Today Chief Judge Connolly addressed a motion to dismiss a combined trade dress, federal unfair competition, copyright infringement, and design patent infringement action.
The parties apparently agreed that the defendant in the action did not meet the TC Heartland venue test for the patent portion of the action:
Argento is a New York corporation with its principal place of business in New York. . . . It is undisputed that Argento does not own, rent, or maintain any offices, physical property, addresses, or bank accounts in Delaware and does not employ any Delaware-based employees, agents, or representatives. It is also undisputed that venue of Globefill's patent claim against Argento does not lie …
Most judges in the District of Delaware limit the parties to three motions in limine per side. Visiting judges sometimes permit more, but I get the sense that this limit is something native D. Del. judges generally don't want the parties to change when submitting a proposed scheduling order.
But I can't recall a patent case where the parties did not use all of their motions in limine, and want more (even if they didn't ask the Court). These evidentiary issues can just have a large effect on trial. Plus, with a mountain of work bearing down on you in the leadup to trial, it's great to think you might knock out some opposing …
There was an interesting oral order from Judge Burke last week in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38 (D. Del. Apr. 28, 2023). Defendant apparently asserted a large number of § 112 defenses based on lack of enablement or written description. The Court held that the defendant had to narrow it's defenses.
The parties further disputed whether the parties should count § 112 arguments by limitation or by claim. The Court held that they should be counted by claim limitation, not by claim:
With respect to the parties' dispute as to whether an argument that a claim is invalid under section 112 based on a particular claim limitation counts …
"Did I remember to disclose my infringement counter-arguments? Ah well, I'll just argue that they're responsive."Tim Bogdanov, Unsplash
Judge Williams unsealed a detailed Pennypack decision Friday, where he struck an expert's infringement argument after the party failed to disclose it in their contentions.
The motion and brief provide some helpful context here. The defendant moved to strike material in the expert's opening report that apparently responded for the first time to arguments made in the defendant's non-infringement contentions. Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW, D.I. 1460 at 1 (D. Del. Nov. 28, 2022); Id., D.I. 1461 at 2-3.
The Court rejected an attempt to argue that the argument was "responsive" to a filing …
"Your honor, we move to turn the apple, so that the jury can only see the side that's not rotten."Giuseppe CUZZOCREA, Unsplash
Yesterday, Judge Williams issued an opinion ruling on motions in limine for the trial starting next week in Cirba Inc. (d/b/a DENSIFY) v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del.) (a case we've discussedseveraltimesbefore).
In it, he addressed several MILs. These opinions are always interesting, but given all of the recent discussion of litigation funding, I thought Judge Williams' order on the plaintiff's litigation funding MIL is worth noting.
Plaintiffs in the case moved in limine to preclude reference to their litigation funding arrangements:
As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.
These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:
WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
To keep the patent assertion entity from coming back from dead, kill it with counterclaimsAI-Generated, displayed with permission
One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
While counterclaims are generally low-cost, they are not free and still involve some work.
They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties …
Motions for reargument are notoriously hard. Winning one is the legal equivalent of the going to the dentist and hearing that you really ought to take it easy and stop brushing so much.
Nevertheless, you see them filed all the time. I imagine the thinking is that, even if the odds are low, you've already lost the motion so things can't get any worse.
But they can!
Things can always get worse!
You could tell he was just trying to hold it in in the last photoAI-Generated, displayed with permission
This was the lesson in Carrum Techs., LLC v. Ford Motor Co., C.A. No. 18-1647 (D. Del. Apr. 11, 2023). A couple of weeks ago, the defendant filed a motion to seal one of its briefs. The motion was short and unaccompanied by a declaration, so Judge Andrews denied it in a one-sentence Oral Order.
Now it's unclear why exactly the Defendant filed a motion to seal in this instance, as the parties had previously filed many documents under seal without a motion in accordance with CM/ECF procedures. The defendant thus moved for reargument on the motion to seal, largely arguing that it hadn't needed to file the motion in the first place:
Over the course of this litigation, various other pleadings have been filed under seal by agreement of the parties. Ford did not intend to request different treatment of its Memorandum and Exhibits than prior sealed filings in this litigation. Rather, Ford proceeded in a manner ...
We've talked about how it's generally understood that parties can agree to modify certain deadlines in the District of Delaware without a stipulation, such as discovery response deadlines, deposition dates before the close of fact discovery, or deadlines under the Default Standard.
We were careful to exclude depositions occurring after the close of fact discovery from that list. After all, the fact discovery deadline is set by court order. Thus, parties often stipulate to take fact depositions after the close of fact discovery.
An opinion from Judge Williams yesterday held that these stips are unnecessary, and the parties can take depositions after the close of fact discovery without any stip to that effect:
ORAL ORDER: The Court has reviewed the Stipulation to take deposition outside fact discovery ...
A couple weeks ago the Federal Circuit issued a short opinion in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023) that I suspect may have an outsized affect on 101 practice in Delaware.
Oh, what a delicious pun, IPDE you are the very soul of witAI-Generated, displayed with permission
The complaint in Hantz, alleged that the defendant infringed "one or more" claims of the asserted patents and attached claim charts for 8 particular claims. Defendant filed a 12(b)(6) motion on 101 grounds which the court granted, finding all of the claims of the asserted patents unpatentable. Plaintiff appealed the ruling to the extent it invalidated claims other than those specifically charted in the complaint.
The Federal Circuit vacated judgment on the other claims, stating:
[W]e agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents.
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