This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.
That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.
We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted their obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules …
The Court has held in the past that motions in limine cannot be used to bring stealth summary judgment or Daubert motions after the deadlines for those motions (we first posted about this issue over four years ago—wow).
Last week, this issue came up again, this time with a party overtly asking the Court for two additional MILs, beyond the default three, specifically to address summary judgment issues. Unsurprisingly, the Court did not grant the motion:
Defendants seek . . . permission to file two motions in limine beyond the three motions in limine permitted by the Scheduling Order. . . . In Defendants' words: "Two requests will seek to exclude certain exhibits and testimony …
AI refuses to draw a judge without an old-school judicial wig. This is the best I could do.AI-Generated, displayed with permission
Chief Judge Connolly held a second Mavexar-related hearing yesterday, this time in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del.). This was after the one in the Backertop action that we just posted about.
Chief Judge Connolly questioned both the out-of-town attorney who represented Swirlate as lead counsel in the action, and the sole member of the Swirlate NPE
The Court addressed several topics with the attorney, including:
Gaps and redactions in the court-ordered document production, which was supposed to include communications with his client.
Just imagine the bird is a summary judgment motion.AI-Generated, displayed with permission
Our blog readership remains pretty high these days, and we continue to grow subscribers. But not all District of Delaware attorneys follow the blog—yet.
That may be why, even though we've talkedabouttheseatlength, parties continue to file separate "concise statements of material fact" in support of their summary judgment motions that list non-material facts and do not include pinpoint citations—potentially resulting in denial of their motion.
Here are some guidelines for when you are putting together a concise statement of material facts in support of an SJ motion:
Include only the material facts. If you could still win your motion if a fact …
Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.
Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:
At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.
The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:
What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
In The Estate of Edward Bovee v. Corporal Sam Wilks, C.A. No. 23-192-CFC (D. Del.), the parties' agreed-upon scheduling order included Chief Judge Connolly's normal language requiring concise statements:
Any motion for summary judgment shall be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be …
Is it such a long flight?AI-Generated, displayed with permission
It's hard to believe it has been almost a year, but last August we wrote about a Mavexar-related witness who refused to travel to Delaware to testify, instead insisting that she would offer testimony only remotely.
The Court fined her $200 per day for contempt of Court. She immediately appealed, arguing that the Court cannot force her to attend as she is outside of the 100-mile subpoena radius permitted under FRCP 45. The Court denied her motion to stay the fine pending appeal.
Yesterday, the Federal Circuit issued an order affirming the contempt sanction (and doing so pretty enthusiastically). The Federal Circuit made clear that the Court's inherent authority absolutely …
In Koninklijke Philips N.V. v. Thales DIS AIS USA LLC, C.A. No. 20-1713 (D. Del.), the plaintiff brought patent infringement claims for several patents, plus a DJ claim seeking a declaratory judgment of no FRAND license defense, citing a previous Delaware case finding no such defense absent a sworn affidavit that the defendant would sign a global FRAND license.
In the alternative, if the defendant submitted a signed affidavit, Plaintiff's complaint sought a "declaratory judgment determining the appropriate worldwide FRAND licensing terms for Philips’ world-wide portfolio of patents under ETSI policies."
With its answer, the defendant included just such a signed affidavit, along with its own DJ counterclaim and breach of contract counterclaim …
"That's Jim. He's been like that since he forgot to mention our fifth non-infringement argument in the JMOL after he was up until 4am doing exhibit objections. Turns out that's the one we needed to preserve."Sabina Music Rich, Unsplash
Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.
Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.
But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.
The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.
Trial teams handle this many different ways, but the most common seems to boil down to ...
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.
