A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Not the Feees! Not the Feeeeeeees!

Nathan R. Hoeschen, Oct. 31, 2024
Fees

(Eds. Note -- I was cackling at this headline for quite a while)

I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to exist
I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to exist AI-Generated, displayed with permission

We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.

Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.

The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.

Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:

In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.

Id. at 6 (internal citations omitted).

As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.

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Judge Andrews Holds That, Contrary to Prior Case, Claims Dropped Due to Claim Narrowing Should Be Dismissed with Prejudice

Andrew E. Russell, Oct. 30, 2024
Dismissal With Prejudice

AI-generated depiction of Judge Andrews putting down zombie claims for good.
AI-generated depiction of Judge Andrews putting down zombie claims for good. AI-Generated, displayed with permission

Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.

We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.

In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …

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The Thing In Itself

Nathan R. Hoeschen, Oct. 29, 2024
101 Representative Claim

Its not often I got to throw out a reference to A Critique of Pure Reason, so this one goes out to whatever liberal arts majors find themselves reading the blog for some reason.

I spent a good deal of time trying to find an image for this, and I'm now convinced that no artist actually saw him alive, as the many depictions look nothing alike. I have chosen the one with the best cheekbones as I assume he would have wanted.
I spent a good deal of time trying to find an image for this, and I'm now convinced that no artist actually saw him alive, as the many depictions look nothing alike. I have chosen the one with the best cheekbones as I assume he would have wanted. Friedrich Rosmäsler, 1822, from a painting by Todd Schorr

As the aforementioned liberal artists among you may have gathered, today's post deals with the question of representative claims in the 101 analysis. In particular, to what extent can the few exemplary claims listed in the complaint stand in for the larger, inchoate, collection of claims that may ultimately be asserted when deciding a motion to dismiss.

In Redwood Techs., LLC v. Netgear Inc., C.A. No. 22-1272-GBW, D.I. 27 (Oct. 28, 2024), Judge Williams drew the hardest (most Kantian?) line on the issue that I have seen in recent years.

The operative complaint followed the common tactic of accusing the defendant's products of accusing "one or more claims" of several patents and then describing the alleged infringement of one claim per patent "for example." Id., D.I. 14 (Amended complaint).

Defendant moved to dismiss, discussing only those representative claims. Plaintiff opposed, arguing that the defendant "did not meet its burden of demonstrating representativeness," and noting that it "will be asserting additional claims of infringement." Id., D.I. 21 at 1.

Judge Williams was unpersuaded by this potential assertion of as-yet-unidentified claims and treated each of the claims referenced in the patent as representative:

The Court rejects Redwood's attempt to insert new patent claims through its opposition brief, as Redwood put forward only a skeletal argument and "did not file a motion for leave to amend [its] [Operative] Complaint." Redwood "may not amend [its] claims via [its] opposition to the motion[] to dismiss." "[T]he Court will consider only the claim[s] asserted in [Redwood's] [Operative] Complaint."
Thus, as Redwood fails to specifically identify a single, disputed claim left unaddressed by Netgear's motion, there are no "disputes over representativeness" for this Court to resolve.

Id., D.I. 21 at 5 (internal citations omitted).

Given the "skeletal" (spooky!) nature of the Redwood's briefing on this issue, it's not clear if the representativeness argument was doomed by the failure to specifically seek leave to amend, or if it could have passed muster with some additional detail. As an example, I sometimes see briefs that actually say something like "claim 39, which we definitely will be asserting, is totally different for the purposes of this analysis because it also claims a novel perpetual motion machine."

A possible answer lies in ...

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Court Rejects Non-Responsiveness Argument After Defendant Produces Only 25k out of 110k Documents Matching ESI Search Terms

Andrew E. Russell, Oct. 25, 2024
Search Terms Discovery Dispute

I have to assume
I have to assume "Orca Security Ltd." is a company that provides bodyguards for killer whales. Lachlan Gowen, Unsplash

Given how often parties use search terms, you'd think we would see precedent on them more often. But opinions about the use of search terms for document production only come out occasionally. It may be that many of these disputes are resolved on teleconferences, where the generally escape the notice of anyone who is not on that case.

Anyway, this week the Court unsealed a new opinion regarding document production and the use of search terms.

In Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF (D. Del.), the parties agreed in an ESI stipulation that they would search using search terms. The searched terms resulted in about 110,000 unique hits in the defendants documents—but it produced only about 25,000 documents. It argued the remainder were non-responsive to the plaintiff's discovery requests.

The plaintiff moved to compel production of the remaining 85,000 documents. The Court granted the motion, relying primarily on the fact that the defendant is withholding so many documents that hit the search terms:

The ESI Order provides that "the parties will have substantially completed production of all non-privileged custodial ESI responsive to the parties' Priority Requests, subject to any unresolved objections[,]" by August 30, 2024. (D.1. 71 at 6; D.I. 106) Even if the court were to construe this provision broadly to support Defendant's position that documents hitting on search terms can be withheld based on relevance,' relevance is broadly construed in the context of discovery. . . . The fact that Defendant is withholding more than seventy-five percent of the documents hitting on the parties' agreed-upon search terms amounts to "specific, compelling evidence suggesting that [Defendant] is withholding responsive ESI material." Doe 1 v. Baylor Univ., 2018 WL 11471253, at *2 (W.D. Tex. May 6, 2018).
. . . Plaintiff explains that search terms combining "orca* AND" with keywords deemed to be relevant to the issues in the case resulted in about 35,000 unique documents across custodians, but Defendant's production includes less than 3,000 documents for that keyword combination. . . . These documents are facially relevant, satisfying Plaintiff's initial burden to establish the relevance of the requested information. . . . Defendant offers no argument or examples supporting its position that documents hitting on these agreed-upon search terms are not responsive.

Orca Security Ltd. v. Wiz., Inc., C.A. No. 23-758-JLH-SRF, D.I. 182 (D. Del. Oct. 22, 2024).

It's interesting that the Court focused primarily on the relevance of the documents to the issues in the case, rather than whether the documents were responsive to plaintiff's discovery requests. The scope of the plaintiff's requests was not discussed in the decision—possibly because ...

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Ack-Shually Damages

Nathan R. Hoeschen, Oct. 24, 2024
DTSA Damages

If law has one guiding principle, it is that words matter. The precise choice of verb or adjective can be the difference between friend and foe, peace and war, victory and defeat.

You've read Faust, you get it.

History's most famous lawyer?
History's most famous lawyer? AI-Generated, displayed with permission

We saw a great example of this principle this week in I-Mab Biopharma, v. Inhibrx, Inc., C.A. No. 22-276-CJB (D. Del. Oct. 17, 2024) (Mem. Order). I-Mab was prought under the DTSA which allows damages to be calculated as either (1) damages for actual loss plus unjust enrichment or (2) a reasonable royalty. 18 U.S.C. § 1836(b)(3)(B).

The defendants—who unsurprisingly preferred a lower damages figure—served an expert damages report that noted that plaintiff's "actual damages" might be "zero." The plaintiff moved to exclude the opinion under Daubert, arguing that their damages theory was based on a reasonable royalty, and thus an opinion that their "actual damages" might be zero was neither here nor there, and was unduly prejudicial.

The defendant countered that the expert had meant that "Dr. Manning is 'not offering an opinion on actual losses, but instead references ‘actual damages’ as reflective of damages I-Mab may be awarded'—in other words, according to Defendants, the zero damages opinion is an opinion that Plaintiff’s reasonable royalty damages may be zero." Id. at 8 (quoting D.I. 364 at 23).

Judge Burke, however, found the expert's choice of words dispositive, and struck the so-called "zero damages opinion"

The Court agrees with Plaintiff that Defendants are ignoring the “actual words” that Dr. Manning used, as he did not opine in the zero damages opinion that Plaintiff’s “reasonable royalty damages” are zero (nor do Defendants point to anywhere else in Dr. Manning’s report where he opined that Plaintiff’s reasonable royalty damages should be zero). Nor do Defendants explain why an opinion that Plaintiff’s “actual damages . . . are zero” should be interpreted to actually mean that Plaintiff’s “reasonable royalty damages are zero.” Moreover, the Court agrees with Plaintiff that Dr. Manning does not seem to provide any facts or analysis in support of the zero damages opinion. Thus, Defendants have not sufficiently explained how, inter alia, Dr. Manning’s zero damages opinion is relevant in light of Plaintiff’s argument to the contrary; therefore it must be excluded.

Id. at 9 (internal citations omitted).

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More Creative Thinking in Apple v. Masimo

Andrew E. Russell, Oct. 23, 2024
Jury Selection Voir Dire

Yes, real jurors would not be dressed like this. You'll have to use your imagination.
Yes, real jurors would not be dressed like this. You'll have to use your imagination. AI-Generated, displayed with permission

I think most attorneys admire counsel who can think outside-the-box and push the law forward.

I still remember the original, magistrate-judge-level oral argument in TC Heartland, where the Court asked counsel "if your argument is correct . . . there's really only two venues in which the suit can go forward, am I right?" and counsel answered with the oral argument equivalent of "yup"—even though that outcome was directly contrary to controlling Federal Circuit precedent and how everyone had done things for decades.

Then they appealed all the way to the Supreme Court, and changed the law for everybody. Mic …

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Defendant Hands Over Cash to Plaintiff's Attorney at Pretrial Conference in Failed Attempt to Destroy Patent Jury Trial Right

Andrew E. Russell, Oct. 21, 2024
Seventh Amendment Jury Trials

ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us.
ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us. AI-Generated, displayed with permission

Well this is a new one. In Apple Inc. v. Masimo Corp., C.A. No. 22-1377-JLH (D. Del.), the parties dispute whether the patentee, Apple, has a right to a jury trial. That hinges on whether Apple is seeking damages—if it can only get an injunction, it has no right to a jury trial. Id., D.I. 745 at 5.

The Court found that Apple had, in fact, asked for a total of $250 in damages for infringement of four design patents and five utility patents, and that it was therefore entitled to a jury trial. That's two-hundred and fifty dollars—you're not missing any zeros or a "k" afterwards.

(By my math, assuming at least five attorneys and two paralegals are involved, I'd guess that Apple's total damages figure is equal to the cost of about four minutes of trial time by Apple's trial team, or less. It's probably less.)

Apparently, Apple's damages figure results from the fact that $250 is the statutory minimum damages for infringement of a design patent under 35 USC § 289. According to the Court, Apple's experts testified that the $250 statutory minimum for the design patents under § 289 also constituted the entire damages award for the utility patents under § 284. Id., D.I. 745 at 4-5 n.1. Apple also wants the Court to treble that to $750. Id.

But Masimo really doesn't want a jury trial here. It pushed hard for a bench trial, to the point where its counsel apparently brought $900 in cash to court and ...

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Why Is Your District Court Jury Verdict Sealed, and When Will It Be Un-Sealed?

Andrew E. Russell, Oct. 18, 2024
KB

Sealed
Cristi Ursea, Unsplash

Most readers already know the answer to the question in the title. This post is, honestly, mainly for newer attorneys and people who search for this question.

But it's something that comes up a lot! When a jury first issues a verdict on a verdict form, it shows up on the docket like this:

285 [SEALED] JURY VERDICT. (nms) (Entered: 09/27/2024)

Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904, D.I. 285 (D. Del. Sept. 27, 2024).

Often, there will be a panicked question from (typically) a newer associate on the case, along the lines of "Why is the verdict sealed? Are we not allowed to tell the client? What can we send them?"

Fear not! The verdict sheet is sealed because it has the juror names/signatures, and the Court typically issues a redacted version the same day that can be shared with the client or anyone else. The docket entry will look like this:

286 REDACTED VERSION of 286 Sealed Jury Verdict. (nms) (Entered: 09/27/2024)

Id., D.I. 286.

Until then, a verdict announced in open court is not sealed and can normally be shared. The only sealed item is the verdict form containing the juror's names.

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Patentee Plaintiff Wins Temporary Restraining Order and Preliminary Injunction—But Then Fails to Post Bond and Loses It All

Andrew E. Russell, Oct. 16, 2024
Preliminary Injunction Temporary Restraining Order

The patentee's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Temporary Restraining Order'>TRO</a> attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit.
The patentee's TRO attempt worked out about as well as this (unmanned) rocket's attempt to reach orbit. Tim Mossholder, Unsplash

Ouch. In Nivagen Pharmaceuticals, Inc. v. Amneal Pharmaceuticals Inc., C.A. No. 24-846-GBW (D. Del.), the patentee plaintiff filed suit to stop a competitor from launching a drug that it says would infringe its patents, after the competitor received FDA approval.

(Because this was not an ANDA, there was no automatic stay.)

The plaintiff filed a TRO motion on August 13, shortly after its complaint. For at least two of the …

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Changing the Court's Defaults in a Scheduling Order May Be Risky

Andrew E. Russell, Oct. 14, 2024
Scheduling Conference Scheduling Order

But it seems so pretty
AI-Generated, displayed with permission

Each of our judges in Delaware has one or more form scheduling orders that sets limits on things like the number of motions in limine (typically 3), pages limits for summary judgment and Daubert motions (typically 40/40/20 or 50/50/25), and discovery dispute procedures.

Here is a scenario I've seen a couple of times:

  • The parties agree to change the limits in the form scheduling order to give themselves more pages, more motions, etc.
  • The change is visually small and not particularly noticeable (e.g., "three" MILs becomes "five" MILs, "forty" pages becomes "eighty" pages, etc.).
  • The Court so-orders the undisputed proposed scheduling order.
  • When the time comes to actually file the extra MILs or extra-long briefs, …
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