A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: October 2022

"I'm a motion to strike, not a stealth motion for summary judgment" Braydon Anderson, Unsplash

One of the more common District of Delaware questions you get as local counsel is "can we move to strike opposing counsel's (infringement or invalidity) contentions?"

That may seem like a simple question, but the answer depends many things, like: What is wrong with those contentions? How were our contentions in comparison? Which judge is this in front of? How long ago did they serve them? (And, sometimes, things like: Why are you asking this now, when we are two weeks from trial?)

Challenging contention disclosures can be tough even if you have what seem like fairly good arguments. The Court is generally not …

Artist's depiction of the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995)'>Jumara</a> factors in action
Artist's depiction of the Jumara factors in action Nick Fewings, Unsplash

Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).

This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.

I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to …

Douglas Lopez, Unsplash

How, in the 8,000 year history of law, have we not come up with a better name than the "at issue" doctrine? I hesitate to call it the shame of our profession, but it's firmly in the running.

I pose some alternatives below. To make it clear, any highlighted words refer to the doctrine formerly known as "at issue." Feel free to use going forward -- creative commons or whatever.

This Will Go On For Longer Than You Think

Judge Burke had an interesting case regarding the sneaky peak doctrine. In Sensormatic Electronics, LLC v. Genetec (USA) Inc., the issue arose in the context of an inequitable conduct allegation, where defendants sought evidence about what exactly …

Caution Tape
Hiroshi Kimura, Unsplash

If you're briefing on an ethical issue in the District of Delaware, consider the local rules before relying exclusively on the Delaware Lawyers’ Rules of Professional Conduct (DLRPC):

(d) Standards for Professional Conduct. Subject to such modifications as may be required or permitted by federal statute, court rule, or decision, all attorneys admitted or authorized to practice before this Court, including attorneys admitted on motion or otherwise, shall be governed by the Model Rules of Professional Conduct of the American Bar Association (“Model Rules”), as amended from time to time.

D. Del. Local Rule 83.6(d). According to the Judge Jordan, back in 2004:

[T]he ABA’s Model Rules of Professional Conduct, not the Delaware Rules of …

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …

Slowly .... slowly .... no sudden moves
Slowly .... slowly .... no sudden moves AI Generated, displayed with permission

We've all said things we'd like to take back. Maybe it was something hurtful, said in a moment of anger to a loved one. Maybe it was a joke that landed like a brick in a toilet. Maybe it was "no band will ever reach the artistic heights of Green Day in their prime."

Maybe it was just a moderately incorrect pleading.

Last week Judge Andrews reminded us all that, at least in the latter case, you can't just ask to take it back. Surprisingly, it also teaches us that this can be a good thing.

The plaintiff in Allergan USA, Inc. et al v. Aurobindo Pharma Ltd …

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …

Sometimes, it can be hard to take a hint.
Sometimes, it can be hard to take a hint. Edwin Hooper, Unsplash

Last month, we wrote about out-of-town co-counsel who the Court suggested may have mis-handled confidential information. The out-of-town counsel failed to appear for a hearing about the incident back in May.

Afterwards, opposing counsel requested sanctions including revocation of his pro hac admission, the out-of-town counsel withdrew his pro hac appearance. Since his withdrawal in May, the case has been re-assigned to Judge Williams, and Court had been quiet on this issue—suggesting perhaps he had successfully skirted any sanctions by mooting the relief.

Shortly after the withdrawal, the party got new Delaware counsel, and the previous Delaware counsel (who had to defend the failure to appear) withdrew. …

Please Stop, It's Already Dead

I think this one works because it's supposed to be creepy
AI-Generated, displayed with permission, displayed with permission

Happy Friday!

In the past the Court has subtly signaled that it notices when the parties try to sneak in extra argument where it does not rightly belong. Yesterday, however, Judge Burke gave a bit of the carrot to the defendants in Hewlett Packard Enterprise Co. v. Intellectual Ventures I LLC et al., C.A. No. 22-730-GBW-CJB, for taking the high road in their submission.

The case is a DJ action where the defendants moved to dismiss alleging that any dispute between the parties lacked the necessary immediacy for subject matter jurisdiction. As is often the case, the argument boiled down to the defendant's contention that they weren't about …

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …