A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: legal-writing

Plants
Matthew Brodeur, Unsplash

In a trade secret dispute over THC remediation processes, Judge Hall recently denied a hemp processing company's motion for a preliminary injunction. The redacted version of her opinion came out yesterday, and it gives some helpful guidance for parties litigating trade secret disputes. It also touches on an important tip for legal writers everywhere.

As usual, one of the key questions was whether the plaintiff adequately identified the trade secrets at issue. This requires a careful balancing act—the trade secret needs to be broad enough to cover what the defendant is doing, but narrow enough to qualify for trade secret protection in the first place.

In trying to walk this line, lawyers are often tempted to …

Law360 published an article yesterday by Carrie Garrison about an "exciting shift in the legal world," after Justice Thomas used the parenthetical "(cleaned up)" in a SCOTUS opinion:

Under that doctrine as it existed in 1946, a judgment is “on the merits” if the underlying decision “actually passes directly on the substance of a particular claim before the court.” Id., at 501–502 (cleaned up).

This parenthetical, as Ms. Garrison points out, was suggested in 2017 as an alternative to longer parentheticals like "(internal quotation marks omitted)" under Bluebook Rules 1.5 and 5.2.

This sounds like a great way to save some space, particularly in light of the ongoing adoption of word limits by the District of Delaware …

Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.

The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.

Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:

Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.

Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …

Just a regular microphone
Just a regular microphone Santtu Perkiö, Unsplash

In a design patent dispute between Shure and ClearOne over microphone arrays, Magistrate Judge Burke recently issued an R&R recommending denial of a preliminary injunction.

The denial itself isn't surprising—in D. Del., these motions are denied far more often than not. But the R&R sheds some helpful light on how you can make your motions stronger.

First, make sure your theme matches your facts. Although the plaintiffs claimed that the defendant's sales were "surging," Judge Burke found the opposite. The exact sales numbers are redacted, but they were enough for Judge Burke to conclude that "as of July 2020, it is Shure’s sales that were surging; ClearOne’s were not." You can't …

When one prior art reference incorporates another, parties often prefer to argue that they form a single reference under an anticipation analysis, rather than asserting them as an obviousness combination. After all, who wants to deal with motivation to combine and secondary considerations of non-obviousness if they don't have to?

But there is a risk. The primary reference truly has to incorporate—not just cite—the secondary reference, which not the most common situation. If the first reference merely cites the second, the court will likely find that they cannot be treated as a single reference.

Judge Andrews addressed that situation this week, when faced with a Daubert motion to strike an expert opinion that treated two references as one in its …

Stealth
Jaroslav Devia, Unsplash

Speaking of MILs, Chief Judge Stark recently denied two motions that were, "in reality, motions for summary judgment" masquerading as MILs. Xcoal Energy & Res. v. Bluestone Energy Sales Corp., C.A. No. 18-819-LPS (D. Del. Aug. 3, 2020).

The motions were framed as MILS to exclude evidence on the defendants' "fraud-based claims and defenses" and their claim for lost profits. But they actually sought "judgment on particular claims and defenses[,]" and they didn't even mention the Federal Rules of Evidence.

The judge denied the motions outright, explaining that:

“[M]otions in limine should not be used as disguised motions for summary judgment.” Brown v. Oakland County, 2015 WL 5317194 at *2 (E.D. …

While we're talking about reply briefs—Judge Connolly this month affirmed Judge Burke's conclusion that a defendant had "abandoned" arguments that it set forth in its opening brief, because the defendant failed to further address those arguments in a reply after receiving pushback in the answering brief.

Here is what Judge Burke said:

In its opening brief, Defendants appeared to challenge these claims on two other grounds . . . . However, after Plaintiff pushed back on these issues in its answering brief, Defendants did not further address the issues in their reply brief. . . . Thus, Defendants have abandoned these arguments and the Court will not further address them herein.

Judge Connolly disagreed that such arguments are …

As Andrew recently explained, the District of Delaware has a longstanding rule against "sandbagging," or saving arguments for a reply brief that should have been in a full and fair opening brief. But not every new argument is sandbagging.

In f'real Foods, LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC (D. Del. June 24, 2020), the defendants opposed a permanent injunction on sale of their commercial blenders by pointing out that the plaintiffs presented no evidence that their blender could meet the technical requirements demanded by one of defendants' customers (Dairy Queen).

In reply, the plaintiffs submitted new evidence and argued for the first time that their blenders could be modified to meet Dairy Queen's …

Sandbags
ideadad, Unsplash

In an R&R this week, Magistrate Judge Burke flatly declined to consider a "critical[]" argument raised for the first time in a reply brief:

In their reply brief, Defendants made one other argument, which they failed to raise in their opening brief . . . . (D.I. 37 at 9 (“Critically, neither of these manuals refer to the named defendants in this case[.]”)) Because this argument could have and should have been raised in the opening brief, it has been waived, and so the Court will not consider it here. See McKesson Automation, Inc. v. Swisslog Italia S.p.A., 840 F. Supp. 2d 801, 803 n.2 (D. Del. 2012); LG Display Co., Ltd. …