A Blog About Intellectual Property Litigation and the District of Delaware


Entries for author: EDiBenedetto

Door Slams on Sham Litigation Exception, Resulting in No Antitrust Liability for Prior IP Lawsuit

Emily DiBenedetto, Feb. 8, 2024
Trademark Litigation Antitrust

Monopoly
AI-Generated, displayed with permission

Why did physicists refuse to write about the Antitrust Paradox? Because every time they tried to define the relevant market share, the observer effect kicked in, and the monopoly disappeared. (I hope readers who have dual Bork/quark interests enjoyed that.)

Today’s highlighted opinion proceeds from trademark law, crosses into antitrust law, and has implications for patent law. In it, Judge Connolly rejects a plaintiff's attempt to argue that the defendants' prior filing of trademark litigation against competitor gave rise to anti-trust and unfair competition claims.

Noerr-Pennington Precludes Some Tort and Anti-Trust Claims Based on Litigation—Unless It Was Sham Litigation

Judge Connolly explained that the Noerr-Pennington doctrine provides immunity from certain types of claims that a plaintiff …

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Judge Choe-Groves of the Court of International Trade Joins Delaware's List of Visiting Judges

Emily DiBenedetto, Dec. 13, 2023
Visiting Judges Standing Orders

Just imports - no exports? No, he's an importer and exporter.

Judge Choe-Groves, of the Court of International Trade, has been newly added to the list of Delaware’s visiting judges. In early November, she was reassigned a first handful of cases.

[Thanks to an unnamed colleague who mentioned this fact in passing today and expressed surprise that we hadn’t highlighted it on the blog. Keep giving us feedback - we love it!]

Judge Choe-Groves has served as a visiting judge in several other jurisdictions including the Southern District of New York, District of Idaho, Northern District of Oklahoma, and United States Court of Appeals for the Ninth Circuit.

Not all of Judge Choe-Groves’ visiting assignments have been patent cases. In fact, most of her earlier assignments appear to be …

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The Other Meaning of an Ellipsis

Emily DiBenedetto, Nov. 28, 2023
Legal Writing

Dot-dot-dot
AI-Generated, displayed with permission

We all know what ellipses (". . .") mean, right? It means that something in a quote was omitted. According to Bluebook Rule 5.3:

“Omissions of a word or words is generally indicated by the insertion of an ellipsis, three periods separated by spaces and set off by a space before the first and after the last period (“♦.♦.♦.♦”), to take the place of the word or words omitted. Note that “♦” indicates a space.”

In yesterday's lengthy Mavexar opinion, however, Chief Judge Connolly pointed out that ellipses in a transcript can mean something else entirely. They are to be used to

reflect the fact [that the witness] trailed off and was silent for a …
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Highlights from the United States District Court District of Delaware Annual Report 2023

Emily DiBenedetto, Aug. 25, 2023

This report, produced by the Court, is available on the Court's website. I’d encourage our readers to peruse the full report, but we highlight a few interesting statistics and announcements below.

IP Cases Continue to Dominate the Docket

In 2022, there was an increase in jury trials to 19 in the District of Delaware. Patent/IP cases accounted for 44% of all civil filings in the last 7 years and 43% in 2022 alone.

Pie Chart Delaware Docket
The United States District Court: District of Delaware

Nationally, patent filings decreased from 4,037 filings to 3,854. In the District of Delaware in 2022, 685 patent cases were filed, a 23.04 percent decrease from the previous year of 890. Delaware is second in the nation, after …
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Don’t Miss the Motion for Reargument Deadline

Emily DiBenedetto, Aug. 23, 2023
Reargument Reconsideration

Local Rule 7.1.5 governs motions for reargument, sometimes styled as motions for “reconsideration.” As we’ve noted, the deadline to move for reargument or reconsideration can be easy to miss. The deadline is just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.

What Is a motion for reargument?

A request for “clarification” of the Court’s prior order may be interpreted as a motion for reargument/reconsideration. But a motion for reargument is not a do-over. In fact, you cannot rehash arguments you already made—and you cannot make new arguments you could have raised earlier.

Erasers
Mick Haupt, Unsplash

The scope of a motion for reargument is very narrow, and must show at …

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Another Litigation Funding Hearing is Set for Friday, July 21, 2023

Emily DiBenedetto, June 28, 2023
Mavexar Disclosure Statement

Hercules Slaying the Hydra

Judge Connolly’s new order provides a concise summary of the Mavexar timeline and announced the date of a long-delayed evidentiary hearing in the Creekview case.

Mark your calendars for Friday, 7/21 at 9:00AM in Courtroom 4B. This hearing was originally slated for December 6, 2022, but it never happened.

Last fall, Judge Connolly ordered a series of evidentiary hearings in approximately a dozen cases to determine whether LLC plaintiffs had complied with his standing order.

According to the Court in his newest order, the first hearing in that series, involving Nimitz, Mellaconic, and Lamplight:

raised serious concerns that the parties may have made inaccurate statements in filings with the Court; that counsel, including Mr. Chong, may have …
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Throwback Thursday to an Undead Inventor

Emily DiBenedetto, May 24, 2023
Expert Witness Pennypack

Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.

It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.

In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s …

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That Just Sounds Like a Stipulation with Extra Steps

Emily DiBenedetto, May 22, 2023
Stipulation Scheduling

Alpine Forget-me-not. Myosotis alpestris (1925)
Alpine Forget-me-not. Myosotis alpestris (1925) Mary Morris Vaux Walcott

Stipulations to extend time are a popular, both as a topic on this blog and in how routinely they are filed. Usually, stipulations to extend time are granted without incident, so we highlight the outliers as reminders that sometimes there’s more to it than mere agreement between the parties.

Don’t forget! If you’re stipulating to extend the:

  1. Deadline for discovery completion, or
  2. Postponement of trial

You must include the reasons for the request in your stipulation or motion. And the local rules require you to include either a supporting affidavit by the requesting counsel’s client or a certification that counsel has sent a copy of the request to the client.

This latter requirement reminds me of pre-college: in which students who received sub-optimal test scores needed to get a parental signature to prove to the teacher that the parent had seen the score and reviewed the offending test.

The parties in The Trustees of the University of Pennsylvania v. Genentech, Inc., C.A. 22-145-MN-JLH demonstrated how to correct deficiencies. Earlier this month, Judge Noreika issued an oral order denying their prior ...

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Judge Hatcher's New Scheduling Order Mirrors Other Magistrate Judges' Forms

Emily DiBenedetto, May 11, 2023
Scheduling Order Discovery Dispute

francois-olwage-X_RxDiKDSuU-unsplash
Francois Olwage, Unsplash

Sir Isaac Newton once wrote to Robert Hooke (Hooke’s Law): “If I have seen further, it is by standing on the shoulders of giants.” This quote was the cornerstone on which I built my 5th grade graduation speech, because it seemed to be an eloquent way to say “don’t reinvent the wheel”.

Judge Hatcher appears to be building on the knowledge accumulated by judges occupying the bench before her. In particular, Judge Hatcher’s new form Scheduling Order for patent cases seems strongly inspired by Judge Hall’s and Judge Burke’s form orders.

Here are a few differences . . .

  • Omits the paragraph on the unavailability of the ADR Process. This indicates that the Court expects litigants to …
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Check the Docket Before Failing to Appear for a Hearing

Emily DiBenedetto, April 25, 2023
Stipulation Meet-and-Confer

Broken Communication
Reid Naaykens, Unsplash

Parties can freely stipulate to many things in the District of Delaware, and often stipulations to extend deadlines are filed close to the last minute, especially where the parties are working toward agreement but ultimately cannot agree on the final filing in time (or else are having trouble connecting with the other side).

However, stipulations filed close to the Delaware witching hour (5:00PM EST) can be fraught with risk of the Court's denial, as we’ve seen in past heart-stopping examples. We’ve warned before that requests to move Court-scheduled conferences are in the “iffy” category, and combined with last minute filing, can end in disappointment for everyone, as shown in an oral order from Judge Noreika last week in Neurocrine Biosciences, Inc. v. Lupin Limited et al., C.A. 21-1042, D.I. 197 (D. Del. Jul. 16, 2021):

On April 17, 2023, the Court instructed the parties to talk to each other about their disputes so that a follow-up call with the Court (set for April 21, 2023) would be more productive than the prior call. On April 21, 2023, a few hours before the set call, the parties submitted a stipulation requesting the April 21 call be delayed. After further inquiries, it became clear that, in the five days after the Court directed the parties to TALK, they did not do so. The Court intended to address that during the April 21 call, but no counsel appeared for the call (notwithstanding that the Court had not granted the request for a delay). THEREFORE, IT IS HEREBY ORDERED that, should the parties not inform the Court that they have resolved their dispute in full by Tuesday April 25, 2023, lead trial counsel SHALL appear in person in Courtroom 4A on April 26, 2023 at 3:00 p.m. ORDERED by Judge Maryellen Noreika on 4/21/2023.

Judge Noreika previously indicated frustration with the magnitude of this particular discovery dispute (on search methods to find responsive documents), so the parties were on thin ice long before ...

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