A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Stay

Trash Cans
Lucas Beck, Unsplash

The defendants in Corteva Agriscience LLC v. Monsanto Company, C.A. No. 22-1046-GBW (D. Del. Apr. 27, 2023) moved to stay after a third party initiated an ex parte reexamination of the patents-in-suit.

To meet the "simplification" factor in moving to stay, defendants offered to drop their obviousness-type double patenting defense:

The first factor—whether granting the stay will simplify the issues for trial—disfavors a stay. Defendants assert a stay would simplify the case. First, Bayer claims it will agree to not argue that the '555 Patent is invalid for obvious-type double patenting ("OTDP") on the basis of U.S. Patent No. 11,149,283 ("the '238 patent" ) and that dropping this argument will simplify the issues for trial. D.I. 41 at 9.

The Court quickly dispatched with that idea, noting that it was essentially a throw-away argument:

However, Defendants recognize that Corteva can overcome the OTDP argument if Corteva files a terminal disclaimer. 3 Id. at 9-10. Because it is likely that this OTDP argument will not make it to trial anyway, the Court does not find that Bayer's offer to drop the argument will simplify the case.

The Court found that the factors did not favor a stay, especially considering the plaintiff had added two additional patents in the time since defendants filed their motion, and those two patents are not subject to re-examination. Beyond that, a stay would likely preclude injunctive relief (due to a patent expiration).

All told, it's not clear how they could have prevailed on this motion at all after the plaintiff asserted the two additional patents.

As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.

You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket
You see, it's in the temperature of the cure—too long, and you've lost yourself a brisket AI-Generated, displayed with permission

I don't want to be that man.

But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.

[Insert seamless transition to legal analysis here, then remember to delete this before posting]

This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.

The plaintiff then moved for a 5 week extension of its deadline to respond, ...

Ant Rozetsky, Unsplash

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 …

Believe it or not, of 6 attempts this was the least horrific AI result
AI-Generated, displayed with permission, displayed with permission

A while back we did a post speculating that requesting argument on a motion moderately increased the chances of the Court actually holding argument on an issue.

We also speculated about several other effects of requesting argument, but I'll save those for another slow news day. I apologize for nothing.

Stone Cold Facts

To test out this theory, I picked a motion that I pegged at about a 50/50 chance of having an argument -- a motion to stay. Taking all of the decisions deciding such motions since the first of the year (and removing some in odd procedural circumstances as well as filtering out identical motions in related cases to clean up …

I really hope this case lasts long enough for us to go through all the titles.  I think We have a good shot at
I really hope this case lasts long enough for us to go through all the titles. I think We have a good shot at "Nemesis," but probably won't make it to "the Search for Spock" NASA, Unsplash

More than a year ago, we chronicled the rare tale of a stay that lasted all the way through an appeal to the Supreme Court. Thinking a stay could not possibly last any longer that that, we titled that post "The Final Frontier for Stays."

It turns out that we were right!

But only barely!

The Original Series

When last we saw our embattled litigants in Hologic, Inc. et al. v. Minerva Surgical, Inc., C.A. No. 20-295-SRF, the Federal …

IP Edge? Is that you?
IP Edge? Is that you? Ahmed Zayan, Unsplash

We've talked a lot about Judge Connolly's April 2022 standing orders on disclosure statements and litigation funding, including earlier this month when we Judge Connolly stayed an action after a plaintiff failed to fully comply with those orders.

(Plaintiff in that action, by the way, filed an updated disclosure statement claiming it has no knowledge to disclose—we'll have to see how the Court responds to that).

Yesterday, it happened again, but it was triggered by a clever filing by a defendant. In Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), the Court put an order on the docket for the parties to comply with its standing orders:

ORAL ORDER: The parties are directed to certify within five days that they have complied with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1. The parties are also reminded of their obligation to comply with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Third-Party Funding Arrangements. Ordered by Judge Colm F. Connolly on 5/13/2022. (nmf) (Entered: 05/13/2022)

In response, plaintiff filed an updated Rule 7.1 statement but, as far as I can tell, no litigation funding

Defendants lining up to file their motions to stay
Defendants lining up to file their motions to stay Rob Curran, Unsplash

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) …

Hatchet on Log
Andrew E. Russell, CC BY 2.0

We posted earlier this year about Judge Connolly's new standing orders requiring plaintiffs to disclose litigation funding and Rule 7.1 disclosure requirements for certain entities such as LLCs.

In that post, we pointed out that "the language seems to apply to existing cases, but there is no explicit deadline for compliance. Personally, though, I'd probably get moving..."

Apparently, counsel for the parties in VLSI Technology LLC v. Intel Corporation, C.A. No. 18-966 (D. Del.) do not read the blog.

About two weeks ago, the Court issued oral orders in VLSI directing the parties to comply with his standing orders:

ORAL ORDER: It is HEREBY ORDERED that each party shall …

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity …

Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. 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 IPR is 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 ...