Longstanding practice in the District of Delaware, pursuant to the Court's local rules and the Judges' form scheduling orders and other standing orders, mandated page limits for briefing.
For example, the Court's local rules set limits of 20 pages for opening, briefs 20 pages for answering briefs, and 10 pages for reply briefs, all in 12 point font. See LR 7.1.3(a)(4); LR 5.1.1(a). However, since about mid-2019, some Judges here have permitted or required word limits in lieu of page limits for some types of documents.
Entries for date: December 2020
The defendant in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No. 14-1102-RGA (D. Del.), argued that the PTAB's previous invalidation of several claims of the plaintiff's patents in an IPR meant that the plaintiffs were collaterally estopped from asserting the validity of the remaining claims—the claims that were not invalidated—at the district court.
Defendant argued that:
- The Federal Circuit has held that collateral estoppel applies to IPR proceedings generally;
- The Supreme Court has held that agency decisions may have preclusive effects during later court proceedings; and
- The Federal Circuit has extended collateral estoppel effects to unajudicated claims when there were no material differences between those and …
For decades, judges in D. Del. have enforced a general rule that you can’t serve 30(b)(6) topics on a party’s contentions. The rationale is simple: it just isn’t fair to burden a single witness with that much information. Contention interrogatories can achieve the same the same goal, without forcing a 30(b)(6) witness to sit for the most stressful memory test of their life.
In a discovery order on Friday, Judge Andrews highlighted an important corollary to this rule: you can’t get around it by framing your contention topic as a request for “all facts” about a party’s contentions. The judge found that all four of these examples were improper contention topics:
- Investigations, tests, studies, surveys, interviews, reviews, analyses and …
Consistent with the trend in this District, Judge Andrews recently rejected a defendant's unopposed request to seal the [virtual] courtroom and exhibits for a preliminary injunction hearing, despite the defendant's assertions that its presentation might include trade secrets and other highly confidential technical and financial information, and that it would be "prevented from effectively offering its arguments" if the proceedings were not sealed.
Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.
Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.
Last week, Judge Andrews …
The District of Delaware issued a copyright decision today that I found fascinating.
As the Court describes it, back in 2011 a website called Flavorwire posted an article describing (and displaying) nine images from Tom Hussey Photography, LLC, without permission from the photographer.
In 2018, the defendant in the case, BDG, bought the Flavorwire website, including that article. After BDG purchased the site, the photographer discovered the article and sued them for infringement in Delaware, where BDG is incorporated.
In response, BDG moved to dismiss, arguing that it had merely bought, operated, and maintained the website itself (the asset, not the company that created the website), and therefore that it never committed a "volitional …
Conservatively, 134,000,000% of 12(b)(6) motions request dismissal with prejudice. After all, no one wants to win a motion only to start a similar, but slightly harder round of briefing, when the plaintiff inevitably does file a modestly improved complaint. However, it tends to be a pretty big life to actually secure a dismissal with prejudice when the plaintiff has not already tried and fail to fix the complaint's problems.
It's occurred to me in the past that it would be nice to have a middle ground between a dismissal with and without prejudice. Something for claims that haven't already proven themselves beyond repair with serial amendments, but that are marginal enough that they are unlikely to be cured.
Judge Stark …
We've all been there: Your motion is fully briefed, you're waiting for a decision, and some new piece of information comes to light. You really want to get it in front of the judge before your motion is decided—what are your options?
In D. Del., not much. Local Rule 7.1.2(b) sets a default schedule for opening, responsive, and reply briefs, and provides that "[e]xcept for the citation of subsequent authorities, no additional papers shall be filed absent Court approval." The text is clear—if your filing isn't a notice of subsequent authority, you need the court's leave to file it.
In practice, however, notices of subsequent authority often lead to an extended back-and-forth between the parties—argumentative notices lead to responses, which lead to replies, which lead to sur-replies. Before you know it, the judge has a stack of mini-briefs to read.
In a recent R&R, Judge Burke issued a stern footnote admonishing the parties for this practice (and striking the offending filings) ...
In a short order, Judge Andrews recently laid out his reasoning for denying a motion for reconsideration of a prior summary judgment ruling, and in doing so provided helpful guidance for litigants briefing summary judgment and litigants considering filing a motion to reconsider.
In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.
The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:
[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
