A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2020

You really have to use it soon
Brown Chocolate, Kaffee Meister, Unsplash

More often than not, when the Court has a hearing on discovery disputes, both sides bring competing issues. No one likes to be totally on defense for an entire hearing, and even bringing a marginal dispute allows you to undermine the opposing party by pointing out their own wrongdoing. And of course, there's always the chance that you'll win.

Judge Burke showed the limits of this calculus earlier this week -- it only works if you convince the Court you've got a real dispute. And It's very hard to do that if you admit that you wouldn't have filed your motion if the other side hadn't moved first.

That's what plaintiff did in …

Globe
Adolfo Félix, Unsplash

The short answer is: it depends on the judge.

These days, most Delaware patent plaintiffs are incorporated in Delaware but not located here. Different District of Delaware judges have gone different ways on the question of whether a plaintiff's location actually matters when considering whether to transfer a case out of Delaware.

Transfer motions are governed by the twelve "Jumara factors," and plaintiff's choice of forum gets "paramount" weight except—some judges have held—when the plaintiff is not actually located in Delaware.

Judge Connolly today answered this question with a resounding "no," holding that the location of plaintiff's principal place of business does not matter to whether it's choice of forum gets paramount weight: …

Last week, Judge Noreika denied defendant Shopify Inc.'s motion for attorneys' fees under 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party."), holding Shopify partly accountable for the amount of fees it incurred during the relatively short pendency of the case. While the opinion is worth reading in its entirety, there are two particularly notable aspects to the decision.

What Shopify won't be getting
Sharon McCutcheon, Unsplash

First, Judge Noreika found that Shopify was the "prevailing party," on the basis of the plaintiff's voluntary dismissal of its case with prejudice. While the Court had not issued any merits-based decisions prior to the dismissal, and did not itself effectuate the dismissal (it was self-executing under Rule …

Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:

  1. A U.S. Patent: Simple and easy.
  2. A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
  3. A journal publication: You may have to jump through some hoops, but no big deal.
  4. A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
  5. A book. Now you may be dealing with librarian declarations.
  6. . . . …

Calendar
Adam Tinworth, Unsplash

Here is a list of some of the upcoming jury/bench trials in the District of Delaware.

As you can see, aside from Thanksgiving, Christmas, and New Years', there is one jury trial per week starting 11/16 and continuing into next year.

  • November 3: Judge Noreika has a remote bench trial scheduled in W. R. Berkley Corporation v. Niemela, C.A. No. 17-32-MN (D. Del.), a non-compete case.
  • November 16: Chief Judge Stark has a criminal jury trial scheduled in U.S. v. Aaron Davis, C.A. No. 19-101-LPS (D. Del.), a fraud case. The Court issued an order last week finding that seven witnesses could testify remotely, and making some statements …

Litigant requesting
Litigant requesting "extra pages" Belinda Fewings, Unsplash

This week saw the birth of a novel way to raise a claim narrowing dispute, and it strikes me as rather clever.

Typically the number of claims asserted gets raised as a discovery dispute or as part of the scheduling or status conference.

The plaintiff in TQ Delta, LLC v. Pace Americas, LLC, C.A. No. 13-1835-RGA (D. Del.), though, took a different tack and instead moved for extra pages for summary judgment briefing, explaining that it needed the extra pages because the defendant was asserting 18 invalidity defenses (against plaintiff's 2 asserted claims).

This resulted in the following turn of events:

  • Judge Andrews immediately issued an Oral Order requesting defendant …

Pennies.
Pennies. Mark Bosky, Unsplash

I always find it interesting to see what kinds of facts that can succeed in a motion to strike. As I've mentioned, motions to strike in the Third Circuit are governed by the Pennypack factors, which can be tricky to meet and often favor lesser remedies (although the Court does strike things).

Here is what it took to warrant striking portions of an opening infringement report Arendi S.A.R.L. v. LG Electronics, C.A. No. 12-1595-LPS (D. Del.):

  • Disclosing infringement contentions against five new products for the first time;
  • Relying on previously undisclosed evidence;
  • Doing so in the 8th year of a case (albeit one currently without a trial date); …