDA seeking to make and market a drug for two different methods of treatment-the IBS-D indication and the HE indication. I had a bench trial. After trial, I ruled in Defendant's favor on the IBS-D indication (as …

Every now and again when I look over a docket, I am reminded of the case of Jarndyce and Jarndyce, as recounted in Bleak House:

Jarndyce and Jarndyce drones on. This scarecrow of a suit has, over the course of time, become so complicated, that no man alive knows what it means. The parties to it understand it least; but it has been observed that no two Chancery lawyers can talk about it for five minutes without coming to a total disagreement as to all the premises. Innumerable children have been born into the cause; innumerable young people have married into it; innumerable old people have died out of it. Scores of persons have deliriously found themselves made parties …

Visualization of pendent venue
Visualization of pendent venue Chris Linnett, Unsplash

Today Chief Judge Connolly addressed a motion to dismiss a combined trade dress, federal unfair competition, copyright infringement, and design patent infringement action.

The parties apparently agreed that the defendant in the action did not meet the TC Heartland venue test for the patent portion of the action:

Argento is a New York corporation with its principal place of business in New York. . . . It is undisputed that Argento does not own, rent, or maintain any offices, physical property, addresses, or bank accounts in Delaware and does not employ any Delaware-based employees, agents, or representatives. It is also undisputed that venue of Globefill's patent claim against Argento does not lie …

There's a couple themes we hit pretty often here on IP/DE. I assume by now that our regular readers (IPDEs? IPDorks?) know that it's hard to redact a transcript, that its easy to get a stay, and that Wilmington chickens have to sleep indoors.

You try and get him outside
You try and get him outside AI-Generated, displayed with permission

Basic legal stuff.

As is often the case, these general principles can only be stretched so far. Such was the lesson of Monterey Res., LLC v. Nanya Tech. Corp., C.A. No. 19-2090-NIQ (D. Del. May 10, 2023) (Order), in which a motion to stay went just a bit too far.

Evident from the C.A. No., this case was pretty old, and had already been stayed once pending IPR's on 4 of the 6 patents-in-suit. A few of the IPRs succeeded but the case continued on the remaining patents this last January with some discovery taking place and Markman briefs being exchanged.

Pretty standard so far.

The twist is that the Defendant then requested EPRs for 2 of the 4 remaining patents and moved to stay the case again. This proved to be a bridge too far:

Here, this matter is in the middle stage of discovery, though the parties have also filed claim construction briefs. This matter, however, has been pending since November 4, 2019, and has already been stayed for more than 19 months to allow the IPR proceedings to play out. These circumstances do not favor a second stay.

Monterey Res., LLC v. Nanya Tech. Corp., C.A. No. 19-2090-NIQ (D. Del. May 10, 2023) (Order)

As a little aside, this order gave me a bit of nostalgia for my early days in Delaware. I used to see a great many orders where 80% of the text was in footnotes explaining the reasoning, but it seems to have fallen out of fashion in DE over the last couple years. I find that I miss it a bit.

Please Stay on the Path
Mark Duffel, Unsplash

The headline is a nice quote from a Judge Burke oral order last week in Bausch & Lomb Incorporated v. SBH Holdings LLC, C.A. No. 20-1463-GBW-CJB, D.I. 77 (D. Del. May 12, 2023).

There, the defendant moved to stay but apparently failed to meet-and-confer at all before moving. The plaintiff wisely called them out for failing to do so:

As an initial matter, it is undisputed that SBH did not attach a certification pursuant to D. Del. LR 7.1.1 to its Motion or letter brief; nor could it have, because there was no meet and confer between counsel. The first B+L heard about SBH’s Motion was in SBH’s letter to the Court …