A Blog About Intellectual Property Litigation and the District of Delaware

Knights on HDD
AI-Generated, displayed with permission

On Wednesday, Judge Fallon issued a memorandum order in Kurt Morales II v. Sunpath Ltd., C.A. No. 20-1376-JLH-SRF (D. Del.), a class action suit alleging that various defendants are telemarketers who made robocalls violating the Telephone Consumer Protection Act.

More than three years into the litigation, counsel for one of the defendants, Sunpath Ltd., withdrew, and the Court ordered Sunpath Ltd. to retain new counsel. D.I. 232. When it failed to do so, the clerk entered a default against it. Id.

Plaintiff argued that Sunpath defaulted specifically to avoid having to face discovery. D.I. 265 at 1. Plaintiff therefore served a subpoena on Sunpath's e-discovery vendor Everest Discovery, LLC who, unsurprisingly, pushed back. …

While we were on break, Judge Connolly issued an opinion in one of the lesser-covered, but most interesting, of the Mavexar suits.

Sandra Iglesias, Unsplash

Power Integrations, Inc. v. Waverly Licensing LLC, C.A. No. 22-1554-CFC (D. Del), is one of my favorite complaints ever. Waverly -- allegedly one of the Mavexar companies -- sued Power Integrations for infringement in Texas right before Judge Connolly held his first hearing in the Mavexar matters in November of 2022.

In a truly inspired move, Power integrations then filed a DJ complaint in Delaware (its state of incorporation) alleging that "Defendants have engaged in a broad and aggressive campaign to harass and threaten many companies, including Power Integrations, with assertions of patent infringement liability . . . ." Id. at D.I. 1. Notably, they managed to get this complaint on file by the end of November 2022.

The complaint is well worth a read, but the best bit is definitely when they point out that Waverly's official address is actually an empty shelf in a Staples:

In an assignment filed with the U.S. Patent and Trademark Office for the ’246 patent, defendant Array IP LLC identified itself as having the same address that defendant Waverly Licensing LLC lists in the Waverly-PI complaint as its principal place of business (3333 Preston Road, Suite 300, Frisco, Texas 75034). (Id.) However, that address is actually a Staples store . . . Moreover, the specific box number that defendant Waverly occasionally lists in its court filings as its “principal place of business” within that “suite” is an open shelf.

Id. at paragraphs 12-13.

There are pictures and everything, it's really great.

This complaint prompted all of the DJ defendants -- which included Waverly, Mavexar itself, and several others -- to ...

ChatGPT isn't working today, so you get a picture of a lock.
Anna Might, Unsplash

The District of Delaware generally permits parties to file things under seal without a motion to seal, and requires parties to file a redacted version within 7 days. Usually, the Court permits parties to handle redactions without judicial intervention (although not always).

As we've written about repeatedly, Judge Andrews regularly rejects redacted versions of filings that take the easy way out and simply redact entire exhibits rather than doing line-by-line redactions.

While we were out last month, the Court issued a similar order in a case before Judge Hall:

DEFICIENCY NOTICE by the Court issued re 238 Redacted Document. The redacted filing (D.I. 238) is REJECTED because parts of it are redacted in its …

Hello again my dear readers. I would like to apologize for my long absence, I have missed you almost as much as you have missed us. I would also like to apologize for Andrew's post yesterday, "we're back" which failed to make a joke about the disturbing 90's animated feature "We're Back! A Dinosaur's Story" in which a one-eyed carnival barker with mind control powers is eaten by crows. It shan't happen again.

Mark Tulin, Unsplash

With that out of the way, I wanted to call attention to a recent opinion from Judge Williams on a contract dispute between various NPE entities. We don't get to see these much as they're usually heavily redacted, but as my father used to say, "you can't redact what's in your heart." So too, it's tough to redact a court opinion on a contract you're suing over so we get a lot of detail here.

(Eds. note - my dad does not actually say that)

The agreement in CBV, Inc. v. ChanBond, LLC, C.A. No. 21-1456-GBW (D. Del. Mar. 13, 2024) (Mem. Op.) involved a bewildering array of related parties with silly names exchanging ludicrous sums. CBV had a portfolio of patents "related to the delivery of high-speed date over cable systems." Id. at 3. Apparently they weren't doing CBV much good just sitting around, because they sold them to IP Navigation group, which does just what it says on the tin. IP Navigation then created ChanBond for the purpose of buying and enforcing/licensing the patents and CBV transferred them in exchange for (drumroll . . . ) ...

Continuing our eclipse theme
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Most of the judges in the District of Delaware have settled on page limits for summary judgment and Daubert motions in patent cases of 250 total pages: 50 pages opening, 50 pages answering, and 25 pages reply—per side.

The "per side" part is important, and it can have a significant impact on cases with multiple unrelated defendants or defendant groups.

The Court has usually resisted expanding these limits, and in many cases, has instead experimented with ways of reducing the burden on the Court. Judge Noreika, for example, has sometimes required parties to seek leave before filing summary judgment motions.

Chief Judge Connolly has instituted a "ranking" procedure in his cases to help deter meritless …

An eclipse! It's a sign! Time to restart the blog.
An eclipse! It's a sign! Time to restart the blog. Andrew E. Russell, displayed with permission

About a month ago we put the blog on hold for our storm of impending trials. Some of those ultimately resolved or moved, and we still have a couple coming up in the next five weeks. But, for now, we're starting the blog up again.

We have a back log of interesting things to address—starting with a post today about Judge Hall's views on summary judgment ranking and page limits. Enjoy!

Illustration of e-mails heading towards Delaware counsels' inboxes as trial ramps up.
Illustration of e-mails heading towards Delaware counsels' inboxes as trial ramps up. AI-Generated, displayed with permission

We here at IP/DE are all practicing attorneys. We try to keep up with around one post per day, but sometimes we have to hang up the gone fishin' sign.

This is one of those times. We have a two-week-long patent trial starting next week, two simultaneous one-week trials shortly thereafter, and we're also spinning up on pretrial disclosures for yet another after that. It's funny how they seem to come all at once.

In short, it's time to call it for now. Assuming we survive—see you soon!

Goodbye, 93-page joint claim construction brief
Goodbye, 93-page joint claim construction brief AI-Generated, displayed with permission

Judge Andrews' form scheduling order for patent cases requires a joint claim chart. In that chart, in addition to listing the constructions, the Court requires the parties to explain why the parties are seeking construction of each term:

The Joint Claim Construction Chart should include an explanation of why resolution of the dispute makes a difference.

Judge Andrews added this requirement in early 2023. I haven't seen much activity on his dockets related to it—until last week.

In Belden Canada ULC v. CommScope, Inc., C.A. No. 22-782-RGA (D. Del.), the parties filed a joint claim construction chart. The chart included 21 terms and, each time, the parties …

HalGatewood.com, Unsplash

This week, Judge Bryson issued his findings of fact and conclusions of law following trial in Janssen Pharmaceuticals, Inc., v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Feb. 26, 2024), and ANDA action. The opinion is long and thorough, and I thought the section on enablement was worth noting.

The patent at issue covers a "dosing regimen" for giving an anti-psychotic drug "to a psychiatric patient in need of treatment for psychotic disorder." According to the method, two loading doses of the drug are given, and then a maintenance dose is given between 21 and 38 days later (a "17-day window").

Defendant argued that the patent was not enabled, first because a person of …

I'm going in to trial soon so today's post will be light on jokes. Just the facts.

They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date.
They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date. AI-Generated, displayed with permission

Anyway, today is a callback to what is probably the most informative post I ever wrote: who is deciding indefiniteness at Markman?

(Eds. note: not the most informative post on the blog, just the most informative one Nate wrote)

(Other eds. note: rude.)

(Same eds. note: OK, 1 joke.)

You're probably aware that we've got a new judge in town. Just yesterday she issued an order cancelling a Markman hearing where the only issues raised in …