A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Summary Judgment

"Here is our argument. The rest of the pieces are in our concise statement of facts." T.J. Breshears, Unsplash

Years ago, I wrote a really terrible first draft of a summary judgment brief arguing invalidity of a patent for obviousness.

I wrote it immediately after expert reports, and my draft failed to actually say why the claims were obvious. Instead, the whole draft read like a sur-rebuttal to the patentee's expert: here is why their first argument doesn't work, here is why their second argument doesn't work, and so on. Never "here is why the claims are obvious."

To me, at the time, it looked great. I rebutted all of their arguments! How can we lose! To others, it …

Ryan Johns, Unsplash

Wow! This is something you don't see every day. The defendant in Truinject Corp. v Galderma S.A., C.A. No. 19-592-GBW (D. Del.) filed—and won—five motions for summary judgment.

Impressively, each of the five motions had its own grounds. This isn't an instance where one winning argument resolved five motions.

Here are the five motions:

  • Breach of Contract: No damages. The Court granted summary judgment that because the alleged harm was not actually caused by the breach, there can be no damages.
  • Trade Secret Misappropriation: No misappropriation. Plaintiff showed that misappropriation could have happened—because employees had access and worked on defendant's product—but offered no evidence that it did happen.
  • Non-Infringement of Patent 1: …

Treasure Map
Nadjib BR, Unsplash

After reading the decision in Nate's post yesterday, it occurred to me that we haven't addressed a common question in cases in the District of Delaware: When will the Court decide the parties' summary judgment motions?

This is a question that comes up a lot. I think that sometimes, in clients' minds, summary judgment motions are something that is resolved quickly. The parties brief their motions, the Court immediately turns to them, and then an opinion should come out in a week or two. Right?

No. That's not true in any U.S. district court I've practiced in, and the District of Delaware is no different. The Court is extremely hardworking but also overwhelmingly busy.

The …

It's got more of a Rufus from Bill & Ted vibe, but I think you get what I was going for
AI-Generated, displayed with permission

There is probably no more common desire than the ability to go back in time to correct one's mistakes. To use examples from the fascinating life of Jeff Goldblum, you could:

  • Decline that invitation to the trial run of a dinosaur themed amusement park
  • Check your laboratory for bugs before experimenting with teleportation, or alternatively, hire an assistant
  • Suggest someone else lead the pod people away so the group can escape. Ideally, this person would be a bit faster than you.

Most lawyers are bound by more mundane hopes. The job is riddled with tiny-seeming pitfalls with potentially disastrous consequences. Every time you fall into one, you wish you could just call a mulligan and fix …

Stick Figure Bonk

We talked early last year about how Judge Noreika praised Chief Judge Connolly SJ ranking procedures, and applied them in a case where the parties had filed 11 SJ motions.

As a reminder, under Chief Judge Connolly's procedures, the parties rank their SJ and Daubert motions. The Court addresses them in order, and if it denies one, it then denies the remainder.

Needless to say, it can lead to some significant strategizing prior to filing, where parties try to balance the importance of each motion with its likelihood of success.

This week, Judge Noreika did it again, and I thought it was a good time to remind everyone that this can happen. In VB Assets, LLC v. Amazon.com, Inc. …

A visiting judge

Judge Wolson is a visiting judge with a number of patent cases here in Delaware. His procedures tend to differ a fair bit from Delaware judges in some areas (particularly those involving redactions sealing).

In February, he implemented an interesting new procedure for summary judgment motions. His new procedure requires parties to serve—but not file—their statement of fact in support of the motion 28 days in advance, so that the opposing party can respond on a fact-by-fact basis. The party serving the motion can then respond to that response. The resulting combined statement of facts is then filed with the brief.

This process is intended to result in a single statement of facts that includes the parties' opening, answering, and reply positions as to each fact, in that order and in one document for easy readability:

The result of this process will be a single, consolidated statement of facts that permits Judge Wolson to see each party’s position on each factual assertion in one place. For example, ...

Laura Ockel, Unsplash

The Doctrine of Equivalents can sometimes be an irritating aspect of patent law. Patent applicants tend to draft broad claims to begin with, and modern claim construction law likewise tends towards broad constructions. Once you add DOE on top, it can start to feel like the patent covers anything and everything.

But there is a boundary. Under the doctrine of "vitiation," courts have held that DOE can't be used to extend a claim to the oppose of what was claimed.

We got a good example of that this week from visiting judge Kennelly, who granted a motion for summary judgement of non-infringement after a seemingly fully-articulated DOE claim (DOE claims are often not-so-well articulated).

In …

Here is something you don't see everyday.

On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.

In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:

The hydrofoil at issue, from U.S. Pat. No. 9,586,659
The hydrofoil at issue, from U.S. Pat. No. 9,586,659 U.S. Pat. No. 9,586,659

As the Court describes, the whole patent is focused on the board's stability feature:

The specification of the '659 Patent only, and repeatedly, describes the …

We've talked quite a bit on the blog about navigating the concise statement of facts in summary judgment briefing. Judges Connolly, Noreika, Williams, Burke, and Hall all require one, and it's a common—yet severe!—stumbling block in the district which has hobbled many a fine brief.

Mehmet Turgut Kirkgoz, Unsplash

Indeed, we talk about it so much that you could (almost) be forgiven for thinking that all of our judges require such a statement with their summary judgment briefing.

Judge Andrews, however, has never adopted the practice and actually does not allow parties to submit separate statements of fact (or at least, not ones that otherwise expand the page limits). He made this point quite clearly in an order last week responding to a motion to strike such a statement:

Defendant requests that I strike Plaintiffs rogue statement of uncontested facts, which Plaintiff opposes. (D.I. 197 , 198 ). I expect counsel to know my practices, whether written or unwritten. My practice for summary judgment motions does not permit what Plaintiff did. There is nothing in the scheduling order of this case or the later form order on the Courts website that would serve as encouragement for Plaintiff to do what it did. Neither, however, is there anything expressly prohibiting what Plaintiff did. Plaintiffs statement of facts, which has 12 pages of text, is (by eyeball) about 8 pages of facts that are scattered throughout its opening brief with about 4 pages of citations in support, which are omitted from the opening brief. Thus, Plaintiff has gained a 4-page advantage by committing something more akin to a traffic violation than a felony. I think the proportionate response is ...

Chris Chow, Unsplash

The concise statement of facts is perhaps the trickiest part of SJ practice in Delaware. Given the limited space available in the briefs, it's often the only place where a party has room to lay out the story behind their motion and the case as a whole.

The danger, of course, is that you'll put in some unnecessary fact which the other party may dispute. While this might seem like a minor worry, Judge Connolly has denied many SJ motions on this basis alone.

Last week Judge Williams took the same tack in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW (D. Del. Dec. 6, 2022) (Mem. Order), a case which he …