A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Another Judge Stark Reassignment Pending His Departure

Andrew E. Russell, Feb. 24, 2022
Congestion Judicial Vacancies

Fork in the Road
Jens Lelie, Unsplash

Ever since Judge Stark was confirmed to the Federal Circuit, one of the most common questions I've received is: what will happen to his current cases, and when will we know?

There have already been some reassignments to visiting judges, but few clear indications of what may happen in the bulk of Judge Stark's current cases. We got some more hints yesterday in this oral order from Judge Stark:

ORAL ORDER: IT IS HEREBY ORDERED that this case will be reassigned to another judge and the pretrial conference (currently scheduled for March 24) and jury trial (currently scheduled for April 6) will be rescheduled by that judge. Accordingly, the current pretrial conference and trial dates are …
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Likelihood of Stay Pending IPR in W.D. Texas vs. Delaware

Emily DiBenedetto, Feb. 23, 2022
IPR Stay

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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Chief Judge Connolly Limits Parties to 10 Claim Terms (Or, Why It's Helpful to Pay Attention to Seemingly-Obscure Precedent)

Andrew E. Russell, Feb. 23, 2022
10 Terms Stipulation

As frequent readers of this blog already know, some judges in Delaware have limited parties to a total of 10 terms for construction across all asserted patents.

We've noted at least one previous instance where Chief Judge Connolly seemed to limit the parties to 10 claim construction disputes. Last week, the Court made an even clearer statement on the issue.

The parties in MG FreeSites Ltd v. ScorpCast, LLC, C.A. No. 20-1012-CFC-JLH (D. Del.) filed their joint claim chart in advance of claim construction, and listed 15 terms in dispute. They also included a footnote smartly noting Chief Judge Connolly's practice not to permit argument on indefiniteness at the claim construction stage.

They then filed a stipulation …

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Court Criticizes Plaintiffs' "Heading-Scratching Decision" to Meet and Confer Only One Hour Before Deadline, Sua Sponte Strikes Part of Status Report

Andrew E. Russell, Feb. 22, 2022
Joint Status Report Sua Sponte

Clock
Tristan Colangelo, Unsplash

The District of Delaware sometimes requires the parties to file joint status reports, usually either at dates set in the scheduling order (e.g. an "interim status report") or following developments in the case that require more information, like a stipulated stay that has expired, or after a communication from the parties regarding a development in the case.

Typically, by convention, plaintiff handles the initial draft of these reports—but not always. Either way, one side will send a draft, and the other side will prove its position, sometimes reflexively opposing whatever is in the initial draft. The final report will often be split, with "Plaintiff's position" and "Defendant's position," although sometimes the parties will agree to a …

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Giving Away the Crown Jewels

Nathan R. Hoeschen, Feb. 17, 2022
Default Standard Source Code

Computer Screen
Arget, Unsplash

As we must have discussed in one of the prior 238,000,000 entries (estimated) on this blog, the Default Standard for Discovery requires an accused infringer to produce it's "core technical documents" early in the case (60 days after the scheduling conference), to allow the patentee to prepare its infringement contentions. This leads to the question of what exactly constitutes a "core technical document?" and, in particular, is source code a "core technical document"?

This question has gone largely unaddressed in the years since the Default Standard was adopted [editor's note: with at least one exception back in 2012]. This week, however, Judge Stark gave us a parting gift of a bit of clarity, holding that …

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How Much Is Enough to Convey Standing?

Jeff Castellano, Feb. 15, 2022
Standing MTD

A patent licensee must hold "all substantial rights" in the licensed patents in order to maintain a patent infringement suit on its own. What constitutes "all substantial rights" is often the subject of dispute in cases brought by licensees without their licensors. Courts faced with these disputes will often examine the nature and scope of the rights transferred by the license, including the right to use the patent, the right to sublicense, and the right to sue.

Judge Andrews recently resolved a standing dispute in favor of the licensee, finding that the license in question...

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Judge Noreika: Likely Trial Witnesses Get In-Person Depositions In the U.S., Not Remote Depositions

Andrew E. Russell, Feb. 14, 2022
Depositions Deposition

COVID-19
Fusion Medical Animation, Unsplash

Not all attorneys love remote depositions, even if they are much more convenient and practical in many cases (especially for foreign witnesses). The parties in Supernus Pharmaceuticals, Inc. v. Lupin Limited, C.A. No. 21-1293-MN (D. Del.), an ANDA case, brought two disputes before Judge Noreika about remote depositions:

  1. Whether all parties should be required to make all witnesses available live, instead of via remote deposition; and
  2. Whether all parties, including a defendant who brought counterclaims, should be required to bring their witnesses to the United States for deposition without the other parties having to engage in Hague Convention procedures.

Plaintiff sought to force live, in-person depositions of all witnesses in the …

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Stipulation Denied

Andrew E. Russell, Feb. 11, 2022
Case Management Stipulation

Parties in Delaware can generally freely stipulate to many things that don't directly impact the Court, including common things like schedule adjustments, authenticity of documents, protective orders, and ESI procedures—as long as you stay away from trouble spots like increasing page limits or dates for dispositive motions or trial. But every once in a while a stipulation is denied, and it's always interesting when and why that happens.

Last month, the parties in ImmerVision, Inc. v. LG Electronics U.S.A., Inc., 18-1630-MN-CJB (D. Del.) filed a stipulation staying the action pending the outcome of objections to the magistrate judge's claim construction R&R. They noted that, if the R&R is adopted, plaintiff would stipulate to non-infringement and the …

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Original Complaint Supports Post-Suit Inducement and Willful Infringement, Finds Judge Burke

Jeff Castellano, Feb. 9, 2022
Willfulness MTD

It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.

In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...

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Your IPR Succeeded? Congrats! Now Go to Trial on Infringement, But You're Estopped from Claiming Invalidity

Andrew E. Russell, Feb. 8, 2022
Collateral Estoppel IPR

PTAB trailhead
PTAB trailhead Joshua Sukoff, Unsplash

During some research the other day, I came across the below order that Judge Noreika issued last summer.

A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?

No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:

Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …
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