A Blog About Intellectual Property Litigation and the District of Delaware


Entries for author: EDiBenedetto

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

Emily S. 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 S. 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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Refusal to Narrow the Number of Asserted Claims Results in Reduced Relief in Narrowing Invalidity Contentions

Emily S. DiBenedetto, April 25, 2022
Claim Narrowing Contentions

Upturned Nose
Zayn Shah, Unsplash

As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.

However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.

Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.

The Court found that the Initial Invalidity Contentions were sufficient in most respects:

In general, they provide real detail, including significant specificity as to ...
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Here Is the New Nominee for the District of Delaware: Gregory B. Williams

Emily S. DiBenedetto, April 18, 2022
Congestion Vacant Judgship

Into Focus

Change is afoot in the District of Delaware! Last week, President Biden nominated Gregory B. Williams, a partner in Fox Rothschild LLP’s Wilmington office, to fill Judge Stark’s vacancy in the District of Delaware. (See Judge Stark’s confirmation history here.)

About the Nominee

The White House provided a helpful and succinct summary of Mr. Williams' qualifications: “Gregory B. Williams is a partner in the Wilmington, DE office of Fox Rothschild LLP. He joined the firm in 1995 as an associate and was elevated to partner in 2003. He has served as special master in complex civil cases for the District of Delaware since 2020. From 1986 to 1992, Mr. Williams served in the U.S. Army Reserve. He received his …

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Likelihood of Stay Pending IPR in W.D. Texas vs. Delaware

Emily S. DiBenedetto, Feb. 23, 2022
IPR Stay

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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March Jury Trial Update

Emily S. DiBenedetto, Feb. 21, 2022

marcin-skalij-lfCm8yyTGIo-unsplash
Marcin Skalij, Unsplash

This month, COVID has not directly caused jury trial delays for the District of Delaware, though we don't know of any jury trials that went forward in February.

In the next few months, the Court has a busy docket, filled with patent cases and sprinkled with cases before visiting judges. In particular, Judge L. Felipe Restrepo, sitting by designation from the 3rd Circuit Court of Appeals, is scheduled to handle three out of the sixteen upcoming cases. Judge Stark is also scheduled to handle two upcoming jury trials, though this appears likely to change given his confirmation to the Federal Circuit.

February Jury Trials Off the Calendar

None of the expected February jury trials went forward, though no delay or cancellation was due to COVID.

  • 2/7/2022: Skeans v. Key Commercial Finance LLC, C.A. 18-1516-CFC-SRF (D. Del.): In this fraud/estate case, Plaintiff requested that the in-person pretrial conference be adapted into a virtual one after Plaintiff’s residential community went into a COVID lockdown, preventing his physical attendance. (D.I. 117). Thereafter, the trial was postponed due to "a change in the Court's trial calendar," with the parties' consent.
  • 2/14/2022: Chugai Pharmaceutical Co., Ltd. v. Alexion Pharmaceuticals, Inc., C.A. 18-1802-MN (D. Del.): The parties stayed this five-day patent trial at the last moment, according to the docket. The Court previously rescheduled it from January due to COVID concerns for witnesses and attorneys traveling from outside the U.S. (D.I. 399).
  • 2/22/2022: Deshields v. JR Rents Inc., C.A. 20-1626-MN-SRF (D. Del.): Stipulated ...
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February Jury Trial Update

Emily S. DiBenedetto, Jan. 26, 2022
Congestion COVID-19

Masks
Isaac Quesada, Unsplash

February Jury Trials

After completing all planned December jury trials uninterrupted by COVID-19, the January docket became lighter after the Court continued several trial dates to later this year due to COVID-19 concerns. One of these continued trials, a patent case, was rescheduled to February; the Court also has three other jury trials on the calendar for next month.

In December, the Court reauthorized the use of video and telephone conferencing pursuant to the CARES Act. Relatedly, Governor Carney reinstituted a mask mandate, requiring individuals in Delaware to wear masks while in public spaces, with select exceptions.

Review of December Jury Trials

In our November update, we identified five upcoming December jury trials. Three proceeded as …

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The Scope of "Substantially Similar" Product Accusations

Emily S. DiBenedetto, Dec. 14, 2021
Accused Products Contentions

Shades of Coffee

Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?

Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):

(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.

In an order last week, Judge Fallon denied ...

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A Global FRAND Case Hits Delaware

Emily S. DiBenedetto, Nov. 21, 2021

Many Flags
Many Flags Nick Fewings, Unsplash

The Backstory

A chase for SEP licenses travels around the world and finally lands in Delaware.

We discussed this Continental v. Nokia opinion last week, but we thought it was worth another comment, because this is a fascinating case at the epicenter of a global FRAND battle. Even more interesting: this opinion illustrates a widening divide between American, UK, and Chinese courts in their comfort level with setting global FRAND rates.

A FRAND Dispute of the Hold-Up Variety

At its core, this is a dispute between German and Finnish companies, via and including their American subsidiaries. Continental asked a U.S. court to determine a fair licensing payment for their use of Nokia’s patented 2G, …

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November Jury Trials

Emily S. DiBenedetto, Oct. 22, 2021
COVID-19 Trial Calendar

This year's November begins on a Monday.
Theodorus van Hoytema

Remaining October Jury Trials

  • 10/25/2021: Boston Scientific Corp. v. Nevro Corp., C.A. 18-644-CFC-CJB (D. Del.): This patent jury trial is calendared to start on October 25 before Judge Connolly.
  • 10/25/2021: CareDx, Inc. v. Natera, Inc., C.A. 19-662-CFC-CJB (D. Del.): The parties in this trademark case will begin jury trial before Judge Connolly on October 25.

Upcoming November Jury Trials

One patent case has a long-standing trial date that appears intact, but another patent case appears close to settling.

  • 11/01/2021: Novel Drug solutions, LLC v. Harrow Health, Inc., C.A. 18-539-MN (D. Del.): Defendant proposed rescheduling the pretrial conference for an earlier date, to which the Plaintiff agreed (D.I. 368), but Judge Noreika declined the rescheduling. D.I. 369. This contract case is set to proceed for five days on November 1.
  • 11/01/2021: Shure Incorporated v. Clearone, Inc., C.A. 19-1343-RGA-CJB (D. Del.): Judge Andrews has resolved multiple merits issues (D.I. 571; D.I. 619; D.I. 621) after adopting the Magistrate Judge’s recommendations to deny most of the parties' dispositive motions. The case still appears on track to proceed to trial. ...
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