As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.
These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:
WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
To keep the patent assertion entity from coming back from dead, kill it with counterclaimsAI-Generated, displayed with permission
One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
While counterclaims are generally low-cost, they are not free and still involve some work.
They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties …
Motions for reargument are notoriously hard. Winning one is the legal equivalent of the going to the dentist and hearing that you really ought to take it easy and stop brushing so much.
Nevertheless, you see them filed all the time. I imagine the thinking is that, even if the odds are low, you've already lost the motion so things can't get any worse.
But they can!
Things can always get worse!
You could tell he was just trying to hold it in in the last photoAI-Generated, displayed with permission
This was the lesson in Carrum Techs., LLC v. Ford Motor Co., C.A. No. 18-1647 (D. Del. Apr. 11, 2023). A couple of weeks ago, the defendant filed a motion to seal one of its briefs. The motion was short and unaccompanied by a declaration, so Judge Andrews denied it in a one-sentence Oral Order.
Now it's unclear why exactly the Defendant filed a motion to seal in this instance, as the parties had previously filed many documents under seal without a motion in accordance with CM/ECF procedures. The defendant thus moved for reargument on the motion to seal, largely arguing that it hadn't needed to file the motion in the first place:
Over the course of this litigation, various other pleadings have been filed under seal by agreement of the parties. Ford did not intend to request different treatment of its Memorandum and Exhibits than prior sealed filings in this litigation. Rather, Ford proceeded in a manner ...
The Court issued an order today clearing all of our calendars for the District of Delaware's Bench and Bar, which is set for September 21-22, 2023.
The order says that it moves all filing and service deadlines to the following Monday:
WHEREAS, the Court having announced that it will host its biennial District of Delaware Bench and Bar Conference on September 21 and 22, 2023, and the
Court wishing to promote the participation of as many members of the Bar as possible;
IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and Bankruptcy Judges - will, to the greatest extent possible, cancel and refrain from scheduling court proceedings and filing deadlines on …
We've talked about how it's generally understood that parties can agree to modify certain deadlines in the District of Delaware without a stipulation, such as discovery response deadlines, deposition dates before the close of fact discovery, or deadlines under the Default Standard.
We were careful to exclude depositions occurring after the close of fact discovery from that list. After all, the fact discovery deadline is set by court order. Thus, parties often stipulate to take fact depositions after the close of fact discovery.
An opinion from Judge Williams yesterday held that these stips are unnecessary, and the parties can take depositions after the close of fact discovery without any stip to that effect:
ORAL ORDER: The Court has reviewed the Stipulation to take deposition outside fact discovery ...
A couple weeks ago the Federal Circuit issued a short opinion in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023) that I suspect may have an outsized affect on 101 practice in Delaware.
Oh, what a delicious pun, IPDE you are the very soul of witAI-Generated, displayed with permission
The complaint in Hantz, alleged that the defendant infringed "one or more" claims of the asserted patents and attached claim charts for 8 particular claims. Defendant filed a 12(b)(6) motion on 101 grounds which the court granted, finding all of the claims of the asserted patents unpatentable. Plaintiff appealed the ruling to the extent it invalidated claims other than those specifically charted in the complaint.
The Federal Circuit vacated judgment on the other claims, stating:
[W]e agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents.
There were two litigation-funding related hearings set forth tomorrow in Chief Judge Connolly cases. Both were canceled today.
The first was in the Nimitz cases, C.A. Nos. 21-1362, 21-1855, and 22-413. As we discussed last week, the Court set this hearing after Nimitz failed to produce the broad formation- and funding-related discovery that the Court required from it.
Later last week, the plaintiff in that case produced the required documents. Today, the Court canceled the hearing so that it would have time to review the recent production:
ORAL ORDER: Whereas (1) on Thursday, April 6, 2023 at 4:23 p.m., Mr. Pazuniak submitted to the Court documents …
Litigation funding has become a popular topic this year, deserving of its own synopsis. For those who missed out on the recent blow-by-blow events as they happened, relive the saga below.
This is a bit lengthy. You've been warned. Pour yourself a cup of tea first and get comfortable.
Emily DiBenedetto
The Exposition: Discovery on Litigation Funding is a Mixed Bag
To set the stage, let's discuss litigation funding disputes in the District of Delaware before the most recent developments. Over the past few years, discovery disputes regarding litigation funding issues have produced mixed results. The Court sometimes grants motions to compel litigation funding materials, and other times denies them, and may (rarely) conduct an in camera review to evaluate …
I was trolling though recent opinions in search of a blog post topic (you're welcome) when I stumbled upon a recent Markman order discussing disclaimer. Now normally Markman orders aren't the most fecund ground for a post. But seeing the pro forma language about how prosecution history disclaimer required a "clear and unmistakable" disavowal I had to ask myself—"do they ever find that?"
AI-Generated, displayed with permission
The answer, is "not really, no." Frequent readers will know that I normally do the last 10 opinions, because I have forgotten all the math I used to know and its easy to calculate the percentages. Here though, I looked through the last 10 and was still at 0. So I pressed on until we hit a winner at the 15th oldest decision. For those with calculators, that's a 6.7% success rate.
What really surprised me about this number was that I only had to go back 2 months to find 15 cases where a defendant had alleged disclaimer, given the abysmal success rate. I'll update this post the next time we get a winner to see if we can piece together a unified theory of what makes these arguments work.
Look closely—down at the bottom, where the huge bolt of lightning meets the hill, are defendant's R&R objectionsBrandon Morgan, Unsplash
R&R objections can be a minefield for attorneys. First, the governing rules are fairly stringent, and are set forth in multiple places (including Local Rule 72.1 and a separate standing order). Second, I think it's fair to say that most judges are not eager to have to review another judge's work and potentially reverse it if they don't have to, so the rules for objections tend to be enforced.
Here are some examples of things that parties sometimes miss. The objecting party must:
"[S]pecify the portions of the findings and recommendations to which objection is made and the basis for each objection, . . . supported by legal authority."
Include a certification stating that "the objections do not raise new legal/factual arguments" or identifying good cause for new legal/factual arguments.
Set forth its objections in a single, 10-page opening brief with no reply brief, and the page limit is generally strictly enforced.
File courtesy copies of "of all filings (e.g., motions, briefs, appendices) associated with the matter to which the R&R"—this can be easy to miss, and can result in waiver.
Identify the exact standard of review.
That last one, identifying the standard of review, is easier said than done. The standard of review for R&R objections can be tricky, because ...
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