A Blog About Intellectual Property Litigation and the District of Delaware


District of Delaware Deposition Tips

Andrew E. Russell, July 14, 2023
Depositions KB

"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 …
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What a Successful Equitable Estoppel Defense Looks Like

Andrew E. Russell, July 13, 2023
Equitable Estoppel Affirmative Defenses

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 …

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A Mavexar-Related LLC and Its Owner Explicitly Refuse Court Order to Appear for Hearing, Shouting "Come at Me, Bro!"

Andrew E. Russell, July 12, 2023
Mavexar

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:

NOTICE OF OBJECTION TO AND NON-PARTICIPATION IN JUDICIAL INQUISITION
Former Plaintiff Backertop Licensing LLC (“Backertop” or “Plaintiff”) hereby gives …
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Court Rejects Argument that Party Is Bound to Its "Judicial Admissions" After Losing at Trial

Andrew E. Russell, July 11, 2023
Litigation

Reverse
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 ...

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Shocker! The "Mansplaining" Brief Fails: Court Compels Mavexar LLC Member Involved in 97 Patent Cases to Attend Hearing

Andrew E. Russell, July 10, 2023
Mavexar FRCP 45

Travel
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 …

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Patentee Successfully Reverses Court's § 101 Ineligibility Finding by Amending Complaint

Andrew E. Russell, July 9, 2023
§ 101 Motion to Amend

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, …
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The Hamburglar Did Nothing Wrong

Nathan R. Hoeschen, July 6, 2023
Ethics

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 …

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Court Rejects Attempt to Use Error in Running Searches as Excuse to Re-Negotiate ESI Search Terms

Andrew E. Russell, July 5, 2023
Search Terms Discovery Dispute

Yeah. Everybody can see the frog.
Yeah. Everybody can see the frog. Kieran Wood, Unsplash

As Delaware counsel, I sometimes have to say something along the lines of "the Court is going to see right through that" or "nobody is as sly as they think they are."

Usually this is in the context of something like slipping wholesale invalidity arguments into a claim construction brief (seriously? You think you are going to win SJ of anticipation at claim construction?) or "just flagging" a completely unrelated and irrelevant issue in a discovery dispute.

I saw an example of this last week in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361−GBW−CJB, D.I. 290 (D. Del. Jun. 26, 2023).

In Speyside, the …

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Confirmed: The Avandia Redaction Standards Do Not Apply to Discovery Motions. Have We All Been Fighting for Nothing?

Andrew E. Russell, July 4, 2023
Redactions

The Delaware bar lately, arguing over redactions to discovery dispute letters
The Delaware bar lately, arguing over redactions to discovery dispute letters Hasan Almasi, Unsplash

Based on the redaction disputes I've seen in couple of cases lately, some of us here in Delaware have forgotten that the high Avandia standards for access to public materials do not apply to discovery dispute letters and their attachments, as Judge Fallon confirmed last month:

[T]he common law right of access does not extend to discovery motions and supporting materials because the "underlying discovery material itself is not a judicial record." Genentech, Inc. v. Amgen, Inc., C.A. No. 17-1407-CFC et al., 2020 WL 9432700, at *3 (D. Del. Sept. 2, 2020) (citing Leucadia, Inc. v. Applied Extrusion Techs., Inc., …
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How Many Stips to Extend the Answer Deadline Is Too Many? Nine. (Or Sixteen?)

Andrew E. Russell, July 2, 2023
Complaint Stipulation

Stop
Markus Spiske, Unsplash

We've noted before that parties routinely stipulate to extend the deadline to answer in D. Del. cases. You may have wondered—is there a limit to the number of times the parties can stipulate to extend the answer deadline?

Now we have the answer: Yes, at least for Judge Williams. Here is how he reacted when parties filed their ninth stipulation to extend the answer deadline:

ORAL ORDER: There have been nine (9) Stipulation and Proposed Orders entered in this case granting Defendant an extension of time for it to answer, move, or otherwise respond to the Complaint. See D.I. 20; D.I. 21; D.I. 22; D.I. 23; D.I. 24; D.I. 25; D.I. 26; D.I. 27; D.I. …
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