A Blog About Intellectual Property Litigation and the District of Delaware


Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied

Andrew E. Russell, Sept. 10, 2024
Concise Statement of Facts Summary Judgment

Just imagine the bird is a summary judgment motion.
Just imagine the bird is a summary judgment motion. AI-Generated, displayed with permission

Our blog readership remains pretty high these days, and we continue to grow subscribers. But not all District of Delaware attorneys follow the blog—yet.

That may be why, even though we've talked about these at length, parties continue to file separate "concise statements of material fact" in support of their summary judgment motions that list non-material facts and do not include pinpoint citations—potentially resulting in denial of their motion.

Here are some guidelines for when you are putting together a concise statement of material facts in support of an SJ motion:

  • Include only the material facts. If you could still win your motion if a fact …
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Court Denies Production of Corporate-Level Financials

Andrew E. Russell, Sept. 9, 2024
Discovery Dispute Discovery

"Yes, we need to know their financials for our permanent injunction. It totally won't help us in settlement negotiations or anything." AI-Generated, displayed with permission

This is another one where I saw a potentially useful order about an issue that comes up from time to time, and thought "I should write a blog post about that, so I can find it later." I hope this will be helpful for others as well.

Last week in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), the Court addressed the question of whether a plaintiff in a "competitor-competitor" patent case could compel production of the defendant's corporate-level financials. It held that no, it could not, …

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Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
O2 Micro Waiver

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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Demonstrative Lost

Nathan R. Hoeschen, Sept. 5, 2024
Trial Trial Practice

It's hornbook law that demonstratives are not evidence. Nevertheless, you'll sometimes see parties file some or all of them on the docket, if for no other reason than to explain a portion of the transcript where an expert is otherwise gesturing vaguely at a powerpoint.

AI-Generated, displayed with permission

Unfortunately, there's no rule squarely addressing when it is appropriate to lodge these demonstratives with the Court. Fortunately, Judge Hall gave us all a bit of guidance last week in Ferring Pharms. Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH, D.I. 494 (D. Del. Aug. 28, 2024).

In that case, both parties filed their trial demonstrative a few weeks after the verdict (via notices of lodging). Just …

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Court Holds That Using Prior Art That Was Considered in Post-Grant Proceedings "Opens the Door" for Patentee to Put Evidence of Those Proceedings Before the Jury

Andrew E. Russell, Sept. 4, 2024
Trial Procedure Motion in Limine

When the Court says
When the Court says "unless they open the door," typically you'd want to stay far away from that door. AI-Generated, displayed with permission

There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.

Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …

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When A Gimme's A Gotcha

Nathan R. Hoeschen, Sept. 3, 2024
Summary Judgment

We'd all like to win the war in one decisive strike. Just have a trial by stone and knock the whole thing out without needing to go to the time and expense of a trial . . . by law.

(Eds. note—has nobody else seen The Dark Crystal? I thought this was a universal reference, but it appears to be just another exhibit in the case for my being quite old)

AI-Generated, displayed with permission

Where was I? Anyway.

It's always tempting to take a big swing at summary judgment on validity or infringement in the hopes of knocking out the whole case. This urge, however, must be tempered by the knowledge that these big motions are harder to win. With limited pages and various judicial policies effectively limiting the number of SJ motions that can be brought, a more winnable motion on a small issue is often a good choice.

But an issue can be too small.

That was the lesson of Northwestern Univ. v. Universal Robots A/S, C.A. No. 21-149-JLH, D.I. 327 (D. Del. Aug. 28, 2024). The defendant filed a couple big SJ motions on 101 and noninfringement, but also moved for ...

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The Pennypack Factors Are Tough: Court Permits Patentee's Untimely Disclosure of Conception Date

Andrew E. Russell, Aug. 30, 2024
Pennypack FRCP 26

Pennypack: Kinda stacked for the late discloser since 1977!
Pennypack: Kinda stacked for the late discloser since 1977! Kim Leary, Unsplash

I hope the Third Circuit one day revisits the Pennypack factors, which are what it directs the lower courts to apply to determine whether late disclosures are subject to sanctions such as preclusion.

The factors can be lenient on parties that are very late in disclosing critical facts. Pennypack sets up a system where, oddly, the more critical the late-disclosed fact is, the later the party can be, and the less likely it is to be excluded. Isn't that backwards?

In practice, the factors often seem to turn on whether there is incurable prejudice, and that can be hard to establish. But a rule that "you …

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"The Latest Chapter In A Voluminous History Of Disturbing Matters"

Nathan R. Hoeschen, Aug. 29, 2024
Mavexar

It's Crabbering time!!

AI-Generated, displayed with permission

Long slumbering, but always alert, the Mavexar saga moved step closer to its inevitable conclusion today when Chief Judge Connolly issued a memorandum order in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del. Aug. 29, 2024) (Mem. Order).

This order dealt with a pair of cases that have largely flown under the radar, being stayed during the pendency of the Nimitz appeals. But the story here is similar in the broad strokes to that in Backertop and Nimitz. The putative plaintiff is an LLC with a sole owner who was assigned the patent in suit by IP Edge or Mavaxar. The attorneys in the case largely communicated …

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Court Rejects General Claim Construction Interrogatory—But POSITA Interrogatory Is Fine

Andrew E. Russell, Aug. 28, 2024
Contention Interrogatories Contentions

It was tough to find an image for this. Just imagine each lego head is a proposed claim construction.
It was tough to find an image for this. Just imagine each lego head is a proposed claim construction. Wu Yi, Unsplash

The District of Delaware supports contention interrogatories generally (but not contention 30(b)(6) topics). I remember that, back before the Court adopted the Default Standard in 2011, contention interrogatories were the main way to define and limit the scope of the case during fact discovery.

But contention interrogatories are not without limits. On Friday, in LeFebvre v. Extrabux, Inc., C.A. No. 23-167 (D. Del.), Judge Burke issued a decision on a discovery dispute about a contention interrogatory seeking claim construction positions. He held that a party can't just ask the opposing party for its …

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The Jumara Factors Strike Again

Andrew E. Russell, Aug. 26, 2024
Motion to Transfer Transfer

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>. Who wouldn't want to litigate here? These guys, obviously.
Wilmington, DE. Who wouldn't want to litigate here? These guys, obviously. Andrew Russell, CC BY 2.0

We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.

Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:

Plaintiff's Choice of Forum: This always favors plaintiff, and …

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