It's fairly common for a patentee to bring suit simultaneously against both a customer who is using or reselling an infringing product and the manufacturer who produced the product.
Sometimes the customer is the real target, and sometimes it's the manufacturer. Either way, some courts have recognized a "customer suit exception" that suggests that, under some circumstances, suits against a manufacturer should take precedence over a suit against a customer.
As courts sometimes point out, the customer suit "exception" began as an exception to the first filed rule in patent cases. But courts can also apply the principle more broadly, including to motions to stay.
For example, last week Judge Williams addressed a motion to stay …
The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."
But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.
We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …
"What do you mean, I can't talk to the defendant risk-free for an indefinite period of time prior to bringing suit?"AI-Generated, displayed with permission
Often, patentees will file suit before ever talking to the accused infringers, for a number of reasons. First, obviously, that lets them control where suit is filed. If a patentee says the wrong things to an accused infringer prior to suit, they could inadvertently create declaratory judgment jurisdiction and the accused infringer could file in their home jurisdiction. Patentees don't want that.
Filing suit before speaking also shows that the patentee means business. They aren't just going to go away, and they are willing to pay at least the cost of drafting a complaint and the filing fee.
But there are other reasons as well, and today's ruling in TTI Consumer Power Tools, Inc. v. Lowe's Home Centers LLC, C.A. No. 22-673-CFC (D. Del.) shows one of them.
There, the patentee apparently reached out to the defendant long before it intended to file suit. It's not clear exactly how long before, but it was enough time for the future-defendant to inform the plaintiff of the prior art and to file a request for an ex parte reexamination, and for the PTO to grant that request—and then for six weeks to pass after that!
So it must have been no surprise to the patentee that the Court found that all of the stay factors favored a stay, and stayed the case. The theme of the patentee's arguments against a stay were that it shouldn't be penalized for taking time to resolve the issue without litigation—but the Court disagreed ...
When the Court instituted its vacant judgeship procedures following Judge Stark's elevation to the Federal Circuit, the implementing order included procedures to keep cases moving if the parties do not consent to a magistrate judge to hear the case.
For example, the order directs parties to hold a Rule 26(f) conference within seven days of notifying the Court that the parties would not consent to a magistrate judge:
The parties shall cooperate in good faith to move the case forward. To that end, within seven days of filing the notice that the parties would not consent to a Magistrate Judge, the parties shall hold a Rule 26(f) …
Pre-institution stays can be tough to achieve, but they are sometimesgranted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPRis instituted.
An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:
ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly ...
Back in 2019, the parties in C.R. Bard, Inc. v. AngioDynamics, Inc., C.A. 15-218-JFB-SRF (D. Del.) went to trial on infringement claims for a patent involving a "means of identification" of certain medical devices.
During trial, at the close of plaintiffs' case, visiting Judge Bataillon granted an oral FRCP 50(a) motion for JMOL for the defendant (wow!), finding that the patent was ineligible as directed to an abstract idea involving labeling and printed matter.
The Federal Circuit later reversed, holding that the claims were patent eligible. Defendant then sought rehearing en banc, arguing that the panel's determination that the claims were patent eligible would cut off its ability to present other ineligibility arguments …
Delaware judges routinely refer motions to one of our four regular magistrate judges. This is no surprise in a court with such a busy docket, especially when so many of our cases are complex patent matters.
One question I'm frequently asked when a matter is referred to a magistrate judge is "how will this affect the decision time?" It's a sensible question, and one might imagine that a referral from a busy Article III judge to a magistrate judge might result in a quicker resolution. The answer, however, appears to be that magistrate judges take about the same amount of time to resolve issues as the Article III judges.
In an oral order denying a pre-institution stay last Thursday, Judge Burke took the opportunity to reiterate why these motions are generally denied:
[W]ith regard to the simplification factor, the Court (absent some unique circumstance not present here) does not see the wisdom in staying a case that is otherwise proceeding forward (with a schedule already in place), in favor of the occurrence of an event (grant of an IPR petition and subsequent institution of an IPR) that has not happened yet. The Court also notes that although, as a statistical …
In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.
Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.
Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.
After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
