A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: May 2022

Drop
Andrew E. Russell, CC BY 2.0

In my experience, parties in patent actions in the District of Delaware (and elsewhere) routinely drop claims in the lead up to trial. "Dropping claims" includes withdrawing asserted claims (e.g. "Claim 1"), whole asserted patents (e.g., "the '123 patent"), infringement contentions (e.g., "direct infringement" or "infringement by product A"), and other claims (including non-patent claims).

Most often, in practice, this is accomplished via an e-mail to the other side or, if the parties want something on the docket, by stipulation. I don't know of a case where the Court here insisted that a plaintiff not drop claims (of course, a defendant may also have counterclaims).

Are the Claims Withdrawn with Prejudice?

But parties rarely …

Ivan Bandura, Unsplash

A bit more than a year ago, Chief Judge Connolly issued his Standing Order for Summary Judgment Practice in Patent Cases Assigned to Judge Connolly (D. Del. Apr. 30, 2021), with the explicit purpose of "deter[ring] parties from filing meritless motions."

Rather than let this anniversary pass totally unmarked, I thought it might be fruitful to examine the effect this procedure has had on the number and, to the extent it can be measured, the quality of the summary judgment motions brought before Chief Judge Connolly. To that end I've gathered the following interesting tidbits—note that this data does not include motions brought in odd procedural postures (e.g., early motions where leave was requested or those specifically invited by the Court), or cases that have not yet been decided:

  • Prior to Standing Order
    • Average # of SJ motions filed - 4.4 (total from both parties)
    • The Most filed in any case - 11
    • Percentage of SJ motions granted - 17% (including those granted only in part)
    • Percentage of cases where at least one SJ Motion was granted - 50%

  • After Standing Order
    • Average # of SJ motions filed - 4.5 (total from both parties)
    • The Most filed in any case - 8
    • Percentage of SJ motions granted ...

Special Master Williams quoted Judge Andrews' recent holding that a new <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Doctrine of Equivalents'>DOE</a> argument
Special Master Williams quoted Judge Andrews' recent holding that a new DOE argument "creates a new balgame." Caitlin Conner, Unsplash

Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.

In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.

Special Master Williams rejected …

Copyright Symbol
Andrew E. Russell

We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.

Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.

On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …

Broken Egg
Jasmin Egger, Unsplash

Last month, we wrote about Chief Judge Connolly's new standing order for diversity cases, requiring plaintiffs to disclose the citizenship of LLCs on both sides so that the Court can determine whether it has diversity jurisdiction.

Today, Judge Connolly denied a motion to alter or amend a judgment in a diversity action where he had issued a similar order and dismissed the case based on the Plaintiff's own "on information and belief" representation.

In Harbor Associates Limited Partnership v. Micron Devices, LLC, C.A. No. 20-1706-CFC (D. Del.), the Court sua sponte issued an order asking for plaintiffs to identify their members and those of one of the defendants, to ensure that the Court had diversity jurisdiction:

To ensure that the Court has subject matter jurisdiction over this matter, Plaintiffs . . . shall within one week identify the name and citizenship of every member of [a plaintiff LLC], and [defendant] Micron Devices, LLC. If any of [the two LLCs'] members are noncorporate entities, Plaintiffs shall also identity the name and citizenship of every member of those entities, proceeding up the chain of ownership until Plaintiffs have identified the name and citizenship of every individual and corporation with a direct or indirect interest in [the LLCs].

D.I. 24. In response, the plaintiffs identified themselves as Florida entities, D.I. 25, and stated on information and believe that one member of one defendant LLC was also a Florida citizen:

Upon information and belief, Laura Perryman is a member of [defendant] Micron Devices, LLC. . . . Upon information and belief, Ms. Perryman is a citizen of Florida.

D.I. 26. In response, the Court dismissed the case, holding that it lacked jurisdiction:

Consistent with their complaint, Plaintiffs identified Florida as the citizenship of the members of the plaintiff entities. D.I. 25. They also identified Laura Perryman as a member of Defendant Micron Devices, LLC and they say that she too is a citizen of Florida. D.I. 26. This Court therefore lacks diversity jurisdiction over this action.

D.I. 26, 27.

Can We Just . . . Click Undo on That?

Apparently not realizing what was about to happen when they made those statements to the Court, plaintiffs quickly moved for relief ...

Sealed
Zoya Loonohod, Unsplash

Judge Wolson of the Eastern District of Pennsylvania has taken a number of patent cases as a visiting judge in the District of Delaware over the past few years, including at least one that has gone to trial recently.

One aspect of practice before Judge Wolson that may be unexpected for regular Delaware practitioners is how he handles sealing of documents.

Sealing Materials Is Typically Easy in the District of Delaware (Maybe Too Easy)

Normally, in Delaware, parties are used to just filing things under seal, and then filing a redacted version seven days later. No motion to seal is generally required and, depending on the judge, there is little risk that a redacted version will …

The Greatest of Funnels
John Matychuk, Unsplash

More and More, case narrowing has become a fact of life in Delaware. What was once an ad-hoc process recorded in a handful of unpublished orders has become more formal, and the various by-laws and codicils that govern it are congealing into something knowable, citable, and inevitable.

But we're not there yet, and even I can still be surprised by a novel ruling on the intricacies of the process. Such was the case in Tonal Systems, Inc. v. iFIT Inc., C.A. No. 20-1197-VAC-CJB, D.I. 100 (D. Del. May 16, 2022). Following an earlier dispute on the schedule for narrowing, The parties there were set to narrow of both claims and prior art, following the disclosure of initial infringement and invalidity contentions. So far, normal.

The wrinkle was that the narrowing schedule left more than 30 days between the service of Defendant's initial invalidity contentions and the deadline by which they had to narrow their prior art. They thus took the clever step of serving a rog requesting plaintiffs validity contentions -- a response to which would have been due before Defendant had to pick their prior art arguments. Plaintiffs objected, stating "[t]he Court ordered [Defendant] to narrow its Section 102/103 invalidity case to no more than 50 prior art references

Source Code
Markus Spiske, Unsplash

Delaware's Default Standard requires defendants to produce "core technical documents" on the accused products, even absent discovery requests from the plaintiff.

These core technical documents "includ[e] but [are] not limited to operation manuals, product literature, schematics, and specifications." Often parties interpret this as a relatively light production of just the core non-public material that a plaintiff needs to make out its infringement contentions.

Sometimes, however, plaintiffs will push back and demand production of source code, saying that a defendant must produce source code as part of its core technical documents.

This is a recurring issue, so I thought it was worth noting that, in Judge Fallon's discovery dispute order that we discussed earlier, she also …

Hawk
Mathew Schwartz, Unsplash

One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"

It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.

Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .

The Court normally permits parties to later add or remove asserted claims or accused products as ...

Open Gate
Stephen O'Donnell, Unsplash

Yesterday, the Court denied three Daubert motions in a short pretrial order in the lead up to a bench trial in a patent action, citing the Third Circuit's conclusion that Daubert motions in a bench trial may waste judicial time, and also noting that the issues are better addressed the judge in context at trial:

WHEREAS, “[w]hen the role of the gatekeeper to admit or exclude evidence (the judge) and the role of the factfinder to assess and weigh the evidence . . . (the jury) are one and the same, the judge who becomes the factfinder as well as the gatekeeper . . . should not be required to waste judicial time.” In re Unisys, 173 F.3d 145, 155–58 (3d Cir. 1999).
WHEREAS, having reviewed the motions to preclude, the Court has determined that it can better address the issues in context at trial when the Court can hear testimony and better understand the bases for the experts’ opinions;
. . .
THEREFORE, IT IS HEREBY ORDERED that
1) the motions to preclude (D.I. 222, 223, 224) are DENIED with leave to renew during trial to the extent appropriate. . . .

The Court also suggested that the parties could present their evidence at trial and then, potentially, ...