A Blog About Intellectual Property Litigation and the District of Delaware


Not this kind of camera
Not this kind of camera Jakob Owens, Unsplash

Judge Hall issued a detailed privilege opinion last week, finding no privilege or work product protection for a number of documents after an in-camera review (while also finding that some others were privileged).

There are a number of useful holdings in the opinion. Some of the disputes arose in part because the custodian of the documents in question was unavailable, which means that the producing party lacks context for many of the documents.

For that reason, the producing party was unable to defend against production by offering a declaration that a document was prepared in anticipation of litigation, and the opinion resolves many of the disputes based purely on the text …

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …

Preliminary injunction motions are—in most cases—filed before substantial discovery has occurred. Nonetheless, a plaintiff seeking a preliminary injunction must support its motion (including both its assertion that it is likely to succeed on the merits an its assertion that it will be irreparably harmed absent an injunction) with evidence.

In Vertigo Media, Inc. v. Earbuds Inc., C.A. No. 21-120-MN, a patent case involving mobile phone apps that permit users "to send music that is simultaneously synchronized with the audience’s individual music streaming platform (Spotify, Apple Music, etc.) and played from audience members’ devices," Judge Noreika recently denied a preliminary injunction motion because plaintiffs had provided "scant" evidence of irreparable harm, and had likewise failed to substantiate their patent infringement arguments.

Mobile music
Samsung Galaxy S7 phone mounted to a car via CD slot., Michael Jin, Unsplash

The Judge first rejected plaintiffs' argument that they had shown irreparable harm as a result of price erosion:

Plaintiffs have offered no concrete evidence of price erosion, let alone evidence that damage caused by any such price erosion could not be quantified. Instead, Plaintiffs allege “complete price erosion” because Defendant markets its products for free. But Plaintiffs do not offer any evidence suggesting that they were planning to offer their product as a paid service or that the price has eroded at all.

Plaintiffs did present evidence that they had unsuccessfully contacted competitors with offers to license rights to their technology, but ...

The case is about microphones
Godwill Gira Mude, Unsplash

We've mentioned before that its difficult to win a Daubert motion, with the clear majority of cases finding that any issues with the expert's testimony go to the weight, rather than admissibility, and are best dealt with on cross-examination.

Judge Burke bucked that trend last week, granting a motion to exclude a damages expert's reasonable royalty calculation for failing to provide a sufficient factual foundation.

The Plaintiffs' expert in Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB, D.I. 575 (D. Del. Oct. 8, 2021), based his damages calculation on the cost to the defendant of designing around the the patent in suit. He based that cost, in turn, on what the plaintiffs had spent to design around one of the defendant's patents following an earlier (and unrelated) lawsuit. In equating the costs, he had apparently relied on conversations with the plaintiffs' technical expert who had opined that the required design around here would be "more extensive," and thus, "more costly and time consuming." Id. at 2 (quoting the expert report).

Interestingly, Judge Burke took no issue with ...

LA Sunset
Cameron Venti, Unsplash

This time last year, we wrote about a decision from Chief Judge Connolly denying a motion to transfer from D. Del. to the Central District of California. We didn't write about the "court congestion" factor because there wasn't much to say—the court simply noted that "[b]oth courts are among the busiest in the country" and concluded that the factor was neutral.

Late last week, however, Chief Judge Connolly granted a motion to transfer from D. Del. to C.D. Cal. Among other reasons, he concluded that "[g]iven the districts' relative caseloads, this factor favors transfer."

After noting that D. Del. has significantly more weighted filings per judge than C.D. Cal. (942 compared to 691), …

What I imagine claim construction arguments looked like
Immo Wegmann, Unsplash

Last week, Judge Noreika issued an interesting oral order regarding a claim construction dispute that was briefed—haphazardly, apparently—in the parties' summary judgment papers.

She criticized the briefing, ordered the parties to meet-and-confer and file ordinary claim construction briefing, and threatened sanctions if the parties don't try hard enough to reach agreement:

ORAL ORDER − In their summary judgment papers, the parties include arguments that either three or four additional claim terms must be construed by the Court. The parties' arguments are disjointed, do not focus on the intrinsic evidence and do not demonstrate any real understanding of what that other side's construction is. Thus, IT IS HEREBY ORDERED that, on or before 5:00 PM on …

Upcoming October Jury Trials

Of the six jury trials planned for October, four remain on the schedule as of now, including one patent and one trademark action. One patent jury trial was postponed for a second time this month due to the COVID-19 travel ban.

  • 10/12/2021: USA v. Crocker, C.A. 17-10-LPS (D. Del.): This criminal case was originally scheduled for a jury trial before Judge Stark on October 5, but was postponed at the last minute, likely due to a change in counsel. The trial is now set for October 12.
  • 10/18/2021: Parkell v. Frederick, C.A. 15-718-SB (D. Del.): The parties in this prisoner civil rights case agreed to jury trial before …

This case is staying right where it is
This case is staying right where it is A funny thing you can have the chance to experience at the Elk Island National Park, Yann Allegre, Unsplash

We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."

Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."

Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay ...

We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.

Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."

He ultimately concluded that:

  1. "[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
  2. "In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
  3. "I will, …

We have written about the ways in which a party can, despite its intention to object to a portion of a Magistrate Judge's Report and Recommendation, waive or otherwise fail to properly assert its objections.

However, an even more fundamental issue is whether a party is permitted to object in the first instance (or more specifically, whether a party is entitled to have a Judge rule on the merits of its objections). In a recent decision, Judge Andrews could not find "any reason to consider the merits of Plaintiffs' objections" to an R&R in which the plaintiffs prevailed.

Judge Andrews' decision evokes the general rule that a party cannot appeal from a judgment in its favor. Although Fed. R. Civ. P. 72(b)(2) and 28 U.S.C. § 636(b)(1)(C) - which set out the basic framework for objections to R&Rs on dispositive motions - do not themselves preclude objections by a prevailing party (both discuss objections to the proposed findings and recommendations by "any party"), Judge Andrews suggested that where a party prevails on the substance of the issues before the Magistrate Judge, that party's objections may be "moot."

The Magistrate Judge recommended...