A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

Court Holds That Good Cause Standard Applies to Late Election of Asserted Prior Art, Rather Than the Forgiving Pennypack Factors

Andrew E. Russell, Sept. 13, 2024
FRCP 16 Pennypack

Narrowing
AI-Generated, displayed with permission

A perennial question in disputes about late disclosures is whether the demanding FRCP 16 "good cause" standard applies, which hinges on diligence, or whether the more forgiving Pennypack factors apply.

When it comes to case narrowing, there seems to be a building trend that the good cause standard applies, not the Pennypack factors. We've seen that multiple times when it comes to a plaintiff's decision to drop claims, and on Wednesday, Judge Burke issued a detailed opinion finding that good cause is likewise required to revise a defendant's election of prior art references.

In State Farm Mutual Automobile v. Amazon.com, Inc., C.A. No. 22-1447-CJB (D. Del.), the Court ordered the defendant to cut …

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Demonstrative Found. Or Is It an "Illustrative Aid"? A New Federal Rule of Evidence Is Coming in December

Andrew E. Russell, Sept. 12, 2024
FRE 107 FRE

Illustrative Aid
AI-Generated, displayed with permission

Last week, Nate wrote a post titled "Demonstrative Lost" about an instance where the Court rejected the parties' attempt to lodge demonstrative exhibits used at trial in the record.

In response, we heard from a reader about an upcoming and brand-new rule of evidence, FRE 107, that may address exactly this point, plus some other issues regarding demonstratives at trial.

Here is the text of the new rule, which is projected to take effect on December 1, 2024:

Rule 107. Illustrative Aids
(a) Permitted Uses. The court may allow a party to present an illustrative aid to help the trier of fact understand the evidence or argument if the aid’s utility in …
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Filing a Complaint in D. Del.? Take the Civil Cover Sheet Seriously

Andrew E. Russell, Sept. 11, 2024
Complaint

Totally new case! Just ignore that one patent.
AI-Generated, displayed with permission

Yesterday, the Court dismissed a case where the plaintiff failed to list a related case involving one of the same patents in the civil cover sheet (one of several documents required for a new case). Witricity Corp. v. Ideanomics, Inc., C.A. No. 24-895-JLH, D.I. 15 (D. Del. Aug. 22, 2024).

The first case was assigned to visiting Judge Goldberg, who had stayed it. When the plaintiff filed the second case, it did not list the first case in the cover sheet, and the Court randomly assigned the second case to Judge Hall.

The defendant in the second case smartly informed the Court of the issue by filing a short "Notice Regarding Related Case" …

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Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied

Andrew E. Russell, Sept. 10, 2024
Concise Statement of Facts Summary Judgment

Just imagine the bird is a summary judgment motion.
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 talked about these at length, 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 …
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Court Denies Production of Corporate-Level Financials

Andrew E. Russell, Sept. 9, 2024
Discovery Dispute Discovery

"Yes, we need to know their financials for our permanent injunction. It totally won't help us in settlement negotiations or anything." AI-Generated, displayed with permission

This is another one where I saw a potentially useful order about an issue that comes up from time to time, and thought "I should write a blog post about that, so I can find it later." I hope this will be helpful for others as well.

Last week in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), the Court addressed the question of whether a plaintiff in a "competitor-competitor" patent case could compel production of the defendant's corporate-level financials. It held that no, it could not, …

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Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
Waiver Claim Construction

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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Demonstrative Lost

Nathan R. Hoeschen, Sept. 5, 2024
Trial Trial Practice

It's hornbook law that demonstratives are not evidence. Nevertheless, you'll sometimes see parties file some or all of them on the docket, if for no other reason than to explain a portion of the transcript where an expert is otherwise gesturing vaguely at a powerpoint.

AI-Generated, displayed with permission

Unfortunately, there's no rule squarely addressing when it is appropriate to lodge these demonstratives with the Court. Fortunately, Judge Hall gave us all a bit of guidance last week in Ferring Pharms. Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH, D.I. 494 (D. Del. Aug. 28, 2024).

In that case, both parties filed their trial demonstrative a few weeks after the verdict (via notices of lodging). Just …

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Court Holds That Using Prior Art That Was Considered in Post-Grant Proceedings "Opens the Door" for Patentee to Put Evidence of Those Proceedings Before the Jury

Andrew E. Russell, Sept. 4, 2024
Trial Procedure Motion in Limine

When the Court says
When the Court says "unless they open the door," typically you'd want to stay far away from that door. AI-Generated, displayed with permission

There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.

Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …

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When A Gimme's A Gotcha

Nathan R. Hoeschen, Sept. 3, 2024
Summary Judgment

We'd all like to win the war in one decisive strike. Just have a trial by stone and knock the whole thing out without needing to go to the time and expense of a trial . . . by law.

(Eds. note—has nobody else seen The Dark Crystal? I thought this was a universal reference, but it appears to be just another exhibit in the case for my being quite old)

AI-Generated, displayed with permission

Where was I? Anyway.

It's always tempting to take a big swing at summary judgment on validity or infringement in the hopes of knocking out the whole case. This urge, however, must be tempered by the knowledge that these big motions are harder to win. With limited pages and various judicial policies effectively limiting the number of SJ motions that can be brought, a more winnable motion on a small issue is often a good choice.

But an issue can be too small.

That was the lesson of Northwestern Univ. v. Universal Robots A/S, C.A. No. 21-149-JLH, D.I. 327 (D. Del. Aug. 28, 2024). The defendant filed a couple big SJ motions on 101 and noninfringement, but also moved for ...

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The Pennypack Factors Are Tough: Court Permits Patentee's Untimely Disclosure of Conception Date

Andrew E. Russell, Aug. 30, 2024
Pennypack FRCP 26

Pennypack: Kinda stacked for the late discloser since 1977!
Pennypack: Kinda stacked for the late discloser since 1977! Kim Leary, Unsplash

I hope the Third Circuit one day revisits the Pennypack factors, which are what it directs the lower courts to apply to determine whether late disclosures are subject to sanctions such as preclusion.

The factors can be lenient on parties that are very late in disclosing critical facts. Pennypack sets up a system where, oddly, the more critical the late-disclosed fact is, the later the party can be, and the less likely it is to be excluded. Isn't that backwards?

In practice, the factors often seem to turn on whether there is incurable prejudice, and that can be hard to establish. But a rule that "you …

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