A Blog About Intellectual Property Litigation and the District of Delaware


Sword-and-Shield Privilege Argument Succeeds Against Company's "Folklore" of an Implied License

Andrew E. Russell, Jan. 23, 2023
Hearsay Waiver

"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents." AI-Generated, displayed with permission

Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.

The Court found that this "folklore" was relevant to the implied license defense:

While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from ...
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No, You Can't Add a Copying Defense to Obviousness Two Weeks Before Trial (And That Is a Good Thing)

Andrew E. Russell, Jan. 20, 2023
Prejudice Obviousness

"I knew we forgot something..." AI-Generated, displayed with permission

Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.

In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.

According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:

ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
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"With Its First Appearance, Pleading, Petition, Motion, Response, or Other Request"

Nathan R. Hoeschen, Jan. 19, 2023
Disclosure Statement

One of the phrases you least want to see on your docket is "deficiency notice." In the scale of bad docket entries it sits somewhere between "untimely" and "consumed by fire."

Worst of all, consumed by untimely fire
AI-Generated, displayed with permission

But alas, these notices come regardless, and in fact the last few weeks have brought quite a few that I hadn't seen before in Delaware. Example below:

DEFICIENCY NOTICE issued by the Court to defendants Alembic Pharmaceuticals Limited, Alembic Global Holding SA, an Alembic Pharmaceuticals, Inc defendant Nanjing Noratech Pharmaceutical Co., Limited: Pursuant to Fed. R. Civ. P. 7.1 (b)(1), A party must: (1) file the disclosure statement with its first appearance, pleading, petition, motion, response, or other request addressed to the court. Counsel for the defendant is requested to supplement the docket with an appropriate Rule 7.1 Disclosure Statement.

Novartis Pharms. Corp. v. Alembic Pharms. Ltd., C.A. No. 22-1395-RGA (D. Del. Jan 18, 2023).

As noted in the docket entry, Rule 7.1 requires parties to file a corporate disclosure statement with their "first appearance, pleading, petition, motion, response, or other request addressed to the court." This is easy enough to remember for plaintiffs, who usually ...

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Court Gives Parties in 11 Patent Cases the Choice to Consent to Magistrate Judge Burke, or Get a Random Visiting Judge

Andrew E. Russell, Jan. 18, 2023
Visiting Judges Congestion

Roll the Dice
Leon-Pascal Janjic, Unsplash

Since 2021, Judge Connolly has occasionally issued orders asking parties to either consent to a magistrate judge or have their case re-assigned to a visiting judge. The parties in three out of five of that first round of cases consented, and we've seen several rounds of these orders since then.

The Court also offered parties a similar choice in the wake of the departure of Judge Stark, before Judge Williams was confirmed. I haven't seen hard numbers on this, but in May of last year we estimated that around 20% of those cases consented rather than waiting for the new district judge and risking re-assignment to a visiting judge.

These consent-or-visiting-judge referrals have continued through Judge …

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Confirmed: Judge Connolly Does Not Speak Italian

Nathan R. Hoeschen, Jan. 17, 2023
Translation

Prego!
Prego! Krista Stucchio, Unsplash

An interesting note on the importance of translation -- and accurate translation -- from Judge Connolly last week in Doda v. Waste Management, Inc., C.A. No. 17-604-CFC (D. Del. Jan 13, 2022).

The plaintiffs were an Italian engineer and his companies who were doing business with an American firm pursuant to an NDA. The NDA required the parties to mark any confidential information "'Confidential,' 'Proprietary,' or [with] some similar designation." Plaintiffs alleged that defendant breached the agreement by disclosing such confidential information to the patent office, which later published it.

The issue? The "designation" was only in Italian.

In their posttrial Proposed Findings of Fact, Plaintiffs state that this paragraph [below a signature block …
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Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.

The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:

  • December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
  • December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
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Lawyer Files Letter Asking Court to Rule on Their Motion; Court Immediately Grants Motion; Client Cheers

Andrew E. Russell, Jan. 13, 2023
Motion to Stay Congestion

Danger
Raúl Nájera, Unsplash

The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …

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A Simple Sale

Nathan R. Hoeschen, Jan. 12, 2023
Inducement Indirect Infringement

AI-Generated, displayed with permission

Interesting opinion from Judge Burke today on indirect infringement allegations, and what constitutes an "active step" to encourage the direct infringement.

The defendants in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Jan. 12, 2023) (Mem. Order) sold a sort of refined coal that was a necessary agreement in an allegedly infringing process performed by power plants. They moved to dismiss the complaint for indirect infringement, arguing that, while they knew it was likely to be used in an infringing manner, they did not communicate with the end users in any way that actively induced infringement. I.e., they did not take any active steps.

Judge Burke …

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Judge Andrews Offers Guidance for Delaware Counsel—But Can They Do It?

Andrew E. Russell, Jan. 11, 2023
FRCP 15 FRCP 16

This. This is what you need to include with your motion to amend.
This. This is what you need to include with your motion to amend. Andrew E. Russell

Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.

This is something parties often mess up, as we've mentioned.

Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:

Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …
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Basically the Same Thing

Nathan R. Hoeschen, Jan. 10, 2023
Collateral Estoppel Claim Preclusion

I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.

Pictured, refinement
Pictured, refinement AI-Generated, displayed with permission

The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.

The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."

Judge Goldberg described apparent chain of reasoning thusly:

The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using ...
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