A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Judge Williams' New Form Scheduling Order Adopts Chief Judge Connolly's Ranking Procedures for Summary Judgment Motions—But Not for Daubert Motions

Andrew E. Russell, Oct. 26, 2022
Scheduling Orders Scheduling Order

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …
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Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial Claim Narrowing

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …
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Status Communications Between Litigation and Prosecution Counsel Were Not Privileged

Andrew E. Russell, Oct. 19, 2022
Prosecution Prosecution Counsel

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
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Chief Judge Connolly Orders Briefing on Court's Authority to Issue Its Standing Order re Disclosure Statements

Andrew E. Russell, Oct. 17, 2022
Standing Orders FRCP 7.1

Get your popcorn ready...
Linus Mimietz, Unsplash

We've talked a lot about Chief Judge Connolly's standing orders on disclosure and litigation compliance, including about how he recently ordered in-person hearings regarding compliance with those orders in a fairly large number of cases.

Chief Judge Connolly's standing order on Rule 7.1 statements requires disclosure of all individual or corporate owners of certain entities, going all of the way up the chain and including indirect owners:

[I]n all cases assigned to Judge Connolly where a party is a nongovemmental joint venture, limited liability corporation, partnership, or limited liability partnership, that the party must include in its disclosure statement filed pursuant to Federal Rule of Civil Procedure 7.1 the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified.

Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1 (D. Del. April 18, 2022).

We wrote about one instance, in VLSI Technology LLC v. Intel Corporation, C.A. No. 19-426 (D. Del.), where the Court ordered the plaintiff to confirm compliance with its standing order, and stayed the case when the plaintiff filed an inadequate response.

Now we have an update

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Default! Default! Default!

Nathan R. Hoeschen, Oct. 13, 2022
Default Judgment

The sweetest victory
AI-Generated, displayed with permission, displayed with permission

One of my most vivid memories of life as a young lad, was a wrestling tournament when I was 12-ish. I was not a gifted wrestler, and I knew it, as did everyone with a passing interest in the sport. I'd made it through several rounds of tournaments, mostly by virtue of being in a less populous weight class and being not quite last. By the time I got to sectionals -- the last tournament before state -- It was just me and two other guys, both of whom looked to be about 45. They were from neighboring farm towns (where they presumably did the work of a whole team of oxen themselves …

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Judge Stark's Federal Circuit Investiture Is Thursday at 3:00 P.M.: Here's Where to Watch

Andrew E. Russell, Oct. 12, 2022
Congestion DED

Judge Stark being sworn in by Chief Judge Kimberly A. Moore
Judge Stark being sworn in by Chief Judge Kimberly A. Moore U.S. Court of Appeals for the Federal Circuit

This isn't news for Delaware FBA members, since Delaware FBA president Jeremy Tigan helpfully sent around an e-mail yesterday.

But for anyone who isn't already aware, Judge Stark's investiture will take place on Thursday 10/13 at 3:00 P.M. ET. You can watch it live here. That link should be active about 15 minutes before the event. Congratulations again to Judge Stark!

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"As Pointless as a Motion Can Be"

Andrew E. Russell, Oct. 12, 2022
DOE Motion for Reconsideration

Sad Attorney
AI-Generated, displayed with permission

Here's some interesting language from Judge Andrews yesterday, in an oral order:

In a motion (No. 15-611, D.I. 532) that is as pointless as a motion can be, Plaintiff asks for reconsideration/clarification of an issue that was not decided. Defendants add to the frivolity by writing five pages in opposition (No. 15-611, D.I. 542), while agreeing that I did not decide the issue. Both sides are surely right. Thus, Plaintiffs motion is DISMISSED as moot.

Plaintiff had moved for reconsideration of Judge Andrews' order adopting a special master order that struck a new DOE theory. According to Judge Andrews' original order:

I think TQ . . . advanced a distinctly new DOE theory and …
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Some Data on Argument Requests

Nathan R. Hoeschen, Oct. 11, 2022
Argument Request Stay

Believe it or not, of 6 attempts this was the least horrific AI result
AI-Generated, displayed with permission, displayed with permission

A while back we did a post speculating that requesting argument on a motion moderately increased the chances of the Court actually holding argument on an issue.

We also speculated about several other effects of requesting argument, but I'll save those for another slow news day. I apologize for nothing.

Stone Cold Facts

To test out this theory, I picked a motion that I pegged at about a 50/50 chance of having an argument -- a motion to stay. Taking all of the decisions deciding such motions since the first of the year (and removing some in odd procedural circumstances as well as filtering out identical motions in related cases to clean up …

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Judge Williams Permits Indefiniteness Argument at Markman, Invites Live Witness Testimony

Andrew E. Russell, Oct. 10, 2022
Markman Hearing Markman

Fall. A great time for a Markman hearing with some in-person testimony.
Fall. A great time for a Markman hearing with some in-person testimony. Timothy Eberly, Unsplash

It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.

This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.

As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed …

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Judge Williams Denies Summary Judgment, But Schedules "Mini-Markman"

Andrew E. Russell, Oct. 7, 2022
Markman Hearing Markman

A miniature attorney, ready for a mini-Markman.
A miniature attorney, ready for a mini-Markman. AI-Generated, displayed with permission

We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.

The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.

The Court found factual disputes as to both, and easily disposed of the non-infringement motion.

The …

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