A Blog About Intellectual Property Litigation and the District of Delaware


Get your popcorn ready...
Linus Mimietz, Unsplash

We've talked a lot about Chief Judge Connolly's standing orders on disclosure and litigation compliance, including about how he recently ordered in-person hearings regarding compliance with those orders in a fairly large number of cases.

Chief Judge Connolly's standing order on Rule 7.1 statements requires disclosure of all individual or corporate owners of certain entities, going all of the way up the chain and including indirect owners:

[I]n all cases assigned to Judge Connolly where a party is a nongovemmental joint venture, limited liability corporation, partnership, or limited liability partnership, that the party must include in its disclosure statement filed pursuant to Federal Rule of Civil Procedure 7.1 the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified.

Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1 (D. Del. April 18, 2022).

We wrote about one instance, in VLSI Technology LLC v. Intel Corporation, C.A. No. 19-426 (D. Del.), where the Court ordered the plaintiff to confirm compliance with its standing order, and stayed the case when the plaintiff filed an inadequate response.

Now we have an update

Secret Plan
AI-Generated, displayed with permission

New Judge Williams is on a roll lately, releasing seven new opinions on Wednesday alone. Sadly we can't post about them all—I'd be doing nothing but writing blog posts. But I wanted to take the opportunity to point out an opinion from a rare (in D. Del., at least) trade secret action.

In Zoppas Industries de Mexico, S.A. v. Backer EHP Inc., C.A. No. 18-1693-GBW (D. Del.), the plaintiff accused the defendant of misappropriating its trade secret information about heating elements for appliances.

According to the complaint, plaintiff disclosed its literal secret plan—the "Zoppas Plan"—to appliance manufacturer Whirlpool. The complaint also alleges that the defendant here, Backer, then acquired that secret plan …

The sweetest victory
AI-Generated, displayed with permission, displayed with permission

One of my most vivid memories of life as a young lad, was a wrestling tournament when I was 12-ish. I was not a gifted wrestler, and I knew it, as did everyone with a passing interest in the sport. I'd made it through several rounds of tournaments, mostly by virtue of being in a less populous weight class and being not quite last. By the time I got to sectionals -- the last tournament before state -- It was just me and two other guys, both of whom looked to be about 45. They were from neighboring farm towns (where they presumably did the work of a whole team of oxen themselves …

Judge Stark being sworn in by Chief Judge Kimberly A. Moore
Judge Stark being sworn in by Chief Judge Kimberly A. Moore U.S. Court of Appeals for the Federal Circuit

This isn't news for Delaware FBA members, since Delaware FBA president Jeremy Tigan helpfully sent around an e-mail yesterday.

But for anyone who isn't already aware, Judge Stark's investiture will take place on Thursday 10/13 at 3:00 P.M. ET. You can watch it live here. That link should be active about 15 minutes before the event. Congratulations again to Judge Stark!

Sad Attorney
AI-Generated, displayed with permission

Here's some interesting language from Judge Andrews yesterday, in an oral order:

In a motion (No. 15-611, D.I. 532) that is as pointless as a motion can be, Plaintiff asks for reconsideration/clarification of an issue that was not decided. Defendants add to the frivolity by writing five pages in opposition (No. 15-611, D.I. 542), while agreeing that I did not decide the issue. Both sides are surely right. Thus, Plaintiffs motion is DISMISSED as moot.

Plaintiff had moved for reconsideration of Judge Andrews' order adopting a special master order that struck a new DOE theory. According to Judge Andrews' original order:

I think TQ . . . advanced a distinctly new DOE theory and …

Believe it or not, of 6 attempts this was the least horrific AI result
AI-Generated, displayed with permission, displayed with permission

A while back we did a post speculating that requesting argument on a motion moderately increased the chances of the Court actually holding argument on an issue.

We also speculated about several other effects of requesting argument, but I'll save those for another slow news day. I apologize for nothing.

Stone Cold Facts

To test out this theory, I picked a motion that I pegged at about a 50/50 chance of having an argument -- a motion to stay. Taking all of the decisions deciding such motions since the first of the year (and removing some in odd procedural circumstances as well as filtering out identical motions in related cases to clean up …

Fall. A great time for a Markman hearing with some in-person testimony.
Fall. A great time for a Markman hearing with some in-person testimony. Timothy Eberly, Unsplash

It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.

This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.

As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed …

A miniature attorney, ready for a mini-Markman.
A miniature attorney, ready for a mini-Markman. AI-Generated, displayed with permission

We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.

The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.

The Court found factual disputes as to both, and easily disposed of the non-infringement motion.

The …

zdenek-machacek-uB9TMm7R0So-unsplash
Zdeněk Macháček, Unsplash

Disqualification motions are tough. In the last 10 years, I count 2 successful motions in Delaware patent cases and 10 losers (although the counting is more complicated than usual as the issue tends to involve an inordinately large number of objections and requests for reargument, and often springs up again as the case evolves).

Still, one can learn things even from a failed attempt. Harbour Antibodies BV v. Teneobio, Inc., C.A. No. 21-1807-MN, for instance, gives us some insight into an issue that I'm surprised doesn't come up more often in this world of multinational megacorps and ultrafirms.

The plaintiff, Harbour, was a plucky little biotech startup that represented by the less little DLA Piper. DLA …

"Your honor, it's like the movie Groundhog Day, but we're repeating a trial..." AI-Generated, displayed with permission

Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.

The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.

The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:

The crux of ASC's position is that a two-day reduction in trial …