A Blog About Intellectual Property Litigation and the District of Delaware


Entries for search: Stark

Judge Williams Follows Judge Noreika on IPR Estoppel Split (Also: Interesting Prior Art Search Analysis)

Andrew E. Russell, Sept. 29, 2023

We're running out of good
We're running out of good "the court is split" images. Alice Yamamura, Unsplash

The scope of IPR estoppel is a tricky issue that courts have gone different ways on. Everyone agrees that a party cannot argue invalidity in an IPR based on a prior art product (as opposed to reference), and that IPR estoppel extends to art the petitioner "reasonably could have raised" during the IPR.

Courts have gone different ways, however, when it comes to whether a party can assert invalidity at trial based on a product that embodies a reference that was asserted or could have been asserted at an IPR. In D. Del., as we've discussed, Judge Stark held that a …

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Highlights from the United States District Court District of Delaware Annual Report 2023

Emily S. 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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Judge Williams Is Now 3 for 3 on 101 Motions

Nathan R. Hoeschen, Feb. 7, 2023
101

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
  • Judge Andrews - 60% of § 101 motions granted
  • Judge Stark - 20% of § 101 motions granted
  • Judge Noreika - 0% 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 …

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Court Gives Parties in 11 Patent Cases the Choice to Consent to Magistrate Judge Burke, or Get a Random Visiting Judge

Andrew E. Russell, Jan. 18, 2023
Visiting Judges Congestion

Roll the Dice
Leon-Pascal Janjic, Unsplash

Since 2021, Judge Connolly has occasionally issued orders asking parties to either consent to a magistrate judge or have their case re-assigned to a visiting judge. The parties in three out of five of that first round of cases consented, and we've seen several rounds of these orders since then.

The Court also offered parties a similar choice in the wake of the departure of Judge Stark, before Judge Williams was confirmed. I haven't seen hard numbers on this, but in May of last year we estimated that around 20% of those cases consented rather than waiting for the new district judge and risking re-assignment to a visiting judge.

These consent-or-visiting-judge referrals have continued through Judge …

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Another Order to Produce Litigation Funding Discovery—This Time Against What Looks Like a Practicing Entity

Andrew E. Russell, Dec. 5, 2022
Litigation Funding Discovery Dispute

Money
Pepi Stojanovski, Unsplash

Last week, Chief Magistrate Judge Thynge issued an opinion addressing a motion by accused infringers to compel the patentee to produce litigation funding discovery and opinion letters relating to the patents-in-suit.

While it involves litigation funding discovery, this case is a bit different from the recent Mavexar hearings. Here, the patentee is MHL Custom, Inc. who, it appears, is a practicing company and not an NPE. Beyond that, the case is still active (unlike some of the Mavexar cases) and the discovery is sought by the defendant, not the Court itself. In other words, this is a more typical ruling.

But the opinion is still notable. The Court granted the accused infringers' motion for three categories …

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"Pleading Generally Precedes Discovery"

Nathan R. Hoeschen, Nov. 8, 2022
Amended Complaint

Pleading is the big duck, discovery is the little ducks.
Pleading is the big duck, discovery is the little ducks. Vlad Tchompalov, Unsplash

The plaintiff always wants to leave the door open. If they uncover new claims in discovery, they want to be able to add them in all the way up to trial. Defendants, of course, want to slam the door shut and wedge a dresser in front of it.

Whence Amendment?

The usual compromise is a deadline to amend the pleadings, which is included on all of our Judges' form scheduling orders. Interestingly, none of the orders specify when this deadline should fall, and in practice it varies widely. Looking at five recent orders I happen to have on hand, two had dates between the deadline for …

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Judge Williams' New Form Scheduling Order Adopts Chief Judge Connolly's Ranking Procedures for Summary Judgment Motions—But Not for Daubert Motions

Andrew E. Russell, Oct. 26, 2022
Scheduling Orders Scheduling Order

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …
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Court Permits Reliance on Non-Prior Art Documents as Evidence of Prior Art

Andrew E. Russell, Sept. 28, 2022
FRE 803 Hearsay

AI-generated image of a defendant relying on non-prior art documents as evidence of prior art
AI-generated image of a defendant relying on non-prior art documents as evidence of prior art Andrew E. Russell, displayed with permission

Judge Stark issued an oral order yesterday addressing a motion in limine in Otsuka Pharmaceutical Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS (D. Del.).

According to the briefing, plaintiff sought to exclude two exhibits that were dated after the priority date of the patent.

The first was a 2005 "review article" published just months after the priority date. According to defendants' brief, "does not present original data" and instead "discusses the information known in the art before the priority date."

The second exhibit was published in 2021 and includes a "history of research …

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Judge Kennelly Weighs In on Whether Complaint Can Establish Notice for Willfulness

Andrew E. Russell, Sept. 21, 2022
FRCP 12(b)(6) Post-Filing Willfulness

An AI-generated (!!) scene of a split courthouse
AI-Generated, displayed with permission

We've written a lot about how there is a split in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.

Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:

A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
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Judge Andrews Puts Accused Infringer on Notice that "If It Causes a Mistrial by Poor Preparation or Poor Judgment in Questioning [Certain Witnesses], It Will, at a Minimum, Have to Pay [the Patentee's] Attorney Fees"

Andrew E. Russell, Aug. 22, 2022
Expert Witness Trial

Be Careful
Josh Frenette, Unsplash

In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).

The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.

That a Lot of Briefing

The parties then filed a stipulation setting …

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