A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: June 2021

The Magistrate and the Clock

Nathan R. Hoeschen, June 16, 2021
Motion to Stay Litigation

insung-yoon-w2JtIQQXoRU-unsplash.jpg
Alarm Clock, Insung Yoon, Unsplash

Delaware judges routinely refer motions to one of our four regular magistrate judges. This is no surprise in a court with such a busy docket, especially when so many of our cases are complex patent matters.

One question I'm frequently asked when a matter is referred to a magistrate judge is "how will this affect the decision time?" It's a sensible question, and one might imagine that a referral from a busy Article III judge to a magistrate judge might result in a quicker resolution. The answer, however, appears to be that magistrate judges take about the same amount of time to resolve issues as the Article III judges.

Looking at a commonly referred …

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On the Importance of Claim Construction Meet and Confers

David M. Fry, June 16, 2021
Claim Construction

We've written in the past about the ongoing struggle to reduce disputed claim terms. Judge Connolly's form scheduling order requires parties to meet and confer to try to reduce disputes before the Markman hearing, and Judge Noreika frequently imposes a similar requirement after briefing is complete.

Some parties treat this process as a formality, believing that they can comply with a short, perfunctory phone call and a letter stating that the parties couldn't agree. This is a dangerous approach to claim construction meet-and-confers, and it doesn't comply with the letter (or the spirit) of the judges' orders.

Judge Connolly drove this point home in a recent oral order, issued the day before a Markman hearing:

Having reviewed the claim construction …
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Do You Need a COVID-19 Jury Instruction?

Jeff Castellano, June 15, 2021
Jury Trials COVID-19

As jury trials re-start in this District and elsewhere, litigants may wonder whether and how to help the jury understand the impact of the pandemic on the court and, more specifically, the proceedings they are about to witness. In at least one case in this District, competing jury instructions touching on those topics were proposed by the parties just prior to the start of a jury trial last month. In that case—In re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA—the parties took slightly different approaches, although they seemed to agree that the jury should be instructed not to read anything into the precautionary measures taken by the Court and the parties. ...

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June Update on Upcoming D. Del. Jury Trials

Andrew E. Russell, June 14, 2021
COVID-19 Trial Calendar

Why go to the beach when you can have a Delaware jury trial instead!
Why go to the beach when you can have a Delaware jury trial instead! Elizeu Dias, Unsplash

I was planning to lay off of these kinds of posts a bit since the Court has mostly resumed jury trials, but I've heard that people miss them already (and they also tend to be our most-viewed posts). So here is another update!

Since our last update, the District of Delaware has held two jury trials, including a (partial) patent jury trial:

  • 5/20/2021: In Re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA (D. Del.): This patent action ultimately settled after the first three days of the jury trial.
  • 6/7/2021: Clark v. Coupe, C.A. No. 17-66-RGA ( …
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Judge Noreika Permits Service on Foreign Defendant by E-mail; Holds That Hague Convention Does Not Prohibit E-mail Service

Andrew E. Russell, June 13, 2021
Hague FRCP 4

You've got . . . 2 new complaints!
You've got . . . 2 new complaints! Brett Jordan, Unsplash

We talked earlier this year about how Judge Hall permitted e-mail service of a complaint to a Taiwanese corporation under FRCP 4(f)(3), and we wondered whether this may be a reliable way to skirt cumbersome foreign service issues going forward.

As of Friday, the answer is still trending towards "yes." The previous case involved Taiwan, which is not a party to the Hague Convention. On Friday, Judge Noreika permitted service via e-mail on the U.S.-based counsel of a Korean entity—a party to the Hague convention—sidestepping the need to engage in cumbersome and time-consuming international service procedures:

Pursuant to Rule 4(f)(3), the Court may order that …
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The Intersection of Marking and Pleading

Nathan R. Hoeschen, June 10, 2021
FRCP 12 FRCP 12(c)

It's fairly common for plaintiffs in Delaware to plead infringement by alleging that the defendant infringes "at least claim x," of the relevant patent—leaving the question of what other claims might be asserted until later in the case.

In line with the Federal Circuit decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018), many of our Delaware judges have explicitly endorsed this practice. See, e.g. Promos Techs., Inc. v. Samsung Elecs. Co., Civil Action No. 18-307-RGA, 2018 U.S. Dist. LEXIS 186276, at *6 (D. Del. Oct. 31, 2018) ("Plaintiff does provide details of at least one claim allegedly infringed under each asserted patent. Therefore, Plaintiff's identification of infringed …

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Judge Connolly Rejects Effort to Assert Indirect Infringement Based on Post-Complaint Knowledge

David M. Fry, June 9, 2021
Willfulness R&R

Stop Sign
Luke van Zyl, Unsplash

Back in March, we noted Judge Connolly's adoption of a bright-line rule regarding reliance on post-complaint knowledge for indirect and willful infringement allegations:

[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that complaint or a prior version of the complaint filed in the same lawsuit. And I conclude that the operative complaint in a lawsuit fails to state a claim for willfulness-based enhanced damages under § 284 where the …
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Unsworn Declarations in the District of Delaware

Jeff Castellano, June 8, 2021
Declarations KB

Not this declaration
Not this declaration Engraving by William J. Stone

Declarations are commonplace in federal court litigation. They are submitted by attorneys, by experts, and by parties or their agents. Their purposes range from simply listing exhibits to establishing critical facts. But what language is required for an unsworn declaration? And are declarations always necessary in D. Del.?

Unsworn Declarations In General

The vast majority of declarations submitted in federal court litigation are actually "unsworn declarations" which, by statute, a litigant may submit in place of a sworn declaration or affidavit.

Don't Forget the Required Language

In particular, 28 U.S.C. § 1746 provides that ...

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Don't Wait Too Long to Move to Amend

Andrew E. Russell, June 7, 2021
FRCP 15 Motion to Amend

Snail
Wolfgang Hasselmann, Unsplash

The FRCP 15 standard for a motion to amend is very forgiving. It states that the Court should grant leave to amend "freely . . . when justice so requires." The Third Circuit likewise has a "policy favoring liberal amendment of pleadings." Dole v. Arco Chem. Co., 921 F.2d 484, 487 (3d Cir. 1990)

Regardless, a party can still lose a motion to amend if it waits long enough. That's what happened last week, when Judge Burke denied a motion to amend to add an unclean hands defense, a breach-of-contract claims, and a trade secret counterclaim.

The defendant waited to add its defenses until more than six months after the deadline to amend, and more …

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What Can Parties Stipulate to in the District of Delaware? And When Do Parties Have to File a Stipulation?

Andrew E. Russell, June 6, 2021
FRCP 15 FRCP 12

You may not realize the dangers with certain stips.
You may not realize the dangers with certain stips. Andrew E. Russell, CC BY 2.0

It was a bit of a slow week as far as opinions from the District of Delaware, so I wanted to write a short post about stipulations, covering a few questions that sometimes come up.

What Can You Do by Stipulation in D. Del.?

In the District of Delaware, most litigation-related matters or facts can potentially be stipulated to. This includes, most commonly, extensions of deadlines. Parties routinely file, and the Court routinely grants, stipulations extending time for things like answer deadlines, deadlines to file a scheduling order, and protective order deadlines. Parties likewise routinely stipulate to the amendment of pleadings, FRCP 41 dismissals, …

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