A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: December 2022

Up Down Arrow
愚木混株 cdd20, Unsplash

We got a good "what not to do" example today, relayed in an opinion by Judge Williams.

In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).

As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:

In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).

Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on

This case, man, it's nothing but twists.

Happy New Year Crab Monsters!
Happy New Year Crab Monsters! AI-Generated, displayed with permission

As we noted last week, Following the Federal Circuit's denial of their mandamus petition, Nimitz failed to produce the documents ordered by the Court by the December 8th deadline. Judge Connolly responded by issuing an order for Nimitz to show cause why it should not be sanctioned for that failure.

Well, Nimitz Responded

On the deadline to respond to the show cause order, Nimitz filed a short (653 word) paper explaining why it had not produced the documents. The upshot is that it intends to seek rehearing of the denial of its mandamus petition:

Nimitz is filing a Combined Petition For Panel Rehearing …

Attorneys at Table
AI-Generated, displayed with permission

This is an interesting order from earlier this month that we never had a chance to post about.

In Ecobee, Inc. v. EcoFactor, Inc., C.A. No. 21-323-MN (D. Del.), the parties had a Markman hearing scheduled for December 8. As she often does, in the leadup to the hearing, Judge Noreika issued an order directing lead counsel for the parties to meet-and-confer to reduce the number of disputes:

ORAL ORDER . . . IT IS HEREBY ORDERED that, on or before 12/1/2022, local and lead counsel (i.e., those attorneys that will be leading trial) for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the …

As a lawyer, I am used to reaching into my stocking on Christmas eve to find yet another lump of sumptuous coal. Hard and black as my own cynical heart, it is but fuel for engine of my enemies' destruction.

Season's Greetings!
Season's Greetings! AI-Generated, displayed with permission

This year, however, I was presently surprised to return to the office after spending the entire holiday sick in bed to find a new opinion to discuss on the blog. Everyone wins today.

IBM Corp. v. Rakuten, Inc., C.A. No. 21-461 (D. Del. Dec. 22, 2022) presents an interesting issue of personal Jurisdiction I hadn't seen before. The plaintiff, IBM, sued Rakuten a Japanese corporation (and seller of cool Japanese goods) along with its U.S. subsidiary Ebates. After suit was filed, Rakuten transferred several patents in its portfolio to Ebates, who then asserted them against IBM as permissive counterclaims. All the while, Rakuten maintained that the Court lacked personal Jurisdiction (Ebates conceded jurisdiction).

Judge Williams, however, found the maneuver of shuffling the patents off to Ebates sufficient to confer ...

Kiwi Split in Half
engin akyurt, Unsplash

In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.

During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.

The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed …

DALL·E 2022-12-20 17.09.05 - digital art of state of delaware forlornly looking at shoes
AI-Generated, displayed with permission

One of the better known quirks of Delaware practice is the requirement of association with "Delaware Counsel." This requirement is more stringent than any other jurisdiction that I know of, requiring a Delaware lawyer to sign and file all papers in the action:

Association with Delaware counsel required. Unless otherwise ordered, an attorney not admitted to practice by the Supreme Court of the State of Delaware may not be admitted pro hac vice in this Court unless associated with an attorney who is a member of the Bar of this Court and who maintains an office in the District of Delaware for the regular transaction of business (“Delaware counsel”). Consistent with CM/ECF Procedures, Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. Unless otherwise ordered, Delaware counsel shall attend proceedings before the Court.

D. Del. LR 83.5(d)

Although the requirement itself is generally well known, the highlighted clause is fairly obscure, and ...

Google apparently indexed its allegedly confidential information on its own search engine.
Google apparently indexed its allegedly confidential information on its own search engine. Pawel Czerwinski, Unsplash

Whew, this is another one that falls in the "I'm glad I'm not involved in that" bucket (some previous entries here and here).

On Friday, Judge Andrews rejected a frivolous motion to seal, after he found some of the supposedly-sensitive information as a top result on Google:

This is about as frivolous a motion to seal as I have seen. Defendants submitted a declaration of Phil Harnish in support of their motion to transfer the case to the Northern District of California. The motion is based on the purported need to avoid disclosing “sensitive personal information about employees that, if revealed, would …

We'll just handle this part first...
We'll just handle this part first... Diliara Garifullina, Unsplash

I always think it's worth paying attention to how the judges handle the presentation of evidence at trial, changes that may seem small (like bifurcation) can have a big impact on how the trial actually goes. A bifurcated trial can obviously lead to a much shorter trial, if the defendant prevails on the first phase. But even if it doesn't, bifurcation really impacts the kinds of trial themes that the plaintiff can put up, for example making it harder to paint the defendant as a bad actor from the start.

Judge Williams recognized that effect earlier this month in his order granting bifurcation of a patent trial—and suggested that restricting plaintiff from presenting those themes favors bifurcation:

The Court finds that a reduction in prejudice to BSC weighs in favor of bifurcation. [Defendant] BSC argues that [plaintiff] UT is " likely to tell a story" that UT " got an important patent and told [BSC] about their technology; [BSC] was greedy, intentionally stole the invention," and profited therefrom; and UT "got nothing." D.I. 248 at 10. That story, BSC argues, has nothing "to do with the objective question of whether the [Accused Products] meet[] all the limitations" of the Asserted Claims of the '296 patent . . . or whether the patent is invalid." Id. UT does not challenge BSC's description of UT's likely trial narrative. . . . Rather, UT argues, the need to present a piecemeal case to the jury will prejudice UT. Id.
. . . UT's description of BSC's alleged willful infringement could encourage a jury to find that BSC infringed the '296 patent for reasons unrelated to a comparison of the Accused Products to the Asserted Claims. The Court also [previously] found that "UT's evidence of post-suit willfulness is limited." . . . That finding increases the risk that UT's willfulness evidence could bias the jury's infringement and invalidity decisions. . . . When the Court weighs the risk of prejudice to BSC against the ability to mitigate that prejudice (e.g., through a jury instruction), the Court finds that the potential to reduce prejudice to BSC weighs in favor of bifurcation.

That's interesting, because (obviously) parties very often try to ...

Before we get too deep into the weeds on round 237 of the Mavexar saga, I wanted to propose a mascot. Something we can use on the site so that you can instantly spot one of these posts (you can also use the tags, of course). Having given it all the thought I am prepared to, I propose Mavexar the crab-monster.

Here he is happily greeting you and welcoming you to sit by his fire.

Happy Holidays Crab Monsters!
Happy Holidays Crab Monsters! AI-Generated, displayed with permission

Andrew may have a competing vision, but for now, look for Crab Man!


A Missed Deadline

Following the Federal Circuit's denial of Nimitz's Mandamus petition last week, we saw our first action from Judge Connolly on these newly un-stayed cases. I had not recalled that, under his original order, the plaintiff was scheduled to produce the documents related to its relationship with Mavexar and IP Edge by December 8. As it happens, that was the same day the Federal Circuit lifted the stay.

Neither the Federal Circuit's preliminary stay order, nor its ultimate denial of the mandamus petition adjusted that deadline. Nor, apparently, did Nimitz request the District Court amend that deadline.

So the 8th came and went with no production of documents. Indeed, up through yesterday there is no mention of the submission on the docket, which ultimately led the Court to issue a brief order requiring Nimitz to "show cause as to why it should not be sanctioned for failure to comply with the November 10 Memorandum Order." Nimitz Technologies LLC v. CNET Media, Inc. C.A. No. 21-1247-CFC, D.I. 37 (D. Del. Dec. 14, 2022). The Court did note, however, it would ...

A Creek View
AI-Generated, displayed with permission

We've posted a lot about the Mavexar hearings. Earlier this month, two of the plaintiffs in cases that had hearings scheduled, Creekview IP LLC and Waverly Licensing LLC, filed nearly-identical petitions for mandamus.

The petitions are linked below. In each, the petitioner seeks to reverse Chief Judge Connolly's order scheduling an evidentiary hearing to investigate compliance with the Court's standing orders:

Petitioner respectfully requests that the Court issue a writ of mandamus reversing the Memorandum Order and ending the judicial inquisition of Petitioner.

The petitions argue that the Court lacked Article III standing, because the cases had been dismissed, that Chief Judge Connolly abuse his discretion in issuing the standing order, and that Congress has …