We've talked a lot about "plain meaning" constructions, and how our judges havesometimespushedback against parties who offer plain meaning constructions without any indication of what the actual meaning of the term is.
Magistrate Judge Fallon issued an R&R today on an offshoot of this issue. In PPC Broadband, Inc. v. Charles Industries, LLC, C.A. No. 22-1517-GBW-SRF (D. Del. Jan. 8, 2024), the parties disputed the construction of only a single term, "drop cable." Plaintiff proposed not construing the term at all, and offered a generic definition as an alternative. The defendant proposed a specific construction that added limitations to the claim.
The patent at issue is directed towards a wall-mounted box that …
"Not invalid" may be a double negative, but it's definitely not the same as "valid."Markus Spiske, Unsplash
Chief Judge Connolly issued a short opinion this morning denying a motion for summary judgment that a patent was not patent ineligible, in C.R. Bard, Inc. v. Angiodynamics, Inc., C.A. No. 20-1544-CFC-SRF (D. Del. Jan. 3, 2024).
In short, the patentee had previously succeeded on the issue of § 101 ineligibility at the Federal Circuit, which reversed a lower-court finding of ineligibility and held that:
[T]he asserted claims in Bard’s three patents are directed to eligible subject matter under § 101.
C.R. Bard, Inc. v. Med. Components, Inc., C.A. Nos. 2022-1136, 2022-1186, 2023 U.S. App. LEXIS …
The District of Delaware's Default Standard for Discovery requires contentions in patent cases.
One common Delaware counsel question is: what level of detail is required for contentions?
The answer varies on what the concern is. There is a certain level of detail that will probably preclude the Court from ordering you to supplement your contentions—but providing just that bare level of detail may not be enough to preserve all arguments that you later want to make.
On Monday, Judge Burke denied a motion to strike invalidity contentions where a party had disclosed an obviousness theory as to a patent based on modification of a prior art reference, but had not disclosed their intent to cite and rely on their own product as evidence that the modification was obvious.
The plaintiff had moved to strike the discussion of the defendants' own product from their expert reports, on the theory that their contentions failed to to disclose their intent to use that product in their obviousness analysis. Judge Burke denied the motion, and explained that a party need not disclose all evidence in support of its contentions:
Although this is a difficult issue, the Court is not prepared to say that Defendants' actions amounted to an untimely disclosure. This is because Defendants have affirmatively represented that they are not relying on the direct aortic Engager system as prior art itself; instead, they rely on it only as a piece of evidence that will be used to "show that a direct aortic version would have been an obvious modification to Engager 3.0 at the relevant time." (D.I. 361 at 2) In other words, Defendants are relying on the system simply as evidence in support of a theory that was itself timely disclosed. And as Defendants note, courts generally hold that: (a) in validity-related or infringement-related contentions, a party is not required to cite to every piece of evidence that will be used to support a given theory; and (b) it is proper for an expert to expand upon such theories in his expert report. . . . The Court also notes that it is not as if Plaintiff had zero prior knowledge of the existence of the [Defendants'] system. As Defendants point out, they produced documents in discovery regarding this system, and their engineers testified at some length about the device during depositions. . . . (4) In light of the above, the Court cannot say that Defendants' conduct amounts to untimely disclosure that should be stricken.
Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361, D.I. 447 (D. Del. Dec. 18, 2023).
In my view, the Court is not saying that no evidence at all needs to be disclosed in support of the contentions—just that this particular evidence went beyond what was necessary, under the facts of the case.
It's impressive when an attorney files a short letter and gets the Court to do something that it is not often inclined to do.Immo Wegmann, Unsplash
The District of Delaware generally suspended its mediation program in 2021, and mediations before a magistrate judge rarely happen in patent cases these days (although they do sometimes happen in some other cases, such as employment cases).
Since then, parties have sometimes moved to private mediations—especially when ordered to—but generally in my experience the overall number of cases that go through mediation has declined, and there aren't a huge number of local patent-case mediators.
When we last discussed this, we noted from comments at the 2023 Bench and Bar conference that …
Judge Choe-Groves, of the Court of International Trade, has been newly added to the list of Delaware’s visiting judges. In early November, she was reassigned a first handful of cases.
[Thanks to an unnamed colleague who mentioned this fact in passing today and expressed surprise that we hadn’t highlighted it on the blog. Keep giving us feedback - we love it!]
Judge Choe-Groves has served as a visiting judge in several other jurisdictions including the Southern District of New York, District of Idaho, Northern District of Oklahoma, and United States Court of Appeals for the Ninth Circuit.
Not all of Judge Choe-Groves’ visiting assignments have been patent cases. In fact, most of her earlier assignments appear to be …
Chief Judge Connolly's scheduling order requires parties to rank their Daubert motions, and gives the Court the discretion to automatically deny all lower-ranked motions if it denies any one motion. In other words, if a party files five Daubert motions, and the Court grants the first-ranked motion but denies the second, the Court can then deny motions three, four, and five:
If the Court decides to deny a motion filed by the party, barring exceptional reasons determined sua sponte by the Court, the Court will not review any further Daubert motions filed by the party.
It has a similar provision for summary judgment motions Thus, it's important that parties split up their motions and rank them. …
Last week, while I was wrapping presents with all the care and skill of a subway sandwich artisan, Judge McCalla weighed in on the issue of whether a complaint can establish knowledge for the purpose of willfulness, dealing with a novel argument in the process.
To begin, he sided with Chief Judge Connolly and Judge Williams, holding that the complaint cannot establish knowledge for the purpose of a claim of willful infringement:
In other words, post-suit knowledge alone is insufficient to sustain a claim for willfulness even at the motion to dismiss stage
Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158, D.I. 50 at 6 (D. Del. Dec. 8, 2023).
Earlier this year, the District of Delaware implemented a new policy of requiring bar cards, or an order from the Court, to bring electronics into the courthouse.
Courthouse staff have accepted out-of-state bar cards just fine. But one recurring issue is that some states simply do not issue bar cards, or only issue them optionally. Not all out-of-state attorneys have them.
As a result, in the lead up to hearings, parties often file stipulations or unopposed motions for leave for various people to bring electronics into the courthouse. The Court usually—but not always—grants these.
This post is just a reminder that, in such stipulations and motions, it's best …
Any time someone moves to withdraw, the question is: Will the client be able to convince the next set of lawyers that the client will pay?Micaela Parente, Unsplash
Having to move to withdraw because a client won't pay is the absolute worst. You have ethical duties to your client, but you can't work for free. You are stuck in a position where you need to tell the Court enough that it will let you out—but you can't tell it everything without violating the ethics rules. The local rules also place some procedural hoops in the way of a motion to withdraw. It's tricky!
Even worse is when the other side opposes your withdrawal, because then you are potentially …
Typically, if you want know how much the opposing counsel is spending on a case, you can come to a rough estimate based on how much they seem to be filing. Alternatively, you can just ask, which usually goes something like this:
Q. So . . . uh, how much are you spending?
A. None of your beeswax nerd.
Fin.
Hold your applause pleaseAI-Generated, displayed with permission
Over the summer, however, there was a rather unique case where the Court ordered the production of documents showing the plaintiffs' costs of litigation thus far and future estimates.
It started with an offhanded request in a discovery dispute letter. The defendant requested production responsive to RFPs on litigation funding documents generally, which they claimed were "relevant to damages and, as this Court has found, for purposes of cross-examination about bias." Oasis Tooling, Inc. v. GlobalFoundries US Inc., C.A. No 22-312-CJB, D.I. 184. The briefing on the issue was no more than a quarter-page.
Judge Burke granted the motion—which at this point clearly implicate litigation costs—in a brief oral order. Id., D.I. 211. Thereafter plaintiff produced the litigation funding agreement (redacted to remove the expected spend at various case milestones) but refused to produce the actual invoices or provide an overall amount paid to date.
Hence another discovery dispute aimed at "enforcing" the Court's ...
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