A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: January 2022

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Generally, corporations have to be represented to appear in Federal Court, or they are at risk of default. This is something that comes up surprisingly often, including when corporate defendants try to file their own filings without an attorney (by mailing them to the clerks' office), or when counsel for a corporate defendant seeks to withdraw mid-case.

Judge Fallon issued an opinion today showing the consequences of a corporation failing to retain counsel. Plaintiff brought suit and, requested entry of default after a corporate defendant failed to answer. That corporate defendant then filed an "answer"—which, based on the docket, was not an answer at all, in that it did not respond to plaintiff's claims. Plaintiff then moved …

COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Today, visiting Judge Wolson issued an opinion and order declining to exclude jurors without up-to-date COVID-19 vaccines. The government had requested to exclude those jurors to prevent trial disruptions due to COVID-19.

The opinion was issued in a criminal case, but the language would seem to apply to civil cases as well; the denial was based largely on the difficulty of assembling jury pool in Delaware who are current on their vaccines:

A vaccination requirement along the lines the Government proposes could hamper the Court’s ability to assemble a jury. Current statistics suggest that only 34% of Delaware residents over the age of 18 have received booster shots. 1 That includes 65% of those who are over the age of 65, many of whom are not part of the jury pool because of their age. The result of excluding from the jury pool a large number of people with a high vaccination rate will be to lower the rate of people over the age of 18 in the remaining pool. There could be additional members of the jury pool who are eligible because they received their vaccinations recently. But in any event, the numbers suggest that a vaccine requirement along the lines the Government proposes would exclude nearly 2/3 of potential jurors from the jury pool.

The Court also noted that jury service is an important right ...

Triple Damages
Marcel Eberle, Unsplash

We've written a lot on the developing case law in Delaware around willfulness and motions to dismiss. Willfulness requires knowledge of the infringement, and some of our judges have dismissed willfulness claims because the filing of a complaint for patent infringement cannot serve as the basis of knowledge of infringement.

Today, Judge Andrews followed that case law, and dismissed a willfulness claim in an amended complaint, stating that the original complaint cannot serve as a basis for establishing knowledge:

iFIT also alleges that Peloton knew of the '407 patent as of the filing of its original complaint. . . . I think this is irrelevant. My view is that an amended complaint cannot rely upon the …

Remember Me!
Sear Greyson, Unsplash

If you only occasionally practice in the district, you might be unaware of an old standing order on the procedure for objecting to R&R's. The unimaginatively titled "October 9, 2013 Standing Order for Objections Filed Under Fed. R. Civ. P. 72" contains requirements for filing objections that do not appear in either the local rules or FRCP 72.

Most of these requirements are simple logistical matters -- the length and timing of briefs, requiring courtesy copies, etc. A recent ruling from Judge Connolly, however, shows the imprtance of following these requirements precisely.

The defendant in In Personal Audio LLC v. Google LLC, C.A. No. 17-1751-CFC-CJB, D.I. 715 (D. Del. Jan 21, 2022) had lost a …

Isaac Quesada, Unsplash

February Jury Trials

After completing all planned December jury trials uninterrupted by COVID-19, the January docket became lighter after the Court continued several trial dates to later this year due to COVID-19 concerns. One of these continued trials, a patent case, was rescheduled to February; the Court also has three other jury trials on the calendar for next month.

In December, the Court reauthorized the use of video and telephone conferencing pursuant to the CARES Act. Relatedly, Governor Carney reinstituted a mask mandate, requiring individuals in Delaware to wear masks while in public spaces, with select exceptions.

Review of December Jury Trials

In our November update, we identified five upcoming December jury trials. Three proceeded as …

In a brief order issued last week, Judge Andrews denied a plaintiff's request that the defendant be ordered to re-produce tens of thousands of redacted documents from its production in unredacted form. According to the order, the defendant had produced 24000+ documents with redactions. The parties had agreed, via the protective order, that confidential information irrelevant to the case at hand or information not otherwise discoverable could be redacted.

Jeff Castellano

Nonetheless, plaintiff argued that the defendant's "voluntary production of the fully-redacted documents inherently admits that they contain responsive material … Something underneath these full-document redactions must be responsive, or [defendant] would not have produced the documents."

In reliance on a sworn declaration from defendant's attorney and his own review of a sampling of the redacted documents, Judge Andrews concluded that there was no basis on which to find the redactions were inappropriate:

After reviewing the unredacted version of Plaintiffs’ Exhibit A, I have concluded that [defendant's] justifications for its redactions to Exhibit A – that the first document pertained to a different product and that the second document and the redacted portions of the third document are covered by the work product doctrine and attorney-client privilege – are sound. [Plaintiff] has given me no reason to doubt that a review of the remaining redacted documents would produce similar results and no reason to question the trustworthiness of Mr. Barry’s sworn declaration.

Notably, defendant's counsel Mr. Barry stated in his declaration that he had "personally reviewed" all of the redacted documents and had identified 39 that were erroneously redacted. It appears that the declaration went some way to reassuring Judge Andrews that the redactions were not overdone. ...

Bay Materials, LLC v. 3M Company, C.A. No. 21-1610-RGA (D. Del.) is a competitor patent infringement case where a smaller company is trying to prevent a larger competitor—3M—from allegedly copying its "flagship product," a "multilayer polymer sheet material" called "Zendura™ FLX."

The plaintiff moved for a preliminary injunction immediately upon filing the case, and the parties filed a stipulation agreeing to a discovery and briefing schedule. The parties disputed whether the defendant should be able to take an FRCP 30(b)(6) deposition of the plaintiff as part of the preliminary injunction discovery.

Defendant sought the 15-topic FRCP 30(b)(6) deposition to prevent plaintiffs' witnesses from "claim[ing] a lack of knowledge about relevant topics." Plaintiff argued that the notice was …

Visualization of the average D. Del. judge's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Summary Judgment'>SJ</a> motion pile (circa 2021, pre-Judge Stark departure)
Visualization of the average D. Del. judge's SJ motion pile (circa 2021, pre-Judge Stark departure) Christa Dodoo, Unsplash

Last month Judge Noreika issued an order praising Chief Judge Connolly's ranking-based summary judgment procedure, and imposing a similar procedure—at least for one case.

Under his SJ procedures, Chief Judge Connolly addresses each party's motions in their ranked order, and if a single motion is denied, he may decline to consider all remaining motions.

Judge Noreika issued her order after the parties in the case, Dali Wireless, Inc. v. Commscope Techs. LLC, C.A. No. 19-952-MN (D. Del.), sought …

Goodbye Judge!
Goodbye Judge! Japanese cat figurines, Alain Pham, Unsplash

Following Judge Stark's nomination to the Federal Circuit and subsequent smooth appearance before the Judiciary Committee, we've all begun to wonder when he would begin unloading his pending cases.

Well wonder no more!

On Tuesday, Judge Stark issued the following oral order in 360Heros, Inc. v. GoPro, Inc., C.A. No. 17-1302-LPS, D.I. 260 (D. Del. Jan. 18, 2022):

Having reviewed the parties' letter relating to the jury trial currently scheduled to begin on March 7 . . . IT IS HEREBY ORDERED that the trial is CONTINUED to a date to be determined. The parties are advised that in advance of trial, likely sometime in February, …

As discussed in a previous post, Judge Noreika now requires that Markman briefing occur after the exchange of final infringement and invalidity contentions. But the Judge's oral orders setting forth that requirement did not expressly anchor the Markman process or the contention deadlines to any other dates in the overall schedule.

As we pointed out in our last post, it would make sense to set those deadlines late in the fact discovery period: "Although this order encourages parties to exchange claim construction positions 'early in the case,' it seems likely that parties will propose later Markman deadlines in addition to earlier final contention deadlines, to ensure that sufficient fact discovery has occurred to create meaningful final contentions."

Judge Noreika recently offered additional guidance along these lines regarding the relative timing of contentions, fact discovery, and claim construction...