A Blog About Intellectual Property Litigation and the District of Delaware


Non-Infringement Is No Reason to Withhold Core Technical Documents, At Least When the Infringement Allegation is Not Baseless

Andrew E. Russell, Sept. 7, 2022
Infringement Contentions Core Technical Documents

Television
Ajeet Mestry, Unsplash

Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:

Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.

He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:

The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.

He also rejected the ...

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Common Interesting Issue

Nathan R. Hoeschen, Sept. 6, 2022
Common Interest Privilege

You can see in Oreo's eyes that he does not share a common interest with the toddler
You can see in Oreo's eyes that he does not share a common interest with the toddler __-drz-__, Unsplash

Judge Bataillon just issued an eminently cite-able opinion on the scope of the common interest privilege—an issue that comes up quite a bit in the district, but is notoriously hard to pin down.

What makes this case—Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184 (D. Del. Sept. 2, 2022) (Mem. and Order)—so useful is that the plaintiff and its alleged common interest BFF had three separate agreements which were executed at different times. This, in turn, allowed the Court to neatly lay out where along the chain of agreements the common interest privilege attached.

NDA Is Not Enough

All three agreements between Fraunhofer and IPXI (the aforementioned BFF) centered on licensing the patents in suit. The first such agreement was a non-disclosure agreement executed by both parties while they were discussing the possibility of a licensing agreement. The Court found this agreement insufficient to create any common interest privilege, noting that "An NDA does not create legal obligations beyond nondisclosure." Id. at 5. As noted in the Magistrate Judge's Order ...

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A Helpful Order on Moving to Amend to Add Inequitable Conduct

Andrew E. Russell, Sept. 2, 2022
Inequitable Conduct FRCP 15

Attorney searching for factual support for their inequitable conduct allegations
Attorney searching for factual support for their inequitable conduct allegations Agence Olloweb, Unsplash

Yesterday, in Intercept Pharmaceuticals v. Apotex Inc., C.A. No. 20-1105-MN (D. Del. Sept. 1, 2022), Judge Hall granted a motion to amend to add inequitable conduct allegations almost a year after the deadline for amendment in the scheduling order.

Most D. Del. scheduling orders include a deadline for motions to amend or to join additional parties. Normally, the standard for motions to amend in the Third Circuit is relatively easy to meet. But when there is a scheduling order deadline for amendment, the Courts has held that parties must show "good cause" under Rule 16 if they move to amend after the …

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An Unfortunate Objection

Nathan R. Hoeschen, Sept. 1, 2022
Damages

Jane Almon, Unsplash

It's not often that there's a consequence to objecting to an exhibit in the pretrial order. The common wisdom is that it's better to be safe than sorry, so pretty much every exhibit gets some sort of objection—at least at the PTO stage. Of course, many of these objections are abandoned come trial following a series of interminable meet and confers between the least senior members of each trial team. The system works.

Usually. Sometimes, one objection too many can cost you $6,000,000.

A Common Problem Made Worse By COVID

As often happens in cases between competitors, the defendants in Sunoco Partners Marketing Terminals L.P. v. Powder Springs Logistics, LLC, (yes, we're talking about this one …

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Too Far: Judge Andrews Denies Post-Trial § 101 Motion on System for Blending Gasoline and Butane

Andrew E. Russell, Aug. 31, 2022
Prior Art § 101

Tanks
Patrick Federi, Unsplash

Judge Andrews resolved what seems like a tough § 101 motion today, and I thought the claims of the patent (and the outcome) were interesting.

The patent involves a system for mixing gasoline and butane. The patent specification said that these fuels were previously mixed in multiple ways, including in a laborious process involving manually adding butane to a tank of gasoline and then stirring the two together.

There were a number of claims at issue, but the one that stands out most to me simply claims the whole system and what it does, without claiming how the components work:

A system for blending gasoline and butane at a tank farm comprising:
a) a tank of …
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Fee Fi Fo Fun

Nathan R. Hoeschen, Aug. 30, 2022
Fees

Ashley Jurius, Unsplash

Typically, parties on the same side of the V like to put up a united front. Whatever things might look like behind the scenes, in public, they make a big show of laughing loudly at each other's jokes and slapping one another on the back with more than necessary force.

Apparently, that all goes out the window when fees are on the line.

Earlier this year, Judge Andrews awarded the defendants attorneys' fees in M2M Solutions LLC v. Sierra Wireless America, Inc, C.A. No. 14-1102-RGA (D. Del. Aug 16, 2022) (Clarifying Order), largely because the plaintiffs had pressed an infringement theory contrary to the Court's claim construction.

As it happened, there were two unrelated …

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Judge Noreika Rejects Attempt to "Reserve[]" Arguments Regarding Post-Judgment Interest

Andrew E. Russell, Aug. 29, 2022
Reservation of Arguments Litigation

Freshly preserved arguments, ready to be set aside for the winter...
Freshly preserved arguments, ready to be set aside for the winter... Olia Gozha, Unsplash

Parties often try to expressly reserve, preserve, and/or avoid waiver of arguments or the right to seek relief, often in a paper filed or served on the deadline to make the argument or seek the relief. It may not always work—but it's not very costly to give it a shot, either.

Last week, in Aqua Connect, Inc. v. TeamViewer US, Inc., C.A. No. 18-01572-MN (D. Del.), Judge Noreika rejected an attempt by a plaintiff who prevailed at trial to avoid having to raise its arguments regarding post-trial interest during post trial briefing.

After plaintiff won a $5.7m verdict in a jury trial …

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Document Production Deadlines Set as a Percentage of Completion (50%, 75%)?

Andrew E. Russell, Aug. 28, 2022
Stipulation Scheduling Order

Percentages
Artem Beliaikin, Unsplash

This is a way of drafting scheduling order deadlines I haven't seen before. In Novarad Corp. v. Medivis, Inc., C.A. No. 21-1447-VAC-MPT (D. Del.), the parties initially agreed to a scheduling order that included a deadline for document production to be "substantially complete."

Many (maybe all) of the judges' form scheduling orders include a deadline for substantial completion of document production. Parties generally understand the substantial completion deadline to mean the production of enough documents that fact depositions can begin.

Exactly how many documents that is can be an occasional source of disagreement. There is not a lot of well-known precedent about exactly what proportion of documents must be produced before the substantial …

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Scheduling Order Ambiguities and a Proposed Solution

Emily DiBenedetto, Aug. 24, 2022
Case Management Computing Time

Certainty > Ambiguity
Certainty > Ambiguity Jon Tyson, Unsplash

Confusion over a deadline can lead to missed deadlines. But when parties draft the initial scheduling order in an action, there are at least two common ways that ambiguities may arise, both of which seem easy to eliminate.

“# Days After the Scheduling Conference” is Ambiguous If No Scheduling Conference Takes Place

The first common source of ambiguity in recent scheduling orders is dates scheduled to occur a set number of days after the scheduling conference.

Why is that a problem? Well, we have noticed a growing trend in which the Court issues Scheduling Orders without a Scheduling Conference. Instead, the Court may adjust any proposed dates by crossing them out on the proposed order, writing in the Court’s preferred date(s), and issuing the adjusted order on the docket. Thus, the parties may have a date set “30 days after the Scheduling Conference”—but there was no scheduling conference.

When that happens, the correct result is unclear. Should the deadline be interpreted to mean 30 days from when the Rule 16 Conference was scheduled to occur? Or 30 days from the Scheduling Order? Or should ...

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