A Blog About Intellectual Property Litigation and the District of Delaware


GBW
The Honorable Gregory B. Williams

Judge Williams Is Now 3 for 3 on 101 Motions

Nathan R. Hoeschen, Feb. 7, 2023
101

A while back I wrote a post about the relative success rates of 101 motions before the different Delaware Judges. To prove once and for all that I sometimes ramble, that entire post can be distilled to the chart below:

  • Chief Judge Connolly - 70% of § 101 motions granted
  • Judge Andrews - 60% of § 101 motions granted
  • Judge Stark - 20% of § 101 motions granted
  • Judge Noreika - 0% of § 101 motions granted

But that was then, dear reader, before we had a new hotshot on the bench who is batting 1.000. If I knew how to use this site better, I would put Judge Williams at the top of this chart in flashing lights with …

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Judge Williams Denies Plaintiff's Motion to Un-Bifurcate His Court's First Patent Jury Trial; Plaintiff Wins $42 Million and Willfulness Anyway

Andrew E. Russell, Feb. 1, 2023
Jury Trials Jury Verdict

Un-bifurcated (but probably not worth $42m)
Un-bifurcated (but probably not worth $42m) AI-Generated, displayed with permission

We wrote in December about how Judge Williams granted defendant's motion to bifurcate the jury trial in Board of Regents, the University of Texas System v. Boston Scientific Corp., C.A. No. 18-392-GBW (D. Del.).

That trial went forward starting last week, and the trial extended into this week. As we mentioned before, Judge Williams split the trial into two phases:

  1. Direct infringement and invalidity
  2. Willful infringement, damages, knowledge, and intent for induced infringement

Near the conclusion of Phase 1, plaintiff moved to "unbifurcat[e]" the trial. According to the transcript:

MR. SHORE [for plaintiff]: Your Honor, we would like for the Court to consider over the weekend, not …
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No, You Can't Add a Copying Defense to Obviousness Two Weeks Before Trial (And That Is a Good Thing)

Andrew E. Russell, Jan. 20, 2023
Prejudice Obviousness

"I knew we forgot something..." AI-Generated, displayed with permission

Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.

In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.

According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:

ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
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Be Careful with That Joint Statement of Uncontested Facts. You Might Not Be Able to Walk It Back

Andrew E. Russell, Jan. 16, 2023
Trial Trial Practice

Artist's rendition of a pretrial order printed without tabs
Artist's rendition of a pretrial order printed without tabs JJ Ying, Unsplash

[UPDATE: Thank you to all who flagged the typo in the original title. No, the irony is not lost on me that we had a typo in the word "careful"!]

Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.

The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:

  • December 6, 2022: The Court denies the summary judgment …
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Lawyer Files Letter Asking Court to Rule on Their Motion; Court Immediately Grants Motion; Client Cheers

Andrew E. Russell, Jan. 13, 2023
Motion to Stay Congestion

Danger
Raúl Nájera, Unsplash

The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant …

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On the Importance of Consistency

Andrew E. Russell, Dec. 30, 2022
Privilege Objections to R&Rs

Up Down Arrow
愚木混株 cdd20, Unsplash

We got a good "what not to do" example today, relayed in an opinion by Judge Williams.

In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).

As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:

In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).

Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on

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A Perilous Route to Personal Jurisdiction

Nathan R. Hoeschen, Dec. 27, 2022
Personal Jurisdiction

As a lawyer, I am used to reaching into my stocking on Christmas eve to find yet another lump of sumptuous coal. Hard and black as my own cynical heart, it is but fuel for engine of my enemies' destruction.

Season's Greetings!
Season's Greetings! AI-Generated, displayed with permission

This year, however, I was presently surprised to return to the office after spending the entire holiday sick in bed to find a new opinion to discuss on the blog. Everyone wins today.

IBM Corp. v. Rakuten, Inc., C.A. No. 21-461 (D. Del. Dec. 22, 2022) presents an interesting issue of personal Jurisdiction I hadn't seen before. The plaintiff, IBM, sued Rakuten a Japanese corporation (and seller of cool Japanese goods) along with its U.S. subsidiary Ebates. After suit was filed, Rakuten transferred several patents in its portfolio to Ebates, who then asserted them against IBM as permissive counterclaims. All the while, Rakuten maintained that the Court lacked personal Jurisdiction (Ebates conceded jurisdiction).

Judge Williams, however, found the maneuver of shuffling the patents off to Ebates sufficient to confer ...

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Judge Williams Bifurcates Patent Trial, Separating Willfulness, Damages, and Inducement from Direct Infringement and Invalidity

Andrew E. Russell, Dec. 17, 2022
Trial Practice Trial Procedure

We'll just handle this part first...
We'll just handle this part first... Diliara Garifullina, Unsplash

I always think it's worth paying attention to how the judges handle the presentation of evidence at trial, changes that may seem small (like bifurcation) can have a big impact on how the trial actually goes. A bifurcated trial can obviously lead to a much shorter trial, if the defendant prevails on the first phase. But even if it doesn't, bifurcation really impacts the kinds of trial themes that the plaintiff can put up, for example making it harder to paint the defendant as a bad actor from the start.

Judge Williams recognized that effect earlier this month in his order granting bifurcation of a patent trial—and suggested that restricting plaintiff from presenting those themes favors bifurcation:

The Court finds that a reduction in prejudice to BSC weighs in favor of bifurcation. [Defendant] BSC argues that [plaintiff] UT is " likely to tell a story" that UT " got an important patent and told [BSC] about their technology; [BSC] was greedy, intentionally stole the invention," and profited therefrom; and UT "got nothing." D.I. 248 at 10. That story, BSC argues, has nothing "to do with the objective question of whether the [Accused Products] meet[] all the limitations" of the Asserted Claims of the '296 patent . . . or whether the patent is invalid." Id. UT does not challenge BSC's description of UT's likely trial narrative. . . . Rather, UT argues, the need to present a piecemeal case to the jury will prejudice UT. Id.
. . . UT's description of BSC's alleged willful infringement could encourage a jury to find that BSC infringed the '296 patent for reasons unrelated to a comparison of the Accused Products to the Asserted Claims. The Court also [previously] found that "UT's evidence of post-suit willfulness is limited." . . . That finding increases the risk that UT's willfulness evidence could bias the jury's infringement and invalidity decisions. . . . When the Court weighs the risk of prejudice to BSC against the ability to mitigate that prejudice (e.g., through a jury instruction), the Court finds that the potential to reduce prejudice to BSC weighs in favor of bifurcation.

That's interesting, because (obviously) parties very often try to ...

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Keep It Concise

Nathan R. Hoeschen, Dec. 12, 2022
Summary Judgment

Chris Chow, Unsplash

The concise statement of facts is perhaps the trickiest part of SJ practice in Delaware. Given the limited space available in the briefs, it's often the only place where a party has room to lay out the story behind their motion and the case as a whole.

The danger, of course, is that you'll put in some unnecessary fact which the other party may dispute. While this might seem like a minor worry, Judge Connolly has denied many SJ motions on this basis alone.

Last week Judge Williams took the same tack in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW (D. Del. Dec. 6, 2022) (Mem. Order), a case which he …

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"Pleading Generally Precedes Discovery"

Nathan R. Hoeschen, Nov. 8, 2022
Amended Complaint

Pleading is the big duck, discovery is the little ducks.
Pleading is the big duck, discovery is the little ducks. Vlad Tchompalov, Unsplash

The plaintiff always wants to leave the door open. If they uncover new claims in discovery, they want to be able to add them in all the way up to trial. Defendants, of course, want to slam the door shut and wedge a dresser in front of it.

Whence Amendment?

The usual compromise is a deadline to amend the pleadings, which is included on all of our Judges' form scheduling orders. Interestingly, none of the orders specify when this deadline should fall, and in practice it varies widely. Looking at five recent orders I happen to have on hand, two had dates between the deadline for …

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