A while back I wrote a post about the relative success rates of 101 motions before the different Delaware Judges. To prove once and for all that I sometimes ramble, that entire post can be distilled to the chart below:
Chief Judge Connolly - 70% of § 101 motions granted
But that was then, dear reader, before we had a new hotshot on the bench who is batting 1.000. If I knew how to use this site better, I would put Judge Williams at the top of this chart in flashing lights with …
On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.
In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:
The hydrofoil at issue, from U.S. Pat. No. 9,586,659U.S. Pat. No. 9,586,659
As the Court describes, the whole patent is focused on the board's stability feature:
The specification of the '659 Patent only, and repeatedly, describes the …
Typical day in litigationAI-Generated, displayed with permission
We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.
The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.
Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …
Judge Fallon issued an interesting ruling on a discovery dispute this week that I expect to see cited by many an attorney in high dudgeon over the coming months and years.
The issue was straightforward: Plaintiff had served a 30(b)(6) notice requesting a witness on "[t]he structure, function, and operation of the Accused Instrumentalities and the interoperation, integration, and/or interface between and among the Accused Instrumentalities.” The defendant refused, contending the topic was overbroad and unduly burdensome. Plaintiff then moved to compel.
Judge Fallon denied the motion without a hearing, holding:
Topic 1, which seeks testimony on "[t]he structure, function, and operation of the Accused Instrumentalities and the interoperation, integration, and/or interface between and among the …
Un-bifurcated (but probably not worth $42m)AI-Generated, displayed with permission
We wrote in December about how Judge Williams granted defendant's motion to bifurcate the jury trial in Board of Regents, the University of Texas System v. Boston Scientific Corp., C.A. No. 18-392-GBW (D. Del.).
That trial went forward starting last week, and the trial extended into this week. As we mentioned before, Judge Williams split the trial into two phases:
Direct infringement and invalidity
Willful infringement, damages, knowledge, and intent for induced infringement
Near the conclusion of Phase 1, plaintiff moved to "unbifurcat[e]" the trial. According to the transcript:
MR. SHORE [for plaintiff]: Your Honor, we would like for the Court to consider over the weekend, not …
In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.
AI-Generated, displayed with permission
And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).
The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.
This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!
All this and more on next weeks episode of IPDE! (Batman theme plays)
We've talked before about MILs that are really stealth summary judgment motions, but now let's talk about MILs that are stealth Daubert motions and stealth motions to strike!
On Friday, Judge Burke denied a motion in limine to preclude the testimony, holding that it was really a Daubert motion, and the party had waived it by failing to present it by the deadline for Daubert motions:
ORAL ORDER: The Court . . . hereby DENIES [Defendants' Motion in Limine No. 1] for the following reasons: (1) [T]he Scheduling Order in this case provided that "[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the [C]ourt at [the status conference …
Ok, ok, I know. No one cares about standards of review. I know. But this is interesting!
Today Judge Andrews ruled on objections to a R&R recommending that the Court deny a motion to dismiss a breach-of-contract claim, and grant a motion to dismiss a trade secret claim, without prejudice.
So far, nothing out of the ordinary. But the interesting part is the standards of review applied.
In reviewing the magistrate judge's recommendation to deny the motion to dismiss on the breach of contract claim, the Court applied the ordinary de novo review standard for dispositive matters under FRCP 72(b).
The defendant, however, also objected to the magistrate judge's decision to dismiss the trade secret claim …
Canada is a hard land. The weather is brutal. The moose, especially fierce. This isn't even touching on the whole hockey thing.
But the harshest part—worse than the indefatigable Mounties or the endless karaoke versions of You Oughta Know—is service.
Serving a Canadian is a real pain in the poutine.
AI-Generated, displayed with permission
Or so I thought.
Those with the misfortune of having to serve a foreign defendant will no doubt be aware of Rule Rule 4(f)(2)(C)(ii) which provides that a foreign individual may be served by "using any form of mail that the clerk addresses and sends to the individual and that requires a signed receipt." This rule applies to foreign corporations by way of Rule 4(h).
The issue I had always seen with service in this manner is that it's trivially easy for the defendant to simply ignore the registered mail. No signature, no return receipt, no service. It seems I was wrong about this.
The patentee in MG FreeSites Ltd. v. Scorpcast, LLC d/b/a HaulStars, C.A. No. 20-1012-MFK -- the "Haulstars"—indisputably had the clerk send the summonses to the foreign defendants (at this point I must admit that most of the defendants were actually Cypriot, but I know more about Canada so that's what I went with) via the ...
Judge Andrews issued an opinion today addressing the a motion to dismiss a trademark claim. As the Court explained, to make out a trademark claim, a plaintiff must show a likelihood of confusion. To assess a likelihood of confusion, the Court applies six-factors known as the Lapp factors.
The Court found, though, that when dealing with names as similar as "Javo" and "Javy," the Court can find the allegation of a likelihood of confusion plausible without having to resort to the full test:
I find Plaintiffs allegations of likelihood of confusion to be plausible. Javo and Javy, both made-up words (which might be suggestive of java, a term often used to refer to coffee), could easily be confused. . . . Both sides are in the coffee business. There are additional pleadings that are harder to evaluate at this stage of the case. I do not think assessing the likelihood of confusion from a full-blown Lapp factors analysis is appropriate. Plaintiff does not have to prove its case in its complaint. "[T]he existence of consumer confusion is a fact-intensive analysis that does not lend itself to a motion to dismiss." Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884, 897 (9th Cir. 2019) (citation omitted). I agree. The motion to dismiss for failure to plausibly allege likelihood of confusion is denied.
Good to know!
That smoke is from the double-barrelled patent action/§ 1983 claim she just filedWilliam Isted, Unsplash
The opinion also touched on a term you don't hear very often in the patent world: a "shotgun pleading."
Looking at the cases the Court cites—and with help from the internet—a shotgun pleading seems to be one that recites many (possibly jumbled) facts and vague claims in the hope that something sticks:
[A] shotgun complaint shifts onto the defendant and the court the burden of identifying the plaintiff's genuine claims and determining which of those claims might have legal support.
Adger v. Carney, C.A. No. 18-2048-LPS, 2020 U.S. Dist. LEXIS 52533, at *17 (D. Del. Mar. 26, 2020).
Although the narrative text is chronologically organized, it does not set out separate claims but rather ...
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