A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Stay

Chief Judge Connolly Stays Another Action Pending Threshold Discovery on Litigation Funding, After Well-Written Objection by Defendant

Andrew E. Russell, Aug. 18, 2022
FRCP 7.1 Litigation Funding

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

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Can Defendants Move to Stay Vacant Judgship Cases After All?

Andrew E. Russell, Aug. 5, 2022
Congestion Vacant Judgeship

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) …
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Judge Connolly's April 2022 Standing Orders Apply to Existing Cases, Should Not Be Taken Lightly

Andrew E. Russell, Aug. 1, 2022
Standing Orders FRCP 7.1

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 …
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Judge Fallon Stays Action Involving IPR on Just One of Two Asserted Patents

Andrew E. Russell, June 10, 2022
Stay Pending IPR IPR

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 …
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Stay Motion Denial Results in Guidance for the Parties—and for the PTAB

Andrew E. Russell, March 9, 2022
Motion to Stay IPR

Stay!
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 ...
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Likelihood of Stay Pending IPR in W.D. Texas vs. Delaware

Emily DiBenedetto, Feb. 23, 2022
IPR Stay

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

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Request to Stay Discovery Ruling Pending Objections Denied

Jeff Castellano, Oct. 22, 2021
Magistrate Judges Stay

A few days ago, Magistrate Judge Fallon denied a request to stay her discovery ruling pending the losing party's objections and review by the District Judge. Defendant SXM in Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184-JFB-SRF asked Judge Fallon to follow the parties' "agreed-upon practice" to stay discovery rulings pending objections, a practice the parties had apparently followed in two prior instances.

Or not.
Or not. Erik McLean, Unsplash

On October 7, Judge Fallon ordered that the plaintiff's experts should have access to defendant SXM's confidential information. About a week later, the parties submitted a letter setting forth their respective positions on whether the discovery ruling should be stayed.

Judge Fallon declined to stay her ruling. She noted that...

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Should I Stay Or Should I Go

Nathan R. Hoeschen, Oct. 7, 2021
IPR Stay

This case is staying right where it is
This case is staying right where it is A funny thing you can have the chance to experience at the Elk Island National Park, Yann Allegre, Unsplash

We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."

Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."

Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay ...

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"What reasonable patent attorney or client representative in those shoes would not say: 'I am unduly prejudiced!'"

Andrew E. Russell, Aug. 27, 2021
Discovery Dispute Stay

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

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