A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: interlocutory-appeal

We wrote previously about Judge Andrews' rejection of a proposed stipulation "that dismisses three patents without prejudice so the other two can be appealed," which he said was "just allowing for what is essentially an interlocutory appeal." At that time, he asked the parties to "submit something, jointly or separately, . . . explaining why I should approve the stipulation as is, or, if the other three patents are just fluff, why the three shouldn’t be dismissed with prejudice."

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC, C.A. No. 19-2157-RGA took Judge Andrews up on his invitation: Both sides submitted letters in support of their stipulation and proposed judgment, but yesterday Judge Andrews confirmed his earlier view that the proposed judgment was an impermissible bid for an interlocutory appeal, and he declined to enter it.

Not today litigants
Not today litigants Pavel Kononenko, Unsplash

We've noted previously that it is tremendously difficult to win a motion for interlocutory appeal in Delaware (and pretty much everywhere else). So it comes as no surprise that litigants—innovators all—will occasionally come up with new ways to achieve the same result without all the difficulties attendant with actually moving. We now know that at least one of these methods does not work.

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters LLC, C.A. No. 19-2157-RGA (D. Del.) filed a joint stipulation dismissing the 5-patent case following a claim construction opinion that apparently definitively absolved the defendant of infringing 2 of the patents. Id., D.I. 163. The stipulation, however, only dismissed the claims as to those 2 patents with prejudice while specifically reserving the plaintiff's right to "reassert the [remaining] [p]atents in the future, including in the event of a reversal and remand to this Court following the expected appeal from the final judgment entered pursuant to this Joint Stipulation of Non-Infringement." Id.

Despite that fact that this was a joint stipulation ...

Attorneys deciding to move for certification of interlocutory appeal
Attorneys deciding to move for certification of interlocutory appeal Oleg Moroz, Unsplash

As we mentioned earlier this week, Judge Noreika issued another in a storied line of Memorandum Orders denying a request to certify an interlocutory appeal. The decision in Arbor Global Strategies LLC v. Xilinx, Inc., C.A. No. 19-1986-MN, D.I. 68 (D. Del. Oct. 30, 2020) was a fairly unremarkable denial, but it caused me to wonder just how rare it is to see one of these granted. So I checked.

As far back as DocketNavigator goes (which is apparently January 2008), I count 23 separate Delaware cases where a party has requested certification. Of those, only four have been granted, the most recent of …

Stop Sign
Luke van Zyl, Unsplash

Late last week, Judge Noreika denied a motion for interlocutory appeal of an denial of a motion to dismiss for lack of standing.

Security Interest Doesn't Prevent Suit After Debt Repaid

In moving to dismiss, defendant argued that the PTO assignment records show that the the patentee had assigned its patents to a lender as collateral and, after the debt was repaid, had never received an assignment back or any release of the security interest.

Plaintiff countered that the security interest was extinguished once the debt was repaid, regardless of any release or assignment specific to the patent. So no separate assignment back was needed.

Judge Noreika sided held that the judgment had been satisfied …