A patent licensee must hold "all substantial rights" in the licensed patents in order to maintain a patent infringement suit on its own. What constitutes "all substantial rights" is often the subject of dispute in cases brought by licensees without their licensors. Courts faced with these disputes will often examine the nature and scope of the rights transferred by the license, including the right to use the patent, the right to sublicense, and the right to sue.
Judge Andrews recently resolved a standing dispute in favor of the licensee, finding that the license in question...
Not all attorneys love remote depositions, even if they are much more convenient and practical in many cases (especially for foreign witnesses). The parties in Supernus Pharmaceuticals, Inc. v. Lupin Limited, C.A. No. 21-1293-MN (D. Del.), an ANDA case, brought two disputes before Judge Noreika about remote depositions:
Whether all parties should be required to make all witnesses available live, instead of via remote deposition; and
Whether all parties, including a defendant who brought counterclaims, should be required to bring their witnesses to the United States for deposition without the other parties having to engage in Hague Convention procedures.
Plaintiff sought to force live, in-person depositions of all witnesses in the …
Parties in Delaware can generally freely stipulate to many things that don't directly impact the Court, including common things like schedule adjustments, authenticity of documents, protective orders, and ESI procedures—as long as you stay away from trouble spots like increasing page limits or dates for dispositive motions or trial. But every once in a while a stipulation is denied, and it's always interesting when and why that happens.
Last month, the parties in ImmerVision, Inc. v. LG Electronics U.S.A., Inc., 18-1630-MN-CJB (D. Del.) filed a stipulation staying the action pending the outcome of objections to the magistrate judge's claim construction R&R. They noted that, if the R&R is adopted, plaintiff would stipulate to non-infringement and the …
It is with heavy heart that I announce that Judge Stark has finally been confirmed to the Federal Circuit. Appointed to our little Court in 2010, Judge Stark's time with us has been all too brief, and he will be dearly missed by all of us who practiced before him and/or shared his love of T. Swift (2/2)
With Judge O'Malley set to retire on March 11, Judge Stark is likely to be sworn in very shortly thereafter. If the past is any guide, we can soon expect Judge Stark's active cases to be transferred to visiting visiting judges or magistrates while the district awaits a new Article III judge.
We here at IP/DE will keep you updated on any Judge Stark happenings at the Federal Circuit, on the theory that he will always carry a piece of Delaware with him, like a traveling embassy for the first state.
It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.
In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...
During some research the other day, I came across the below order that Judge Noreika issued last summer.
A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?
No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:
Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …
Motions to disqualify experts under Daubert come up frequently in patent cases. After all, expert work can be difficult and prone to error, and scoring the disqualification of another parties' expert can be a huge blow (although sometimes it has less of an impact than the moving party may expect).
Judges in Delaware often hold oral argument on Daubert motions, typically at the same time as they hear case dispositive motions. But it's uncommon for the Court to hear testimony directly from an expert at a Daubert hearing.
That's exactly what Judge Andrews ordered last week in Sprint Communications Co. v. Cequel Communications, LLC, C.A. No. 18-1752-RGA (D. Del.), however. There, …
This week, Judge Stark granted defendants' motions for attorneys' fees in two separate cases. Although the cases are unrelated, there is nonetheless a fair amount of overlap in what the Court found persuasive in granting fees.
The defendants in both cases - Wi-Lan v. Sharp Electronics Corp., C.A. No. 15-379-LPS and Belcher Pharmaceuticals, LLC v. Hospira, Inc., C.A. No. 17-775-LPS - moved for fees under 35 U.S.C. § 285, arguing that the cases were exceptional.
So what helps convince a judge that a case is exceptional, and what are some other through-lines in these rulings?
When the Court orders a patentee to reduce the number of asserted claims -- what happens to the ones that are dropped? Are they truly gone, or might they still maintain some sort of cursed half life -- banished from the case yet hungering to be asserted anew?
As we've discussed in the past, patentees will often argue that due process requires they be allowed to assert each of their claims, regardless of the Court's case management concerns. Since, however, a patentee maintains only their best claims, the issue typically becomes moot before it prompts an opinion squarely addressing the due-process issue.
Fortunately (for bloggers) the issue came to a head in Vaxcel Int'l Co. Ltd. v. HeathCo LLC, C.A. No. 20-224-LPS, D.I. 122 (D. Del. Feb. 2, 2022). There, Judge Stark had ordered the plaintiff to reduce its asserted claims down to 21 (from 167 initially asserted). Id., D.I. 48. After this narrowing, Judge Stark held several of the remaining claims invalid for indefiniteness. The plaintiff thus sought to replace the invalidated claims with ones that it had previously jettisoned (that allegedly lacked the indefiniteness problem).
Noting that the narrowing order stated that it would be modified only for "good cause," Judge Stark found that it was lacking here, especially in light of the fast approaching close of fact discovery. ...
Yesterday, Special Master Gregory B. Williams issued an order in TQ Delta, LLC v. Dish Network Corp., C.A. No. 16-614-RGA (D. Del.) requiring the plaintiff to turn over unredacted copies of its expert reports, declarations, and testimony from prior cases. These materials contain the confidential information—possibly even source code—of prior defendants.
As set forth by the Special Master, this information is relevant to the plaintiff's current cases, because it involves related patents with similar issues:
[T]he Prior Litigation Materials are relevant to the claims and defenses in the present action. Specifically, [the expert] Dr. Madisetti's prior opinions concern other "phase scrambling" patents in the same patent family as the '158 and …
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