A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: July 2023

These guys forgot to involve their Delaware counsel in the meet-and-confer.
These guys forgot to involve their Delaware counsel in the meet-and-confer. Zdeněk Macháček, Unsplash

Well, we tried to stick it out, but my co-blogger Emily and I have a Lanham Act trial next week, and my other co-blogger Nate is traveling. As I stare down at an ever-growing pile of trial tasks, it's time to hang up the gone fishin' sign.

We may have a few sporadic posts over the next week and a half (I may try to sneak over to the Mavexar hearing tomorrow), but we likely won't resume regular posts the week after next.

Judge Connolly issued a post-trial opinion in a false advertising case this week that contained another interesting bit of damages arcana under the Lanham Act.

AI-Generated, displayed with permission

The trial in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662 (D. Del. July 17, 2023), seemed to go great for the plaintiff with the jury finding 9/10 of the defendant's advertisements were false and awarding $21.2 Million in compensatory damages and $23.7 Million in punitive damages. As we say in Delaware, "that's a lotta crabs"*

It all went tails up in post-trial briefing however, when the defendant moved for JMOL of no damages. The court began by summarizing the elements of a Lanham Act claim in the Third Circuit

1) that the defendant has made false or misleading statements as to his own product [or another's]; 2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; 3) that the deception is material in that it is likely to influence 3 purchasing decisions; 4) that the advertised goods traveled in interstate commerce; and 5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will, etc.

CareDX, at 3-4 (emphasis added) (quoting Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241,248 (3d Cir. 2011))

The highlighted factor is the interesting one. You see, actual deception is ...

Stop - Do Not Cross
Kai Pilger, Unsplash

Federal Circuit Judge Bryson sits by designation in a number of D. Del. cases, but I've noticed lately that his opinions rarely hit the District Court's website, for whatever reason.

I found one such opinion today, and I thought it was worth posting about. It issued back in April 2023, but we missed it at the time since it didn't hit the website.

The opinion involves a lengthy and interesting discussion on a preliminary injunction motion in a patent case. Judge Bryson found that the patentee met almost all of the notoriously difficult factors for a preliminary injunction:

Wahoo’s motion presents a close question. Three of the preliminary injunction factors—irreparable harm, the balance of …

"We need to call the Court!" AI Generated, displayed with permission

The Court has been somewhat quiet this week as far as new decisions, so I figured I'd take this opportunity to lay out a few quick thoughts on recurring issues that come up in depositions in the District of Delaware.

This is some (but not all) of what you might hear when asking Delaware counsel "depositions are coming up next month, is there anything I should know?" (Experienced Delaware counsel might also talk about a few more topics, such as how to avoid accidentally making your witness prep materials discoverable—but those are for another post).

Here's the list:

  • When sending a notice of deposition, be sure to leave at …

I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model.
I imagine a poor Sirius XM Radio satellite, drifting listlessly through space with nothing to do after 3G and smart phones ate its business model. SpaceX, Unsplash

In answering patent infringement complaints, defendants often do their best to throw in any potentially supportable equitable estoppel / implied license defense they can think of. But in patent actions, these defenses can be hard to prove and are rarely successful. They typically drop off at some point later in the case.

This week we got a great example of what a successful equitable estoppel defense looks like, in an opinion from Judge Bataillon granting summary judgment on that basis.

Basically, it involved lots of incredibly strong facts.

The defendant is Sirius …

Come At Me Bro Crab
chanphoto, Unsplash

As I mentioned on Monday, my co-bloggers Nate, Emily, and I are swamped at the moment, with a trial this week and another coming up in a week and a half—so this will be a less fulsome post than I'd like.

But I wanted to pass along the "Notice of Objection to and Non-Participation in Judicial Inquisition" attached below, in which the Mavexar-related entity Backertop Licensing LLC and its owner refuse to appear for the Court's scheduled July 20, 2023 hearing (and to produce any further documents), in direct contravention of an order of the Court:

Former Plaintiff Backertop Licensing LLC (“Backertop” or “Plaintiff”) hereby gives …

愚木混株 cdd20, Unsplash

It's easy to think that, once an opposing party takes a position on the record as to a legal issue, it can never change that position. Not so.

Today Judge Andrews addressed an argument that defendants who lost at trial were nonetheless bound by their "judicial admissions," thus preventing them from taking a (purportedly) contradictory position after trial. Not surprisingly, the defendants disagreed:

Plaintiff argues that Defendants made representations before and at trial that directly contradict positions that Defendants must take in order to prove an interference-in-fact. . . . Plaintiff notes that Defendants' representations were "judicial admissions." . . . . Therefore, Plaintiff argues, Defendants cannot establish an interference-in-fact between the '537 patent and the '207 patent, and I must dismiss the counterclaim against the '537 patent as moot for lack of subject matter jurisdiction.
Defendants respond that Plaintiff does not invoke estoppel—or any other legal theory—that would support dismissing their claims. . . . Defendants add that, in any case, they are not estopped from abandoning their trial positions, nor from invoking theories that Plaintiff presented at trial, because Plaintiff prevailed over them at trial.

The Court found the the defendants were ...

Dino Reichmuth, Unsplash

We wrote last month about the "mansplaining brief," which caught some eyes around town when it (and the declaration attached to it) accused the Court of "gender harassment and discrimination."

We set out the full background in our post, but generally the Court ordered the sole member of a Mavexar-related LLC to attend a hearing here in Delaware.

She then filed a motion for reconsideration offering numerous objections, including among other things that (1) the Court had no power under FRCP 45 to compel her attendance, since she lives in Texas; and (2) that she is a working mother and therefore unable to travel to Delaware.

(She also said that she "feels harassed" by …

All across the district, defendants silenty wonder:
All across the district, defendants silenty wonder: "Oh crap, is this gonna be a thing now?" NASA, Unsplash

Here's one you don't see every day. Back in March, Judge Burke granted a § 101 motion to dismiss as to the claims of two of the six asserted patents in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB (D. Del. Mar. 31, 2023).

In that opinion, the patentee did not dispute that the claims were directed to the abstract idea of synchronizing a file across a network:

Plaintiff, for its part, does[ not] dispute that synchronizing multiple versions of a file across network computers is an abstract idea, and the Court agrees that it is. Again, …

You don't get to pick your jobs in the P.I. biz. A good gumshoe takes what walks in the door, and the only questions he asks are "how much?" and "permanently?" The only answer he'll take is a raised eyebrow and and that money gesture when you rub your thumb against two fingers.

Hamburglar was of the old school. 40 years ago he had a reputation that could make a clown go back into his little car with all his friends and drive off without so much as a honk. When the doc said his arteries were starting to look looked like string cheese, he put that all behind him - hung up his shingle and started trying to solve …