A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: March 2022

Closed for Trial

Andrew E. Russell, March 26, 2022
Trial Litigation

This guy knows how to go to trial
This guy knows how to go to trial Henry Hustava

Just a blog service announcement: We'll be going on a bit of a blogging hiatus for the next week or two. Our firm handled a trial last week before Judge Andrews as local counsel, and we're set for three simultaneous trials this week before Judges Connolly, Andrews, and Noreika. Then we have yet another trial the week after, before visiting Judge Wolson.

If you're adding them up, that's five trials in three weeks as local counsel! So we're up to our necks in prep work, with about a dozen visiting co-counsel and staff using our offices as trial space, and we're going to have to slow down a bit on …

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Found in Translation

Nathan R. Hoeschen, March 24, 2022
Discovery Dispute

Translation Loading
RCA

Judge Fallon ruled on what is, as near as I can tell, a totally novel discovery dispute earlier this week.

The defendants in Chervon (HK) Limited v. One World Tech., Inc., C.A. No. 19-1293-VAC(!), were scheduled to depose several of plaintiffs witnesses and plaintiff learned -- its unclear how from the papers -- that defendant intended to use some previously untranslated Chinese documents as exhibits as exhibits. Plaintiffs' thus moved to compel the defendants to produce certified translations of these documents in advance of the depositions.

Judge Fallon denied the motion, noting that "the hardship in selecting all deposition exhibits well in advance of the deposition" needed to be "balanced . . . against the importance of maximizing …

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Here's What Has Changed in Judge Burke's New Form Scheduling Order

Andrew E. Russell, March 23, 2022
Concise Statement of Facts Case Narrowing

New
Nick Fewings, Unsplash

Yesterday, Magistrate Judge Burke released a new form scheduling order. There are redlines embedded below.

Here is a quick rundown of some of the changes in the patent scheduling order:

  • Added from Judge Andrews' scheduling order:
    • A requirement for plaintiffs to provide licenses and settlement agreements as part of their disclosures
    • A prompt in the scheduling order for the parties to consider a staged reduction of asserted claims and prior art, before and after claim construction (this comes up a lot)
  • Added from Judges Connolly, Noreika, and/or Hall's scheduling orders:
    • A requirement to include chart at the end listing the deadlines all together (convenient!)
    • A Concise Statement of Facts requirement for summary judgment
    • He …
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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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Always Leave the Court Enough Time Between SJ/Daubert Briefing and the Pretrial Conference

Andrew E. Russell, March 21, 2022
Stipulation KB

Caution Tape
Hiroshi Kimura, Unsplash

A reader helpfully flagged a stipulation denial by Judge Noreika last week (thank you!). The parties had a pretrial conference scheduled for July 18, 2022, and stipulated to move a number of deadlines, including for Daubert briefing. They moved the Daubert motion reply deadline from May 20, 2022 (52 days before the PTC) to June 10, 2022 (38 days before the PTC).

Judge Noreika denied the stipulation without comment. They smartly refiled, but without the Daubert deadline adjustment. This time it went through just fine, albeit with a comment stating that the Daubert deadlines were not moving:

SO ORDERED re 192 STIPULATION TO EXTEND TIME . . . IT IS FURTHER ORDERED that the Daubert motion/briefing schedule set by D.I. 134 shall NOT be extended ...
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Judge Stark Sworn In at Federal Circuit, Still Has Some Cases in Delaware

Andrew E. Russell, March 19, 2022
Congestion DED

Judge Stark's Swearing In Ceremony
U.S. Court of Appeals for the Federal Circuit

According to the Federal Circuit's website on Thursday, Judge Stark has been officially sworn in to the United States Court of Appeals for the Federal Circuit. According to their post, he was sworn in on the Lincoln Bible, held by his wife Beth Stark. Congratulations again to Judge Stark!

As we discussed on Thursday, the Court is still in the process of re-assigning Judge Stark's cases, with the majority so far going to other D. Del. Article III judges. Judge Stark still has a number of cases, including for example C.A. No. 19-01938-LPS, where he issued an order on Monday asking for briefing following a status report from the …

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Where Have All The Ca-a-a-ses Gone?

Nathan R. Hoeschen, March 17, 2022

Buffalo
Andrew E. Russell, CC BY 2.0

If you're invested enough in Delaware litigation to be reading this blog, you will be aware that Judge Stark is slated to leave us soon, and the district has set forth some guidance on what will happen to his cases when he departs. The Court has been reassigning Judge Stark's cases in batches since the beginning of February, and I have arbitrarily decided (because its Friday) that today we have enough data to do a quick rundown of where the cases are going.

As of today, the Court has transferred a mere 26 of Judge Stark's patent cases (counting related cases as a single case),whichhave been distributed as follows:

  • 7 - Judge Noreika …
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No, You Probably Should Not Include a Certificate of Service in that (Public) Filing in D. Del.

Andrew E. Russell, March 16, 2022
NOS FRCP 5

Waste Basket
Gary Chan, Unsplash

It's a bit of a slow news day for the subjects we typically cover, so I wanted to write about an exciting and under-covered topic: Certificates of Service in the District of Delaware!

A Certificate of Service (COS) is a document at the end of the filing that says who the document was served on. Back in the days of paper filing, it was important to show who received a copy of a document.

Now we have CM/ECF, the Court's electronic filing system, which automatically generates a Notice of Electronic Filing (NEF) when anything is filed. Federal Rule of Civil Procedure 5(d)(1)(B) specifically says that "[n]o certificate of service is required when a paper is served …

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Judge Burke Declines to Find Non-Infringement in Daubert Context; Gives Thoughts on Proliferation of Summary Judgment Motions

Andrew E. Russell, March 15, 2022
Summary Judgment Non-Infringement

These dandelions are popping up like SJ motions!
These dandelions are popping up like SJ motions! Jonne Huotari, Unsplash

Today, in Personal Audio v. Google, C.A. No. 17-1751-CFC-CJB (D. Del.), Judge Burke addressed an apparent request for the Court to find non-infringement based on a claim construction issue, which came up for the first time in the context of a Daubert motion to exclude expert testimony.

The Court expressed some initial sympathy for the non-infringement argument, suggesting it may have had some merit:

[T]he Court notes more generally that the issue underlying Defendant’s Motion is Defendant’s assertion that the claim construction for “sequencing file,” . . . requires that “you can’t use a copy of the sequencing file to control playback and respon[d] to …
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What Does It Take for "Unclean Hands" and "Prosecution Laches" Affirmative Defenses to Actually Survive a Motion to Strike?

Andrew E. Russell, March 14, 2022
Motion to Strike Affirmative Defenses

These hands actually look pretty clean.
These hands actually look pretty clean. Nathan Dumlao, Unsplash

Defendants in patent cases often seem to throw in somewhat obscure affirmative defenses with little or no factual support. "Unclean hands" is a classic example. Defendants will sometimes seem to include defenses like unclean hands and prosecution latches with no real factual support (and, I suspect, not always the best grasp on what those defenses really mean).

Judge Stark issued an opinion today on a motion to strike "unclean hands" and "prosecution laches" defenses offers an example of what happens when a defendant actually does adequately support these defenses.

First, the standard: to succeed on a motion to strike affirmative defenses, the insufficiency must be "clearly apparent":

"[P]ursuant to Rule …
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