A Blog About Intellectual Property Litigation and the District of Delaware

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We wrote last month about the "mansplaining brief," which caught some eyes around town when it (and the declaration attached to it) accused the Court of "gender harassment and discrimination."

We set out the full background in our post, but generally the Court ordered the sole member of a Mavexar-related LLC to attend a hearing here in Delaware.

She then filed a motion for reconsideration offering numerous objections, including among other things that (1) the Court had no power under FRCP 45 to compel her attendance, since she lives in Texas; and (2) that she is a working mother and therefore unable to travel to Delaware.

(She also said that she "feels harassed" by the requirement to travel to Delaware, and argued that the Court influenced her employer to engage in "gender harassment and discrimination (e.g., in the form of 'mansplaining')"—hence, the "mansplaining brief").

Chief Judge Connolly issued a detailed opinion today addressing her objections and explaining the denial of her motion. Here are some highlights.

The Court Can Absolutely Compel a Witness to Attend, Regardless of FRCP 45's 100-Mile Limitation

As most attorneys know, you generally can't issue a subpoena under Rule 45 to compel attendance of a witness who lives more than 100 miles away, or within the state if they are a party or its officer, or would not incur substantial expense.

But the Court absolutely can compel such a person's attendance under some circumstances, outside of an FRCP 45 subpoena, under its inherent powers. As the Court explained today:

I did not rely on Rule 45-or any other Federal Rule of Civil Procedure-when I ordered [the witness] to attend the July 20 hearing in person. Instead, . . . I relied on the Court's inherent powers. . . . . These inherent powers extend to nonparties.

Backertop Licensing LLC v. Canary Connect, Inc., C.A. No. 22-572-CFC, D.I. 49 at 3 (D. Del. July 10, 2023).

The Court specifically rejected the idea that FRCP 45's geographic limitations bind the Court itself:

Rule 45 has no bearing on the circumstances at hand. Backertop argues that Rule 45(c) requires a court to issue a subpoena in order to compel a person's attendance at a hearing. . . . But nothing in Rule 45(c) or any other part of Rule 45 requires a district judge to issue a subpoena to compel a person's attendance in court. And, more to the point here: Nothing in Rule 45 prohibits a district judge from issuing an order to compel a person's attendance in court.
Rule 45(c) merely prescribes geographic limits on subpoenas issued pursuant to Rule 45(a). . . . Rule 45 does not limit in any way the inherent power of a district judge to issue sua sponte an order compelling the attendance of a witness at a hearing; it limits only the power of a court to enforce a subpoena that was issued either by the clerk of the court at the request of a party or by an attorney authorized to practice in that court.

Id. at 5-6.

The Court noted how absurd it would be if FRCP 45 actually limited its inherent ability to compel witnesses to appear:

A corporate party can act only through natural persons. But under Backertop's theory, if no representative of a corporate party lives, works, or conducts in-person business in the state where the court is located, then the judge has no power to call into court a natural person to speak for that party on any topic, including alleged litigation misconduct by the corporate party.
The facts of these cases illustrate the absurdity of Backertop' s position. According to [the LLC owner], Backertop has no employees, no bank accounts, and no assets other than the patents asserted in these cases. . . . [She] also says that she is Backertop's sole owner and managing member. . . . Last year, Backertop filed at least 12 patent infringement cases in United States District Courts. [U]nder Backertop' s theory, [the LLC owner] can never be compelled to attend a hearing in these district courts even though she is the only natural person through whom Backertop can act.

Id. at 7-8.

The opinion is extremely clear that the Court can order a distant party to attend, even if an attorney cannot do so via a subpoena.

That's definitely an important distinction, and one that I think is often omitted in practice, including sometimes by other courts. See, e.g., BP Am. Prod. Co. v. Nat’l Oilwell Varco, L.P., C.A. No. 09-6218, 2010 U.S. Dist. LEXIS 159818, at *7 (E.D. La. Apr. 1, 2010) (“[M]any potential nonparty witnesses appear to reside in Texas, more than 100 miles away . . . Thus, this Court would be powerless to compel their appearance at trial.”) (emphasis added).

Traveling to Delaware is Nothing Compared to Filing 97 Patent Cases

As to the financial hardship of attending the hearing, the Court went so far as to research the actual cost of two same-day flights and Uber ride, finding that "the total cost [for the LLC owner] to travel to the July 20 hearing looks to be in the neighborhood of $300." Id. at 13.

The Court court also researched just how busy this particular LLC owner has been, finding evidence of her involvement with LLCs filing at least 97 patent suits:

[The LLC owner] has not demonstrated that costs of this amount would impose a substantial financial burden on her or Backertop. Record evidence and public filings indicate that it would not. [A]s detailed in the Appendix attached hereto and based on public records filed with the United States Patent & Trademark Office (PTO), the State of Texas, and the federal courts' filing system (CM/ECF), it appears that [she] has also profited financially from her role as the managing member of at least six other LLCs, at least three of which appear, like Backertop, to be linked to IP Edge and Mavexar. . . . Five of those LLCs filed at least 97 patent infringement cases in at least 13 different United States District Courts from 2016 through 2021. The administrative fees alone paid by the LLCs to file those cases-more than $38,000[]—vastly exceed what it would cost for [her] to travel to Delaware on July 20.

Id. at 13-14.

We All Sacrifice

The Court was likewise unpersuaded by the LLC owner's pleas of inconvenience:

While I am sympathetic to the childcare burdens that business- and court-related travel can impose on working parents, [the LLC owner] should have given due consideration to those matters before she agreed to serve as the sole natural person affiliated with Backertop and before Backertop filed the dozen patent infringement suits it did last year in district courts across the country, including four suits in Delaware.

Id. at 11-12. The Court noted that jurors have it far worse—including the jurors that would have to decide Backertop's own case:

Finally, in considering Backertop' s arguments concerning the childcare and financial burdens [the LLC owner] says she will suffer if compelled to attend the July 20 hearing in person, I am struck by the fact that Backertop has demanded jury trials in these actions. . . . Almost every week in this Courthouse we require ordinary citizens to make alternative childcare arrangements, put aside their family and job obligations, and forgo their daily wages to serve as jurors for the paltry sum of $50 per day (i.e., less than $10 per hour). . . . We do so because litigants in this Court have a constitutional right to a jury trial-a central tenet of our judicial system. Backertop' s business model is to file or threaten to file suits in that judicial system. I think it neither unfair nor unduly burdensome to require the sole natural person affiliated with Backertop to incur $300 in travel costs and make alternative childcare arrangements for a single day to attend a court hearing in cases Backertop initiated in this Court.

Id. at 14-15.

On a personal note—the LLC owner asked to be excused because she is a working mother of two young children, ages 3 and 7, and her husband also works. But she is a paralegal, and he is an attorney, and I have to think they know the risks of running six LLCs and bringing 97+ patent cases.

I have some experience in this. My wife and I are both attorneys here in Wilmington, and we have five kids ages 8 and under. I've litigated cases across the country, as has she (not to mention that we both go to far-away legal conferences). Travel is part of the legal profession, and you make it work.

So I have to agree with the Court here: the fact that the LLC owner is a paralegal who has two young children should not prevent her from taking a single day of travel to a jurisdiction where she chose to have her LLC bring four patent cases.

A Blog Programming Note

You may notice that our posts are a bit more rushed and intermittent than usual for the next couple of weeks. My co-blogger Nate is in trial this week, and I'm gearing up for a trial starting in less than two weeks. We're going to try to stick it out for a bit, but we may have to hang up the gone fishin' sign soon!

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