A Blog About Intellectual Property Litigation and the District of Delaware


No, You Probably Should Not Include a Certificate of Service in that (Public) Filing in D. Del.

Andrew E. Russell, March 16, 2022
NOS FRCP 5

Waste Basket
Gary Chan, Unsplash

It's a bit of a slow news day for the subjects we typically cover, so I wanted to write about an exciting and under-covered topic: Certificates of Service in the District of Delaware!

A Certificate of Service (COS) is a document at the end of the filing that says who the document was served on. Back in the days of paper filing, it was important to show who received a copy of a document.

Now we have CM/ECF, the Court's electronic filing system, which automatically generates a Notice of Electronic Filing (NEF) when anything is filed. Federal Rule of Civil Procedure 5(d)(1)(B) specifically says that "[n]o certificate of service is required when a paper is served …

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Judge Burke Declines to Find Non-Infringement in Daubert Context; Gives Thoughts on Proliferation of Summary Judgment Motions

Andrew E. Russell, March 15, 2022
Summary Judgment Non-Infringement

These dandelions are popping up like SJ motions!
These dandelions are popping up like SJ motions! Jonne Huotari, Unsplash

Today, in Personal Audio v. Google, C.A. No. 17-1751-CFC-CJB (D. Del.), Judge Burke addressed an apparent request for the Court to find non-infringement based on a claim construction issue, which came up for the first time in the context of a Daubert motion to exclude expert testimony.

The Court expressed some initial sympathy for the non-infringement argument, suggesting it may have had some merit:

[T]he Court notes more generally that the issue underlying Defendant’s Motion is Defendant’s assertion that the claim construction for “sequencing file,” . . . requires that “you can’t use a copy of the sequencing file to control playback and respon[d] to …
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What Does It Take for "Unclean Hands" and "Prosecution Laches" Affirmative Defenses to Actually Survive a Motion to Strike?

Andrew E. Russell, March 14, 2022
Motion to Strike Affirmative Defenses

These hands actually look pretty clean.
These hands actually look pretty clean. Nathan Dumlao, Unsplash

Defendants in patent cases often seem to throw in somewhat obscure affirmative defenses with little or no factual support. "Unclean hands" is a classic example. Defendants will sometimes seem to include defenses like unclean hands and prosecution latches with no real factual support (and, I suspect, not always the best grasp on what those defenses really mean).

Judge Stark issued an opinion today on a motion to strike "unclean hands" and "prosecution laches" defenses offers an example of what happens when a defendant actually does adequately support these defenses.

First, the standard: to succeed on a motion to strike affirmative defenses, the insufficiency must be "clearly apparent":

"[P]ursuant to Rule …
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Judge Stark Reassignments Start

Andrew E. Russell, March 11, 2022
Congestion Vacant Judgship

Following the Court's announcement of a transition plan last week, the Court issued an implementing standing order on Wednesday, and today we saw a wave of reassignments from Judge Stark cases—all to Judge Andrews.

A number of cases were re-assigned, including:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, C.A. No. 15-1168 (D. Del.)
  • Future Link Systems, LLC v. Amlogic Holdings, Ltd., C.A. No. 21-634 (D. Del.)
  • Finjan LLC v. Trustwave Holdings, Inc., C.A. No. 20-371 (D. Del.)
  • Celanese International Corporation v. Anhui Jinhe Industrial Co., Ltd., C.A. No. 20-1775 (D. Del.)

In each case, Judge Andrews ordered the parties to produce a status report within …

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Just a Miscellaneous Issue

Nathan R. Hoeschen, March 10, 2022
Motions In Limine

Just some miscellaneous issues, nothing to see here
Just some miscellaneous issues, nothing to see here A nice pile of junk, Lance Grandahl, Unsplash

I pretty frequently see pretrial orders filed with a section labeled "miscellaneous issues" or "additional matters" or, someday, hopefully, "fiddle faddle."

It's a good place to put questions for the Court that might not fit anywhere else -- e.g., whether a witness may testify remotely, or if a large and unwieldy exhibit may be brought in for the jury.

Sometimes, you'll see issues that are a bit more contentious -- usually something procedural that doesn't quite rise to the level of a motion in limine. Naturally, this represents something of a procedural gray area, especially for those judges that place limits …

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Stay Motion Denial Results in Guidance for the Parties—and for the PTAB

Andrew E. Russell, March 9, 2022
Motion to Stay IPR

Stay!
Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPR is instituted.

An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:

ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly ...
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Court Orders Production of Foreign Sales Data

Andrew E. Russell, March 8, 2022
Discovery Dispute Discovery

Dollar Bills
Sharon McCutcheon, Unsplash

The question of whether a defendant has to produce foreign sales information seems to come up more frequently these days in patent cases, with plaintiffs coming up with new ways to reach—or at least attempt to reach—those sales in U.S. patent cases.

Yesterday, Magistrate Judge Hall resolved a dispute about whether a plaintiff is entitled to discovery on foreign sales. She held that even though their foreign-sales damages theory appeared shaky, the foreign sales discovery was warranted:

ORAL ORDER: Having reviewed the parties' letters in connection with the motion for teleconference to resolve discovery dispute, and having heard oral argument via teleconference on March 7, 2022, IT IS HEREBY ORDERED that the second and third …
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New Judge Noreika Procedure Pays Off: After Extra Pre-Trial Claim Constructions, Court Vacates Trial Date and Requests Proposed Form of Judgment

Andrew E. Russell, March 7, 2022
Summary Judgment FRCP 56

Speed
Arthur Poulin, Unsplash

In January, we noticed an interesting new procedure from Judge Norieka where, rather than address the pending motions on eleven grounds in detail, she ordered the parties to file a joint letter ranking their summary judgment motions and identifying any disputes over claim scope.

When the parties identified some "dispositive" claim construction disputes in the letter, the Court ordered briefing on those disputes.

Now, the Court has held its Markman hearing (less than a month after close of briefing), and issued an oral ruling on the new constructions at the hearing. It found for the defendants on all disputes.

The parties then filed a letter, where the plaintiff admitted that, if the Court sticks with …

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D. Del. Announces Plan for Judge Stark's Departure That Includes Cancelling Mediations in Cases Before All Judges

Andrew E. Russell, March 3, 2022
Visiting Judges Congestion

The gloves are off.
The gloves are off. Arisa Chattasa, Unsplash

The Court announced it's plan for Judge Stark's departure today, and it includes some bold moves.

All attorneys who practice in D. Del. should read the announcement in full—it's not that long—but here are some highlights.

Pending Mediations Will Be Canceled

Unlike previous transitions, most district court cases will be impacted, because magistrate judge referrals for mediation and all pending mediations will be canceled except in select instances:

Other than mediations in bankruptcy appeals or unless specifically directed otherwise by the Court, all referrals to Magistrate Judges for alternate dispute resolution will be vacated and all currently scheduled mediations will be canceled.

Thus, mediations in non-judge-Stark cases will be canceled. …

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What Are Technology Tutorials in Patent Cases, and Are They Worth It?

Andrew E. Russell, March 2, 2022
Technology Tutorial Summary Judgment

Looks like they went with the low-cost version
Looks like they went with the low-cost version Markus Winkler, Unsplash

In the District of Delaware, five of our eight judges use form scheduling orders that provide a deadline for the submission of a "Technology Tutorial" around the time of claim construction.

Former Judge Stark required the parties to submit a tech tutorial in patent cases with the opening claim construction brief. Judge Stark's form order, for example, provided that:

Tutorial Describing the Technology and Matters in Issue. Unless otherwise ordered by the Court, the parties shall provide the Court, no later than the date on which their opening claim construction briefs are due, a tutorial on the technology at issue. In that regard, the parties may separately …
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