Visiting Judge McCalla has taken about 13 patent cases so far here in Delaware, including some additional assignments late last month. A reader who has a case before him flagged an interesting point: Judge McCalla brings some of his home-state rules with him.
In his orders on hearings and scheduling conferences, for example, he directs the parties to either the Northern District of California local patent rules or the District of Tennessee local patent rules:
1. A video motion conference re: Motion to Dismiss (ECF No. 11) will be held . . .
2. The parties should refer to the Northern District of California or the Western District of Tennessee Patent Rules.
See, e.g., New York University v. Resmed, Inc., C.A. No. 21-813-JPM (D. Del. Mar. 28, 2022).
Likewise, scheduling orders in his cases may look a bit alien to regular Delaware practitioners, as he uses the District of Tennessee form. That form results in a two-page scheduling order like the attached, which focuses primarily on a few of the initial dates and guidelines, rather than ...
Claim narrowing is such a common issue in Delaware that this blog has at least 431 entries with the tag.
(Eds. Note—I did not actually count, but you can click on the tag on the side and scroll down to prove me wrong).
I told it to draw a nerd, but it actually kind of looks like me...must be something wrong with the algorithm.AI-Generated, displayed with permission
Ironically this rich well of precedent can make it kind of hard to brief a dispute on claim narrowing. A dozen cases can be cited for any proposition you might want, which can make it hard to argue for one outcome over another -- especially to a judge that has seen similar disputes so many times before.
Judge McCalla's opinion last week in Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158-JPM (D. Del. Mar. 20, 2025), was thus a breath of fresh air as he writes unencumbered by a wealth of his own words on the issue.
In the opinion (which cites to a truly remarkable number of prior Delaware orders on the issue), he dealt with 3 relatively common questions in the district.
First, the parties disputed whether the plaintiff should narrow from 31 asserted claims down to 18 or 15 (I'll let you guess who was proposing which). Judge McCalla went with 18, citing Judge Fallon's Order in Twinstrand Bioscis., Inc. v. Guardant Health, C.A. No. 21-1126-GBW-SRF (D. Del. Oct. 18, 2022), which stated that “a reduction to approximately 20 claims by the deadline for service of final infringement contentions” is “consistent with other case narrowing order[s] from [the District of Delaware].”
Unlike motions for reconsideration (or reargument, as we call them in Delaware), the local rules do not provide any particular guidance on what such a motion should like like, or the standard that needs to be met. I've often seen them criticized as essentially stealth motions for reconsideration designed to circumvent the rigid requirements of such a motion.
I've never done a full analysis of the likelihood of such a motion being granted (hope for a slow news day next week) but my guess is that most of them go down like last week's ruling in Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-258-JPM, D.I. 222 (D. Del. Jan 17, 2025).
In that case, the parties (weirdly) filed competing motions to extend the fact discovery deadline on the same day, presenting slightly different proposed schedules that allowed additional time for the completion of depositions and whatnot. Visiting Judge McCalla resolved the motions and adjusted the schedule in a brief oral order consisting only of the relevant dates:
ORDER SETTING DISCOVERY SCHEDULE: Fact Discovery Deadline due February 27, 2025; Initial Expert Witness Disclosures Due April 3, 2025 . . . .
After the Court extended the schedule, however, the Defendant issued several new subpoenas to third parties. Plaintiff then moved for an order clarifying that the extension only allowed for the completion of existing discovery, and not for the service of new requests. The main argument was that both parties' motions had focused on the time necessary to complete the existing discovery, rather than the need for additional requests.
Judge McCalla denied the motion, finding no ambiguity requiring clarification in the prior order amending the schedule:
In its Order Setting Discovery Schedule, the Court extended the fact discovery deadline to February 27, 2025. Plaintiff argues neither party requested an extension for the purpose of serving additional fact discovery. However, the Court used its “broad discretion” to grant the Parties’ requests so that the Parties could complete discovery as a whole. A fact discovery deadline is just that: a deadline to complete all discovery promulgated by the Parties.
To the extent the Order Setting Discovery Deadline is “ambiguous or vague” the Court makes clear: the Order Setting Discovery Schedule only established a deadline of completion and did not set out a cap on that discovery
Id. at 3-4 (internal citations omitted).
The order is additionally interesting for having one of the few recitations for the standard in moving to clarify.
The privileges of working in the gig economy are too numerous to recount here. There's the freedom to set your own hours, the joy of being constantly rated on how cheerful (yet obsequious) you appear, and avoiding all of the complicated headaches that go with having health insurance and a retirement plan.
Hold it together Hoeschen, if you cry on the job again its back in the chokeyAI-Generated, displayed with permission
Well I have even more good news for you! Judge McCalla held just last week that at least some of you also enjoy the attorney-client privilege.
The defendant in Torvent LLC v. Techtronic Industries Co., Ltd. C.A. No. 21-853-JPM, D.I. 208 (D. Del. Jan. 11, 2024) was a startup with only a token staff of actual employees. In lieu of a permanent staff, they retained a large number of contractors for "various accounting and secretarial functions" and "consultants relat[ing] to licensing and damages issues." Id. at 6.
The dispute here arose because the defendant claimed privilege over a few thousand communications with these contractors. The plaintiff argued that these communications were not privileged because these were with third parties, rather than employees. The parties agreed that many of these contractors were functionally identical to employees. They disputed whether communications with these "functional equivalents" are entitled to the same privilege protections as actual employees.
Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.
With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.
But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.
The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.
Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.
Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the ...
Today Judge Andrews reassigned a case to what appears to be a new visiting judge for the District of Delaware, Senior DistrictJudge JonPhipps McCalla of the Western District of Tennessee:
Case Reassigned to Judge Jon P McCalla of the United States District Court for the Western District of Tennessee. Please include the initials of the Judge (JPM) after the case number on all documents filed. (rjb) (Entered: 01/03/2022)
Emerson Process Management Regulator Technologies, Inc. v. Pietro Fiorentini (USA), Inc., C.A. No. 21-1488-JPM (D. Del.).
To my knowledge, this is the first referral of a Distrct of Delaware patent case to Judge McCalla, and he is not yet on the …
Motions for summary judgment that a particular patent is "not invalid" (why can't we just say valid? I think the patents would like that better) are generally pretty winnable.
Why do they have to say it like that doc? Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me!AI-Generated, displayed with permission
A brief survey of the last 10 such decisions found that fully half were granted. Most of those decisions, however, dealt with 112 or 101 issues. If you're moving on your more classic obviousness and anticipation issues, however, you've got a pretty rocky row to hoe. A look back at those opinions finds that only 30% of the last 10 were granted, at least one of which appeared to deal with a defense that was largely abandoned.
Today's opinion in Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 (D. Del. May 2, 2024), is a good example of a situation where such a motion is worth shooting for (and possible ordering higher in your list). The plaintiff, Qorvo (pronounced just like it looks), complained that the defendant's obviousness expert had failed to present any testimony on the motivation to combine. Defendant countered that their expert had done the appropriate analysis, but had simply failed to use various "buzz words" from Graham, KSR, and the like.
Last week, while I was wrapping presents with all the care and skill of a subway sandwich artisan, Judge McCalla weighed in on the issue of whether a complaint can establish knowledge for the purpose of willfulness, dealing with a novel argument in the process.
To begin, he sided with Chief Judge Connolly and Judge Williams, holding that the complaint cannot establish knowledge for the purpose of a claim of willful infringement:
In other words, post-suit knowledge alone is insufficient to sustain a claim for willfulness even at the motion to dismiss stage
Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158, D.I. 50 at 6 (D. Del. Dec. 8, 2023).
Photograph of a damages expert report involving the Georgia-Pacific factors, the Panduit test, apportionment, convoyed sales, non-infringing alternatives, marking . . .Luca J, Unsplash
It seems like people arealwaysmessingup with patent damages experts. There are just a lot of ways to get tripped up on damages, and—obviously—big incentives to take risks to drive damages numbers up or down.
We had another example of that on Monday, when visiting Judge McCalla granted a Daubert motion and excluded testimony from an expert who applied a later date for the start of infringing sales for the royalty calculation, and an earlier date for the hypothetical negotiation. The expert apparently used a December 2014 date for his royalty calculation:
Wonderland argues that neither Evenflo nor Mr. Peterson presented evidence of any manufacture or testing that occurred at the dates that Mr. Peterson suggested. . . . Wonderland supports its assertion by pointing to sections of Mr. Peterson’s report and deposition in which Mr. Peterson . . . uses December 2014 and not an earlier date as the starting point for calculating royalty damages based on his hypothetical rate. . . .
But the expert used an earlier date for the reasonably royalty calculation, arguing that the earlier date is when the infringement actually began:
When using a hypothetical negotiation to assess damages, “the date of the hypothetical negotiation is the date that the infringement began.” . . . Mr. Peterson asserts that a date falling between December 2013 and April 2, 2014 “more naturally aligns with the actual date of first infringement.” . . .
But the Court found that the party had failed to put forth evidence of the earlier date, and ...
On one level, it seems kind of silly to devote this much attention to the question of whether the people on your team can browse their phones during a hearing. But on another level, it's important and impactful—particularly for trials, it's essential that the team members who are actually doing the work can communicate, pull up exhibits, take notes, and so on. …
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