A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2021

Which Magistrate Judge Will You Get in a District of Delaware Case?

Andrew E. Russell, Jan. 11, 2021
KB Magistrate Judges

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In the District of Delaware, the district court judges often refer substantive issues to the magistrate judges, even absent consent of the parties. This is one way that the judges manage the incredible load of the patent docket here.

When dealing with substantive referrals (not referrals for mediation/ADR), the Court uses an assignment system, where particular district court judges tend to refer cases and motions only to their assigned magistrate judges (with occasional exceptions).

The most recent announcement of magistrate judge assignments that I know of was made at a Federal Bar Association lunch back in September 2019:

  • Magistrate Judges Thynge …
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Update on Upcoming D. Del. Jury Trials

Andrew E. Russell, Jan. 10, 2021
Jury Trials Trial Calendar

Calendar
Adam Tinworth, Unsplash

It has been a while since we posted an update on upcoming jury trials in the District of Delaware.

The most recent news from the Court is that Chief Judge Stark still believes that jury trials are feasible, using the Court's enhanced jury trial procedures, and the Court intends to proceed with trials as they come up.

[UPDATE: If you arrived here via a Google search, make sure to check out our latest posts on this issue here.]

The next jury trial is set for January 25, and then there are multiple trials scheduled for mid- to late-February:

  • January 25, 2021: Judge Noreika has a jury trial scheduled in a breach of contract action, …
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On the Perils of Not Agreeing to a Reasonable Case Management Request

Andrew E. Russell, Jan. 7, 2021
Expert Discovery Litigation

Caution Tape
Hiroshi Kimura, Unsplash

I came across this case today, and I thought it was a good example of why, in Delaware, it can be dangerous to be seen as acting unreasonably, particularly when it comes to things like discovery disputes and case management.

Plaintiffs filed a first case in 2018, asserting infringement of a single patent. Earlier this year, it filed a second case against the same defendant for a newly-issued patent relating to the same subject matter.

Plaintiffs sought to consolidate the two cases because they involved similar facts:

[The cases involve] identical parties, identical accused acts of infringement, the same accused process, and related patents with identical inventors, materially identical specifications, and overlapping claim terms.

Defendants opposed …

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Is There No Safe Harbor

Nathan R. Hoeschen, Jan. 7, 2021
Safe Harbor

Honestly, it's not a very safe harbor
Honestly, it's not a very safe harbor Youngje Park, Unsplash

Judge Burke faced an interesting hypothetical last week regarding the rarely invoked safe harbor provision of 35 U.S.C. § 271(e)(1). For those unfamiliar, the safe harbor provision provides that:

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

The Sole Use Question

The issue in Wilson Wolf Manufacturing Corp. v. Sarepta Therapeutics, Inc., C.A. No. 19-2316-RGA-CJB, …

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Judge Connolly Orders a Markman Do-Over

David M. Fry, Jan. 6, 2021
10 Terms Claim Construction

In a case that's been pending for years, Judge Connolly just ordered the parties to redo their three-year-old Markman briefs.

Although the parties briefed and argued claim construction at the end of 2017, Judge Sleet granted an IPR stay before a Markman opinion was issued. While the stay was in place, Judge Sleet retired and the case was reassigned to Judge Connolly.

The parties were set to argue claim construction again this week, with 18 disputed terms from the plaintiffs' patents and 26 disputed terms from the defendant's patents. But on Monday, Judge Connolly issued an oral order cancelling the Markman hearing and ordering the parties to substantially narrow their disputes (to 10 limitations for each side's patents).

He also …

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Standing with an Exclusive License

Emily DiBenedetto, Jan. 5, 2021

Patent Lawsuit
Libby Levy, CC BY-SA 2.0

Having an exclusive patent license should mean that the licensee has the right to enforce that patent against potential infringers, right? Yes, but the license has to be exclusive.

In a recent opinion, Judge Connolly held that if another entity—even an affiliate company—has the ability to grant a patent license to the defendant, then the plaintiff did not possess standing to bring a patent infringement action against that defendant without also joining the other entity.

Exclusive Licenses: Implied vs. Explicit

There are multiple varieties of "exclusive" licenses. A party may have an implied exclusive license, for example, if a contract gives the licensee the sole right to perform and prohibits the licensor from …

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Court Rejects § 101 Motion Due to Lack of Detail in Specification: Is This the Way of the Future?

Andrew E. Russell, Jan. 4, 2021
MTD § 101

GPS Navigation
Alvaro Reyes, Unsplash

Judge Noreika issued an opinion today denying a § 101 motion on a patent that covers delivering GPS navigation information to a vehicle in a "short burst."

As to Alice step 1, the Court found that the claims were "do it on a computer" claims directed to the abstract idea of sending and receiving navigation data:

[A]t step 1, claim 1 seems focused on using computers to perform a human activity more efficiently.

At step 2, however, the Court found that the patent's bare-bones specification saved it from § 101—it's hard to find that any particular solution was conventional at the § 101 motion-to-dismiss stage when the specification simply does not discuss the prior …

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