A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: May 2024

Trash Can Basket
Gary Chan, Unsplash

If you file a motion to dismiss and it's contingent on resolution of a claim construction issue in your favor, you're at risk of being denied. We saw that yesterday in a case before Judge Hall, where she denied a motion to dismiss in advance of the Markman hearing:

ORAL ORDER: Having been reassigned this case, having reviewed the briefing filed in connection with Medacta's pending Motion to Dismiss Count III (regarding infringement of the '678 patent) for Failure to State a Claim (D.I. 12 ), and it appearing that the outcome of the Motion depends on the Courts claim construction of a particular term, and in light of the fact that claim construction disputes are …

Its going to be a short post tonight because I'm writing a brief and a Minnesota team looks like it may fail to disappoint me in the playoffs for the first time ever.

Please do good wolves. Please.
Please do good wolves. Please. Chris Ensminger, Unsplash

Thankfully today we got an argument about venue that I had never seen before. I mean, It's been 8 years since TC Heartland -- its really pretty nuts that you can still see something new.

The case was Institute for Environmental Health, Inc. v. National Beef Packing Company, LLC, C.A. No. 23-826-JS (D. Del. May 16, 2024). Defendant was moving to transfer, and before addressing the usual Jumara factors, the court addressed the threshold question of whether venue was proper in Delaware.

Defendant—and this is the weird part—argued that it did not reside in Delaware because, it was a Delaware LLC, rather than a corporation. The Court disagreed:

Defendant argues that as an LLC it is unincorporated, and thus under TC Heartland, LLC, it does not “reside” in Delaware because it was not “incorporated” in Delaware. However, Defendant was organized as an LLC under Delaware law and therefore for purposes of venue resides in Delaware. Further, other federal district courts have held that an LLC resides in the state in which it was organized . . . Accordingly, venue is proper in the District of Delaware.

Id. at 7-8 (internal citations omitted).

As near as I can tell this is the first time a party has made this argument in Delaware. Judging by the decision, I don't expect to see too many more, but I do appreciate the easy post.

...

Go Wolves!

"That's Jim. He's been like that since he forgot to mention our fifth non-infringement argument in the JMOL after he was up until 4am doing exhibit objections. Turns out that's the one we needed to preserve." Sabina Music Rich, Unsplash

Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.

Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.

But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.

The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.

Trial teams handle this many different ways, but the most common seems to boil down to ...

Motions for summary judgment that a particular patent is "not invalid" (why can't we just say valid? I think the patents would like that better) are generally pretty winnable.

Why do they have to say it like that doc?  Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me!
Why do they have to say it like that doc? Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me! AI-Generated, displayed with permission

A brief survey of the last 10 such decisions found that fully half were granted. Most of those decisions, however, dealt with 112 or 101 issues. If you're moving on your more classic obviousness and anticipation issues, however, you've got a pretty rocky row to hoe. A look back at those opinions finds that only 30% of the last 10 were granted, at least one of which appeared to deal with a defense that was largely abandoned.

Today's opinion in Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 (D. Del. May 2, 2024), is a good example of a situation where such a motion is worth shooting for (and possible ordering higher in your list). The plaintiff, Qorvo (pronounced just like it looks), complained that the defendant's obviousness expert had failed to present any testimony on the motivation to combine. Defendant countered that their expert had done the appropriate analysis, but had simply failed to use various "buzz words" from Graham, KSR, and the like.

Judge McCalla agreed with ...

I know which one I'd prefer.
I know which one I'd prefer. AI-Generated, displayed with permission

Because cases tend to go away rapidly over time, either through settlement or on the merits, attorneys tend to be less experienced with motions that come up later in the case, particularly things that come up after the judgment (other than post-trial motions), or even after appeal.

One example is a motion to alter or amend a judgment under FRCP 59(e). You just don't see them that often. So I thought it was worth talking about a Rule 59(e) motion that the Court addressed last week.

In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103 (D. Del.), the plaintiff argued that the …

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Judge Noreika issued an interesting order yesterday denying a § 101 motion to dismiss. According to the docket, shortly after the defendant filed its motion to dismiss—and contrary to what we found when we last looked at this—the Court directed the parties to meet-and-confer on a proposed schedule.

While the motion to dismiss was pending, the Court held a scheduling conference and issued a scheduling order. In it, the parties agreed to a real case narrowing proposal (without court intervention!), with plaintiff to initially cut back to 20 asserted claims per patent and 50 total by initial contentions, and then further cut back to 25 total just before final contentions.

After the Court entered the schedule, …

Motions for attorneys' fees are generally a longshot in the district. It is, after all, especially hard to show that your case "stands out from the others."

Unless, of course you are obviously the cutest little baby ever, in which case you easily stand our from the others
Unless, of course you are obviously the cutest little baby ever, in which case you easily stand our from the others Nate Hoeschen, displayed with permission

Accordingly, I see a lot of these motions that reach well back into the case for evidence of vexatious conduct. One of the more common ones is dropping of asserted claims or defenses, which is generally put forward with the suggestion that those claims or defenses were necessarily meritless.

In denying a motion for fees yesterday, Judge Noreika gave her thoughts on the issue:

It is hardly uncommon that, during the course of litigation, parties make concessions or drop claims in order to focus their cases or preserve their resources. Indeed, Defendant also made concessions, dropping its invalidity counterclaims approximately two months before trial. The Court generally views such efforts as positive developments and will not penalize (either side) for streamlining the issues in an appropriate manner.

CMP Development LLC v. Amneal Pharms. LLC, C.A. No. 21-549-MN, D.I. 151 (D. Del. May 7, 2024).

For those curious, the relevant claims were dropped a few months before trial, around the time the pretrial order was filed—fairly late as these things go.

The opinion was otherwise pretty standard—noting that the issue (DOE infringement) was closer than the defendant made it sound and denying the request.

Do It Now
Brett Jordan, Unsplash

Last month we wrote about how delay is a motion killer. Procrastination is a problem most of us litigators share. But if you want your discovery motion granted, it's best to move now not later. Keep up the pressure.

We got another example of that yesterday in Tot Power Control, S.L. v. LG Electronics Inc., C.A. No. 21-1304-MN (D. Del. Apr. 23, 2024) (unsealed May 7, 2024). Tot is an opinion by Judge Fallon on several discovery motions, and two of them were denied due to delay.

First, the Court denied a request to compel plaintiff to produce communications related to valuations it received. Back in June 2023, the plaintiff had agreed …

Writing this blog, I sometimes feel like an especially jaded film critic. Having seen so much, I can no longer get a thrill from from a well-constructed plot and competent acting. I can only be excited by Croatian claymation about murderous cetaceans, or a silent black and white documentary about a cat who eats figs.

It lacks a certain je ne sais quoi in color . . .
It lacks a certain je ne sais quoi in color . . . Tijana Drndarski, Unsplash

All this is that I love a novel theory, and by Jove I've got one for you today.

In Samsung Elecs. Co., Ltd. v. Technical Consumer Prods., Inc., C.A. No. 23-186-JNR (D. Del. May 2, 2024), Samsung sued both the overseas manufacturer and seller of allegedly infringing products in one action. The seller moved to sever and stay the claims against it under the "customer suit" exception, arguing that the manufacturer was the "true defendant," while its role was "merely peripheral."

This was a bit odd, because the customer suit exception normally applies to cases where the actions are proceeding in different venues:

[C]ustomer-suit exception cases “typically arise” in the context of forum-shopping, “when related patent infringement actions are pending in different jurisdictions[.]” Basically, courts have concluded that the normal first-filed priority will give way when a suit against the re-seller was the first one filed. . . .Though courts have applied the exception when the manufacturer and re-seller are defendants in the same suit, they still do so with principles of forum selection in mind. For example, the customer-suit exception would apply if it would mean staying the case as to the re-seller to then transfer the case to a different and more appropriate venue for the lawsuit against the manufacturer.

Id. at 2-3 (internal citations omitted).

Judge Ranjan denied the motion, finding that the customer-suit exception did not provide a "general exception to a lawsuit against a manufacturer and re-seller":

The circumstances of this case don’t concern dueling lawsuits or forum selection issues, as there are no separate competing lawsuits, and no Defendant has contested venue or jurisdiction or would seek transfer to a different venue. Moreover, HGC and TCP are represented by the same counsel, so the inefficiencies created by forcing a “true defendant” and an unrelated “peripheral defendant,” such as one among many customers of the “true defendant,” to litigate together are absent here. In short, HGC hasn’t proffered a reason for the Court to grant its motion that furthers the spirit of the customer-suit exception.

Id. at 3.

Well it was a nice try anyway. The whole opinion is worth a read and goes into greater depth on the efficiencies that might be gained or lost by severance in similar situations.

"Our data is still data, much like this car is technically still a car." Robert Bagramov, Unsplash

On Friday, the Court issued an opinion rejecting a Daubert motion where the expert relied on third-party data to calculate damages, even though arguably better data was available from the parties.

I don't think there is anything particularly surprising about this ruling, but it's concisely put and a good reminder of a basic fact of expert reports: expert's don't have to use the best data, they only have to have "good grounds":

Defendants do not challenge the methodology that [plaintiff's expert] Ms. Bennis employs, but rather assert that the bases of that methodology are so far removed from the case as to …