Judge Wolson of the Eastern District of Pennsylvania has taken a number of patent cases as a visiting judge in the District of Delaware over the past few years, including at least one that has gone to trial recently.
One aspect of practice before Judge Wolson that may be unexpected for regular Delaware practitioners is how he handles sealing of documents.
Sealing Materials Is Typically Easy in the District of Delaware (Maybe Too Easy)
Normally, in Delaware, parties are used to just filing things under seal, and then filing a redacted version seven days later. No motion to seal is generally required and, depending on the judge, there is little risk that a redacted version will …
At a hearing today, Judge Kennelly set forth his preferences on how parties files documents in CM/ECF. He explained that he deals with all filings electronically, and large exhibits as permitted by the Delaware CM/ECF system interfere with his work flow.
He threatened to deny motions going forward (at least in that case) if parties combine exhibits in that way, specifically pointing to the following docket item:
As you can see in the highlight, the party combined multiple exhibits into sub-filings, which makes it difficult and slow to download, and impossible to download individual exhibits.
Judge Kennelly prefers that parties do it this way:
Visiting Judge Wolson has expressed similar concerns for similar reasons, and his procedures go a step …
An attorney's view after many a deposition—if you're lucky enough to catch a flight back that night.Eva Darron, Unsplash
This On Friday, Judge Wolson addressed—and rejected—an effort by an ANDA defendant to limit deposition discovery on the basis that discovery is, in its view, just not that important in an ANDA action. As set they put it:
This is an ANDA case. Black letter law holds that the infringement issues in an ANDA case are controlled by the ANDA itself. . . . Months ago, Defendants produced the ANDA and ANDA product samples from which the relevant infringement analysis must be derived. Plaintiff has now noticed the deposition of both Defendants and seven individuals. But the information that …
Today, visiting Judge Wolson issued an opinion and order declining to exclude jurors without up-to-date COVID-19 vaccines. The government had requested to exclude those jurors to prevent trial disruptions due to COVID-19.
The opinion was issued in a criminal case, but the language would seem to apply to civil cases as well; the denial was based largely on the difficulty of assembling jury pool in Delaware who are current on their vaccines:
A vaccination requirement along the lines the Government proposes could hamper the Court’s ability to assemble a jury. Current statistics suggest that only 34% of Delaware residents over the age of 18 have received booster shots. 1 That includes 65% of those who are over the age of 65, many of whom are not part of the jury pool because of their age. The result of excluding from the jury pool a large number of people with a high vaccination rate will be to lower the rate of people over the age of 18 in the remaining pool. There could be additional members of the jury pool who are eligible because they received their vaccinations recently. But in any event, the numbers suggest that a vaccine requirement along the lines the Government proposes would exclude nearly 2/3 of potential jurors from the jury pool.
The Court also noted that jury service is an important right ...
Judge Wolson is a visiting judge with a number of patent cases here in Delaware. His procedures tend to differ a fair bit from Delaware judges in some areas (particularly those involving redactions sealing).
In February, he implemented an interesting new procedure for summary judgment motions. His new procedure requires parties to serve—but not file—their statement of fact in support of the motion 28 days in advance, so that the opposing party can respond on a fact-by-fact basis. The party serving the motion can then respond to that response. The resulting combined statement of facts is then filed with the brief.
This process is intended to result in a single statement of facts that includes the parties' opening, answering, and reply positions as to each fact, in that order and in one document for easy readability:
The result of this process will be a single, consolidated statement of facts that permits Judge Wolson to see each party’s position on each factual assertion in one place. For example, ...
The ITC is just, constantly issuing opinions. It's always "import this" and "don't export that." Frankly, I don't have the time for it.
That sands through the hourglass, so are the [copyrighted material redacted]Nathan Dumlao, Unsplash
On this historic day, however, Judge Wolson struck back against the relentless tide of ITC opinions. An act for which we at IP/DE will forever be grateful.
The issue came up in the context of a summary judgment opinion in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW-MPT (D. Del. Jan 4, 2024) (Mem). The plaintiff there had previously prevailed at the ITC on one of the patents, and the ITC had issued (sigh) an exclusion order.
The plaintiff then moved for summary judgment of infringement, citing in support only the ITC's written decision. Judge Wolson, denied the motion:
The ITC’s decision is not factual evidence. It is, instead, a decision that weighs evidence and applies the law. Wirtgen’s reliance on the ITC decision as the sole evidence to support its argument means that I could deny the motion just for a failure of proof. But there are other problems as well.
Even if I treated the ITC’s decision as evidence, it would not suffice to carry Wirtgen’s burden. The decision is not binding on me. And the decision came in a different procedural posture. The ITC weighed the parties’ evidence and reached a conclusion, much like I would do after a bench trial. But, at this stage of the proceedings, I can’t weigh the evidence. Instead, I have to credit any contrary evidence that Caterpillar offers, and it has offered evidence . . .
Wirtgen, C.A. No. 17-770-JDW-MPT, at 10.
Let this serve as a reminder that we all have to keep fighting the good fight.
(Eds. Note - the ITC is actually pretty cool by the standards of IP courts and practitioners)
All of the sitting judges in the District of Delaware require, in their form scheduling orders, that each party (or each side) may file no more than three motions in limine.
But winning a MIL can really change the scope of trial by precluding key evidence or arguments. In complex patent cases, parties very often want more (sometimes many more) than three MILs to shape the trial in their favor.
One common attempted solution is to merge multiple MILs together. Instead of "exclude late-disclosed doctrine of equivalents theory" and "exclude a late-disclosed exhibit related to copying," a defendant might file a MIL entitled "exclude untimely theories and evidence" that relates to both of those things, …
Ouch. This week in MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 30, 2023), Judge Wolson addressed a motion in limine to exclude testimony from both of the accused infringer's witnesses on their prior use defense.
The accused infringer didn't offer expert testimony at all on invalidity, according to the briefing. D.I. 399 at 3. Instead, it asserted a prior use defense in its contentions, presumably intending get it in through fact witness testimony.
The patentee first moved in limine to preclude the defense due to a lack of expert testimony. But the Court held that a party can present an invalidity defense without it—and compared the motion to an improper SJ motion:
The first part of AB’s Motion In Limine #1 is a summary judgment motion in disguise. MED-EL asserts invalidity in this case. If AB had a basis to argue that the absence of expert testimony dooms that claim, then it should have moved for summary judgment on the issue. It didn’t, and it can’t use an in limine motion to dispose of MED-EL’s claim. If AB believes that the lack of expert testimony means that MED-EL cannot meet its burden, then AB can seek relief under Rule 50 at the close of MED-EL’s case at trial.
(We've talked before about the risks of bringing what should be an SJ motion as a MIL.)
In other words, offering no expert testimony could be OK. The accused infringer, however, also failed to ...
I've read it four times now, and I'm pretty sure the title of this post is correct. But for those who want to follow the byzantine history of the recently (and one must imagine finally) denied motion for reconsideration in PACT XPP Schweiz AG v. Intel Corporation, C.A. No. 19-1006-JDW (D. Del. June 9, 2023), the current state of play is:
March 24 - the Court Grants summary judgment of noninfringement of one of the patents in suit
March 29 - the plaintiff moves for reconsideration
April 17 - The Court denies the motion for reconsideration
May 10 - as part of a larger brief, Plaintiff requests leave to file a second motion for reconsideration
Typical post-trial pile of unread e-mailAndrew E. Russell, CC BY 2.0
We’re back! Our firm survived five trials over the course of three and a half weeks, including one week where we had a separate trial in front of each of the three sitting Article III judges in Delaware, simultaneously! We’ve also learned quite a lot about trial in front of visiting Judge Wolson.
There really was no time for blogging these last few weeks. As most of our readers know, going to trial in even just one case can keep you busy—especially if you’re acting as good Delaware counsel should, doing things like helping on the merits and strategy (or even taking witnesses), drafting motions and bench …
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![That sands through the hourglass, so are the [copyrighted material redacted]](https://bd6f.s3.amazonaws.com/media/images/nathan-dumlao-5Hl5reICevY-unsplash.max-640x360.webp)
