A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: June 2024

"Did . . . did he just end our case with deposition testimony? Ah, I'm sure it will be fine." AI-Generated, displayed with permission

The Court unsealed a memorandum order yesterday in Sensormatic Electronics, LLC v. Genetec (USA) Inc., C.A. No. 20-760-GBW (D. Del. Mar. 27, 2024), where Judge Williams found a patent case exceptional, and awarded fees against the patentee plaintiff.

The Court previously held that one of the asserted patents, the '652 patent, was invalid because it was offered for sale after it was reduced to practice and more than a year before when the inventor applied for a patent.

In this order, the core cause of the exceptional case finding was that, after a …

Lawyers and an expert in an oasis
AI-Generated, displayed with permission

Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.

What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …

Still thinking about my plums! It's the season baby!
Still thinking about my plums! It's the season baby! Svitlana, Unsplash

Its easy to forget about prejudgment interest. You only need to address after the trial is over when you're putting together the final judgment, but the seeds of victory or defeat are oft planted in the fertile loam of pretrial submissions and expert reports.

Case in point, Judge Williams' decision this week in Board of Regents, the Univ. of Texas Sys. v. Boston Sci. Corp., C.A. No. 18-392-GBW (D. Del. June 5, 2024) (Mem. Op.). At trial, the plaintiff prevailed on all counts and the Jury awarded a verdict of $42,000,000.

Here's the form:

Court

You'll notice the verdict says nothing about whether the royalty …

Dollar Bills
Sharon McCutcheon, Unsplash

In DivX, LLC v. Realtek Semiconductor Corp., C.A. No. 20-1202-JLH (D. Del.), the parties disputed whether the case should be dismissed with or without prejudice after the plaintiff moved to dismiss its own case.

The defendant responded, opposing dismissal without prejudice and arguing that a with-prejudice dismissal was warranted under a four-factor test used in previous cases (which focuses mainly on effort and expense of the present and potential future litigation, progress of the present litigation, and diligence in moving to dismiss). Id., D.I. 74 at 9.

The defendant argued that plaintiff had filed an ITC action against it, resulting in millions of dollars in fees. Id. at 12.

The Court didn't …

Rarely does a motion go unopposed. The more common response to all but the most quotidian of requests is an offer to duel.

I've been waiting to use this picture, which I think is meant to be taken seriously
I've been waiting to use this picture, which I think is meant to be taken seriously Chris De Lima, Unsplash

Thus, I usually count even the most grudging and proviso-laden non-opposition as a win. Which, sometimes, works out.

This brings us to the case of TOT Power Control, S.L. v. LG Elecs. Inc., C.A. No. 21-1304-MN-SRF (D. Del. May 16, 2024). The plaintiff there had listed several formal technical employees as having discoverable information on their initial disclosures. As discovery progressed, however, five of these persons who resided overseas in Spain and Denmark stated …

Welcom to sunny Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>, home of the nation's most-covered criminal trial (of this week)
Welcom to sunny Wilmington, DE, home of the nation's most-covered criminal trial (of this week) Andrew Russell, CC BY 2.0

On Friday, after we wrote our post about it, the Court granted the Press Coalition's motion to intervene and adjusted the voir dire procedures for today's jury selection in the Hunter Biden case, United States v. Robert Hunter Biden, C.A. No. 23-61 (D. Del.).

The Court modified the procedures so that the jury pool will be moved out of the room to make space for the press to attend in person during the …