A Blog About Intellectual Property Litigation and the District of Delaware


Entries for author: EDiBenedetto

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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A Mavexar Refresher

Emily DiBenedetto, April 7, 2023
Mavexar Litigation Funding

Litigation funding has become a popular topic this year, deserving of its own synopsis. For those who missed out on the recent blow-by-blow events as they happened, relive the saga below.

This is a bit lengthy. You've been warned. Pour yourself a cup of tea first and get comfortable.

Story Plot Points
Emily DiBenedetto

The Exposition: Discovery on Litigation Funding is a Mixed Bag

To set the stage, let's discuss litigation funding disputes in the District of Delaware before the most recent developments. Over the past few years, discovery disputes regarding litigation funding issues have produced mixed results. The Court sometimes grants motions to compel litigation funding materials, and other times denies them, and may (rarely) conduct an in camera review to evaluate …

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Bifurcation Patterns

Emily DiBenedetto, March 27, 2023
Damages Trial

Density Column
AI-Generated, displayed with permission

Earlier this month, Judge Williams denied a defendant’s motion to bifurcate a second patent trial in Cirba, Inc. et al v. VMware, Inc., C.A. 19-742, D.I. 1623 (D. Del. Mar. 7, 2023) (oral order). In that case, the patentee had won an initial victory at trial, but the Court later granted a motion for a new trial based on evidentiary issues.

The defendant moved to stay the second trial because nearly all of the patents at issue had been found invalid—or were in danger of being found invalid—during a pending re-exam proceeding. The parties finished briefing, but the Court has not yet ruled or heard oral argument on the motion to stay. …

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Chief Judge Connolly Borrows from Patent Law to Permit Consideration of Non-Infringing Alternatives in Copyright Case

Emily DiBenedetto, Feb. 13, 2023
Patent Non-Infringing Alternatives

AI-generated
AI-Generated

Our recent post on copyright claims concerning AI-generated images reminded me of another interesting copyright opinion from last month. In it, Judge Connolly applied a patent law damages principle to a copyright infringement case involving a computer program.

In patent cases, defendants may use evidence of non-infringing alternatives to attempt to reduce the damages calculation if their product is shown to infringe a valid patent. For example, plaintiffs may argue that they are due lost profit damages under the Panduit factors:

  1. Demand for the patented product,
  2. Absence of acceptable non-infringing substitutes,
  3. The plaintiff possesses manufacturing and marketing capability to exploit the demand, and
  4. The amount of profit plaintiff would have made.

Therefore, a defendant can lower a plaintiff’s …

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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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Damages Computations and Contentions Must be Specific, Even Before Expert Opinions

Emily DiBenedetto, Aug. 23, 2022
Damages Initial Disclosures

Damages
Mick Haupt, Unsplash

If the other side is giving you spotty details on damages during Rule 26 initial disclosures, we may have a case for you. Judge Williams hasn’t issued opinions from the bench yet, but this Special Master opinion from last year challenges the “we’ll wait for expert reports” excuse with respect to damages contentions.

In TQ Delta, LLC v. DISH Network Corp., C.A. 15-614-RGA (D. Del. Oct. 2021), defendants sought to compel plaintiff to supplement its initial disclosures and contentions on damages, and Judge Williams granted the motion.

Rule 26(a)(1)(A)(iii) Computation of Damages

Rule 26(a)(1)(A)(iii), requires “a computation of each category of damages claimed by the disclosing party . . . .” Plaintiff said …

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Happy World IP Day!

Emily DiBenedetto, April 26, 2022

No really. It’s a real holiday.

While most of us may not be celebrating with cake or a gift exchange of valuable patents, copyrights, and trademarks, this is a great opportunity to reflect on the important field to which this blog is dedicated. This year’s theme was “IP and Youth: Innovating for a Better Future”. Various IP organizations including WIPO, USPTO, ChIPs, LES, and many others hosted webinar panels, shared articles, and sponsored student competitions to highlight the importance of young innovators.

This theme was a great excuse to check the record-books: did you know that Benjamin Franklin invented flippers at the age of 11? More recently, Sydney Dittman is credited with being possibly the …

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