At the FCBA's 2024 Bench and Bar, some of the speakers mentioned that referrals to visiting judges referrals to should be slowing. I've noticed that that seems to be correct — it feels like there have been fewer referrals to visiting judges lately.

Some basic Docket Navigator searches seem to confirm it. I found zero new referrals to visiting judges in the last three months (not counting related-case referrals). That's the longest gap we've had this year, after batches of visiting referrals in January, February, April, July, and on August 1. But Docket Navigator also says that there were even longer gaps last year, including one from January - May and another …

Before you get too excited, defendants, this case involved a scheduling order using Judge Connolly's form, which provides only a single round of infringement and invalidity contentions, and explicitly requires good cause to amend.

Most District of Delaware scheduling orders include two rounds of contentions (initial and final), with the second round typically coming around the close of fact discovery. It is unlikely to be as difficult to amend in cases like those.

Regardless, I thought this was an interesting result worthy of a post. In Cognipower LLC v. Fantasia Trading, LLC, C.A. No. 19-2293-JLH-SRF (D. Del.), the Court stayed the case …

(Eds. Note -- I was cackling at this headline for quite a while)

We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.

Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.

The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.

Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:

In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.

Id. at 6 (internal citations omitted).

As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.

Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.

We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.

In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …

Its not often I got to throw out a reference to A Critique of Pure Reason, so this one goes out to whatever liberal arts majors find themselves reading the blog for some reason.

As the aforementioned liberal artists among you may have gathered, today's post deals with the question of representative claims in the 101 analysis. In particular, to what extent can the few exemplary claims listed in the complaint stand in for the larger, inchoate, collection of claims that may ultimately be asserted when deciding a motion to dismiss.

In Redwood Techs., LLC v. Netgear Inc., C.A. No. 22-1272-GBW, D.I. 27 (Oct. 28, 2024), Judge Williams drew the hardest (most Kantian?) line on the issue that I have seen in recent years.

The operative complaint followed the common tactic of accusing the defendant's products of accusing "one or more claims" of several patents and then describing the alleged infringement of one claim per patent "for example." Id., D.I. 14 (Amended complaint).

Defendant moved to dismiss, discussing only those representative claims. Plaintiff opposed, arguing that the defendant "did not meet its burden of demonstrating representativeness," and noting that it "will be asserting additional claims of infringement." Id., D.I. 21 at 1.

Judge Williams was unpersuaded by this potential assertion of as-yet-unidentified claims and treated each of the claims referenced in the patent as representative:

The Court rejects Redwood's attempt to insert new patent claims through its opposition brief, as Redwood put forward only a skeletal argument and "did not file a motion for leave to amend [its] [Operative] Complaint." Redwood "may not amend [its] claims via [its] opposition to the motion[] to dismiss." "[T]he Court will consider only the claim[s] asserted in [Redwood's] [Operative] Complaint."

Thus, as Redwood fails to specifically identify a single, disputed claim left unaddressed by Netgear's motion, there are no "disputes over representativeness" for this Court to resolve.

Id., D.I. 21 at 5 (internal citations omitted).

Given the "skeletal" (spooky!) nature of the Redwood's briefing on this issue, it's not clear if the representativeness argument was doomed by the failure to specifically seek leave to amend, or if it could have passed muster with some additional detail. As an example, I sometimes see briefs that actually say something like "claim 39, which we definitely will be asserting, is totally different for the purposes of this analysis because it also claims a novel perpetual motion machine."

A possible answer lies in ...

As we've noted in the past, it's fairly routine to stay cases once an IPR is instituted. But the Court has at least once denied a stipulated stay where the IPRs were not yet instituted.

Last week the visiting Judge Choe-Groves denied a stipulated stay where the PTAB had instituted an IPR for two out of three patents-in-suit—leaving one patent not subject to an IPR, as the parties explained in the stip:

WHEREAS, Teladoc filed three petitions for inter partes review (“IPR”) (Nos. IPR2024-00618, IPR2024-00616; and IPR2024-00617) of the Asserted Patents;

WHEREAS, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs on the ’554 and ’142 Patents on September 16, 2024 and September 17, 2024; …

Given how often parties use search terms, you'd think we would see precedent on them more often. But opinions about the use of search terms for document production only come out occasionally. It may be that many of these disputes are resolved on teleconferences, where the generally escape the notice of anyone who is not on that case.

Anyway, this week the Court unsealed a new opinion regarding document production and the use of search terms.

In Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF (D. Del.), the parties agreed in an ESI stipulation that they would search using search terms. The searched terms resulted in about 110,000 unique hits in the defendants documents—but it produced only about 25,000 documents. It argued the remainder were non-responsive to the plaintiff's discovery requests.

The plaintiff moved to compel production of the remaining 85,000 documents. The Court granted the motion, relying primarily on the fact that the defendant is withholding so many documents that hit the search terms:

The ESI Order provides that "the parties will have substantially completed production of all non-privileged custodial ESI responsive to the parties' Priority Requests, subject to any unresolved objections[,]" by August 30, 2024. (D.1. 71 at 6; D.I. 106) Even if the court were to construe this provision broadly to support Defendant's position that documents hitting on search terms can be withheld based on relevance,' relevance is broadly construed in the context of discovery. . . . The fact that Defendant is withholding more than seventy-five percent of the documents hitting on the parties' agreed-upon search terms amounts to "specific, compelling evidence suggesting that [Defendant] is withholding responsive ESI material." Doe 1 v. Baylor Univ., 2018 WL 11471253, at *2 (W.D. Tex. May 6, 2018).

. . . Plaintiff explains that search terms combining "orca* AND" with keywords deemed to be relevant to the issues in the case resulted in about 35,000 unique documents across custodians, but Defendant's production includes less than 3,000 documents for that keyword combination. . . . These documents are facially relevant, satisfying Plaintiff's initial burden to establish the relevance of the requested information. . . . Defendant offers no argument or examples supporting its position that documents hitting on these agreed-upon search terms are not responsive.

Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF, D.I. 182 (D. Del. Oct. 22, 2024).

It's interesting that the Court focused primarily on the relevance of the documents to the issues in the case, rather than whether the documents were responsive to plaintiff's discovery requests. The scope of the plaintiff's requests was not discussed in the decision—possibly because ...

If law has one guiding principle, it is that words matter. The precise choice of verb or adjective can be the difference between friend and foe, peace and war, victory and defeat.

You've read Faust, you get it.

We saw a great example of this principle this week in I-Mab Biopharma, v. Inhibrx, Inc., C.A. No. 22-276-CJB (D. Del. Oct. 17, 2024) (Mem. Order). I-Mab was prought under the DTSA which allows damages to be calculated as either (1) damages for actual loss plus unjust enrichment or (2) a reasonable royalty. 18 U.S.C. § 1836(b)(3)(B).

The defendants—who unsurprisingly preferred a lower damages figure—served an expert damages report that noted that plaintiff's "actual damages" might be "zero." The plaintiff moved to exclude the opinion under Daubert, arguing that their damages theory was based on a reasonable royalty, and thus an opinion that their "actual damages" might be zero was neither here nor there, and was unduly prejudicial.

The defendant countered that the expert had meant that "Dr. Manning is 'not offering an opinion on actual losses, but instead references ‘actual damages’ as reflective of damages I-Mab may be awarded'—in other words, according to Defendants, the zero damages opinion is an opinion that Plaintiff’s reasonable royalty damages may be zero." Id. at 8 (quoting D.I. 364 at 23).

Judge Burke, however, found the expert's choice of words dispositive, and struck the so-called "zero damages opinion"

The Court agrees with Plaintiff that Defendants are ignoring the “actual words” that Dr. Manning used, as he did not opine in the zero damages opinion that Plaintiff’s “reasonable royalty damages” are zero (nor do Defendants point to anywhere else in Dr. Manning’s report where he opined that Plaintiff’s reasonable royalty damages should be zero). Nor do Defendants explain why an opinion that Plaintiff’s “actual damages . . . are zero” should be interpreted to actually mean that Plaintiff’s “reasonable royalty damages are zero.” Moreover, the Court agrees with Plaintiff that Dr. Manning does not seem to provide any facts or analysis in support of the zero damages opinion. Thus, Defendants have not sufficiently explained how, inter alia, Dr. Manning’s zero damages opinion is relevant in light of Plaintiff’s argument to the contrary; therefore it must be excluded.

Id. at 9 (internal citations omitted).

I think most attorneys admire counsel who can think outside-the-box and push the law forward.

I still remember the original, magistrate-judge-level oral argument in TC Heartland, where the Court asked counsel "if your argument is correct . . . there's really only two venues in which the suit can go forward, am I right?" and counsel answered with the oral argument equivalent of "yup"—even though that outcome was directly contrary to controlling Federal Circuit precedent and how everyone had done things for decades.

Then they appealed all the way to the Supreme Court, and changed the law for everybody. Mic …

Longtime readers of the blog will know that I've got a bit of a thing for motions for fees. FeeHead is the term I like to use, although FeePle is also acceptable in close company. FeeLine and FeeLing are just hurtful.

Anyways.

I like a fee motion because they usually have the best facts. Today's case, Mirtech, Inc. v. Agrofresh, Inc., C.A. No. 20-1170-RGA (D. Del. Oct. 18, 2024) (Mem. Op.), actually has pretty boring facts, but addresses some novel legal issues with fees that even I, the resident FeeHead, hadn't seen before.

The parties had a wide-ranging dispute that included various trade secrets and alleged breaches of an earlier settlement agreement. That settlement agreement contained a provision allowing the prevailing party in any "action to enforce its rights under th[e] agreement" to have its fees reimbursed by the loser. Following a prolonged litigation, both parties moved for fees under this provision.

In assessing who was the prevailing party, Judge Andrews was faced with several claims that had been dismissed without prejudice, but which had never been reasserted in an an amended complaint. The parties disputed whether the party winning the dismissal had "prevailed" on those claims:

Even though I dismissed the Mir Parties’ claims without prejudice and with leave to amend, the Mir Parties chose not to amend the complaint. AgroFresh cites to Morton Int’l, Inc. v. A.E. Staley Mfg. Co., 460 F.3d 470, 477 (3d Cir. 2006), for the proposition that a dismissal without prejudice becomes a final order when the plaintiff “elected to stand on the complaint.” Morton concerned whether a dismissal without prejudice was a final order that would provide an appellate court with jurisdiction, as opposed to identifying a prevailing party on an issue. I think that similar logic would apply to deciding the prevailing party issue. The Mir Parties previously expressed that they “do not intend to amend the complaint” (D.I. 41), and they have not done so. Furthermore, AgroFresh argues that the statutes of limitations on the Mir Parties’ claims have expired, meaning the claims are no longer viable. The Mir Parties do not address this. This is not a situation where the dismissal “has no preclusive effect on the plaintiff’s ability to re-file” or has no “material alteration of the legal relationship of the parties.”

Id. at 12 (internal citations omitted)

It's tough to tell from this section whether ...