A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: February 2023

Writing a threatening letter is one of life's greatest pleasures. There's lots of things to like about being a lawyer—the fame, the adoration of your fellows, the innumerable health benefits—but my very favorite is the writing of a good threatening letter. To curse the house of my enemies, yea unto the seventh generation, that centipedes may breed in their walls and wasps nest in their eaves.

Oooh, that's a good one
Oooh, that's a good one AI-Generated, displayed with permission

Sometimes you have to make your own fun.

Normally a patentee has no trouble spitting just this sort of hellfire at alleged infringers, so it was interesting to see Judge Burke's order in InQuisient Inc. v. ServiceNow, Inc., C.A. No. 22-900-CHB (D. Del. Feb. 22, 2023) (Oral Order), where the plaintiff took a more reserved approach with unfortunate results.

Before filing suit, the plaintiff (according to the Complaint) sent letters to the defendant that didn't quite accuse them of infringement. Instead, the letters simply discussed the Plaintiff's IP and stated that the plaintiff lacked sufficient information to determine if defendant infringed. Plaintiff ultimately filed suit (Obvs) alleging indirect and willful infringement with the letters serving as notice of the infringement.

Judge Burke granted the defendant's motion to dismiss those claims, stating ...

That smoking crater is all that's left of the patent assertion entity's effort to hide its identity.
That smoking crater is all that's left of the patent assertion entity's effort to hide its identity. AI-Generated

We've talked before about how the free ride on sealed filings is starting to end. Late last week, we got another reminder of that from Chief Judge Connolly.

In WSOU Investments, LLC v. SalesForce, Inc., C.A. No. 23-27-CFC (D. Del. Feb. 23, 2023), one of the parties filed a "motion for leave to file under seal" some of its briefing, exhibits, and—notably—its Rule 7.1 statement.

The case is a small miscellaneous action seeking to compel discovery relating to a W.D. Tex. patent action.

In response to the motion for leave to file under seal, Chief Judge Connolly elected to review all sealed filings on the docket. He went so far as to follow up with the judge in the underlying W.D. Texas action:

WSOU's motion for leave to file under seal prompted me to review all the filings the parties have maintained under seal to date.
I started with the parties' briefs (D.I. 3; D.I. 16; D.I. 20); and, because the parties justified the sealing of those briefs in part because the briefs quote from a sealed discovery hearing conducted by Judge Gilliland in the Western District of Texas, I shared copies of the briefs with Judge Gilliland to get his views on the appropriateness of maintaining the briefs under seal. I determined, and Judge Gilliland agreed, that no good cause exists ...

Laura Ockel, Unsplash

The Doctrine of Equivalents can sometimes be an irritating aspect of patent law. Patent applicants tend to draft broad claims to begin with, and modern claim construction law likewise tends towards broad constructions. Once you add DOE on top, it can start to feel like the patent covers anything and everything.

But there is a boundary. Under the doctrine of "vitiation," courts have held that DOE can't be used to extend a claim to the oppose of what was claimed.

We got a good example of that this week from visiting judge Kennelly, who granted a motion for summary judgement of non-infringement after a seemingly fully-articulated DOE claim (DOE claims are often not-so-well articulated).

In …

Delaware regulars will know that a stipulation to extend a deadline will—with certain limited exceptions—usually be granted as a matter of course. Moreover, the common wisdom is that one ought to agree to a short extension of a discovery or briefing deadline, absent some strong reason not to. Such is the DELAWARE WAY (TM).

Sometimes, though, a request for an extension just rubs you the wrong way. Maybe they ask late, maybe they jerked you around when you asked for an extension last time, maybe you saw them double-dip a chip at the last bar mixer and you just can't get over it. In those times, it's nice to be able to point to case where the court denied a …

Mark Rohan, Unsplash

Yesterday, Judge Williams issued a claim construction opinion in Persawvere, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 21-400-GBW (D. Del. Feb. 21, 2023).

In the joint claim construction brief, plaintiff asserted that defendant had waived its indefiniteness arguments because it did not include them in its invalidity contentions:

Given that Defendant failed to raise an indefiniteness argument in its Invalidity Contentions concerning terms 3 and 4, see Ex. 8, Defendant has waived this defense.

D.I. 47 at 30. In the case, the scheduling order required both initial and final invalidity contentions; defendant did not mention indefiniteness in its initial contentions, and the deadline for final contentions had not yet passed.

The defendant …

Costs are kind of a funny subject. The Local Rules set forth a straightforward list of which items are taxable as costs to the prevailing party, and under what circumstances. For instance, under LR 54.1(b)(2), transcripts of court proceedings are taxable only:

when requested by the Court or prepared pursuant to stipulation. Mere acceptance by the Court does not constitute a request. Copies of transcripts for counsel’s own use are not taxable.

The rules for travel fees, copying, etc., are similarly strict, and so in my (totally unverified) experience, the vast majority of a proposed bill of costs will be denied pretty much every time.

AI-Generated, displayed with permission

A party may, of course, move for the Court to review the taxation of costs. D. Del. LR 54.1(d). The Court then has wide discretion to award costs beyond those specifically authorized by the local rule, and there are several DE decisions doing just that. Judge Williams issued one such ruling last Friday in Onyx Therapeutics, Inc. v. CIPLA Limited. C.A. No. 16-988-GBW (D. Del. Feb. 17, 2023).

The opinion is generally a good primer on just how far costs might be stretched beyond the apparent bounds of the local rule. For instance, discussing the local rule on the taxation of court transcripts above, Judge Williams stated:

While LR 54.1(b)(2)provides that "[c]opies of transcripts for counsel's own use are not taxable[,]" Judge Stark, who presided over this case, has found such costs taxable under § 1920(2). Judge Stark explained that "the undersigned Judge regularly resolves discovery disputes during teleconferences, articulating the Court's reasoning on the transcript and often without issuing any formal, written order. In order to effectively litigate a patent case ...

Ant Rozetsky, Unsplash

It's fairly common for a patentee to bring suit simultaneously against both a customer who is using or reselling an infringing product and the manufacturer who produced the product.

Sometimes the customer is the real target, and sometimes it's the manufacturer. Either way, some courts have recognized a "customer suit exception" that suggests that, under some circumstances, suits against a manufacturer should take precedence over a suit against a customer.

As courts sometimes point out, the customer suit "exception" began as an exception to the first filed rule in patent cases. But courts can also apply the principle more broadly, including to motions to stay.

For example, last week Judge Williams addressed a motion to stay …

I was always disappointed when I became a lawyer that my day-to-day work did not involve more loopholes. You watch any TV show -- Law & Order (original or extra crispy (that's SVU)), The Good Wife, Matlock, all you hear is loophole this and loophole that. But every day I come into the office and its just the regular old law. It just seemed less clever than a loophole.

I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet
I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet AI-Generated, displayed with permission

I was thus borderline ecstatic to see Judge Burke deciding a discovery dispute over what seems to be a genuine loophole in a protective order.

The prosecution bar in FedEx Corporate Services, Inc. v. Roambee Corp., C.A. No. 21-175-CFC-CJB (D. Del. Feb. 13, 2023) had three distinct parts.

The first was a basic prosecution bar:

[P]ersons . . . who have received access to Designated Material, shall not be engaged . . . in prosecution of patent applications on behalf of the Receiving Party . . . claiming tracking devices used in systems that monitor shipments, without prior approval to do so from the Producing Party.

The second allowed persons otherwise covered by the bar to advise on subjects other than the drafting crafting or amending of claims before the ...

Even the dullest 1L can tell you that rule 12(b) sets the timing for motions to dismiss:

A motion asserting any of [the 12(b)] defenses must be made before pleading if a responsive pleading is allowed.

However, pursuant to 12(h), the defenses listed in 12(b)(2)-12(b)(5) are not actually waived as long as you include them as an affirmative defense in your answer (12(b)(1) and (b)(6) have separate rules).

A party waives any defense listed in Rule 12(b)(2)–(5) by . . failing to either:(i) make it by motion under this rule; or include it in a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course

So then, if these defenses aren't waived, when can you …

Pictured: The poor associate, who writes the briefs, carts the boxes, and dutifully passes polite notes up as the partner mangles the argument
Pictured: The poor associate, who writes the briefs, carts the boxes, and dutifully passes polite notes up as the partner mangles the argument AI-Generated

One question I've seen from time to time is "what should we bring to the hearing?" Not "how should we prepare," but what physical stuff should litigators bring on the day of a hearing or oral argument?

I thought it would be useful to post a checklist—both for you, our readers, and so that I can send it around in response to future questions.

The checklist below should be considered ideas for what to bring. Practiced litigators undoubtedly already have their own systems, and every hearing is different. You should not bring everything below to every hearing. This list is instead meant as a last-minute, "I'm about to head out the door, is there anything else I should bring?" checklist to spark ideas.

Note that this is geared towards oral argument in patent cases in the District of Delaware, but much of it is applicable to other kinds of hearings ...