A Blog About Intellectual Property Litigation and the District of Delaware


JLH
The Honorable Jennifer L. Hall

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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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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"To Say That the Court Is Troubled by the Occurrences to Date Would Be an Extreme Understatement."

Andrew E. Russell, Aug. 2, 2024
Trial Deposition

Hmmm
AI-Generated, displayed with permission

There's a patent trial starting on Monday in Ferring Pharmaceuticals Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH (D. Del.), and filings are flying back and forth across the docket this week. The Court's order on motions in limine included this line, which piqued my interest:

To say that the Court is troubled by the occurrences to date would be an extreme understatement.

What was so troubling? It's tough to decipher exactly what is going on from the docket, which is fragmented and redacted. But it has to do with the parties' actions related to an inventor of certain of the asserted patents.

As far as I can tell, the allegations are …

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Court Rejects Stipulated Extension of Trial Date

Andrew E. Russell, July 12, 2024
Stipulation

Danger Landmines
AI-Generated, displayed with permission

One of our more popular posts over time has been a post about what you can and cannot stipulate to in D. Del.

In the post, we note that certain kinds of stipulations are kinda iffy, in that "the parties can file a stipulation [about the issue] but the Court may deny or modify it, or the stipulation may have unexpected consequences." One of those categories is requests to move the trial date.

We got a good example of that this week in Rotolight Limited v. Videndum PLC, C.A. No. 22-0098-JLH, D.I. 119 (D. Del. July 8, 2024). The parties tried to stipulate to move the trial date back by …

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Reminder: You Must Ask to Seal the Hearing or Teleconference When Either Side Discloses Confidential Information

Andrew E. Russell, June 17, 2024
Sealing Motion to Seal

Secret
Paolo Chiabrando, Unsplash

Given how easy it is to seal information on the docket in Delaware, parties often don't think too much about the fact that they are going to discuss confidential information at a hearing, and may not want to interrupt the process to seek to seal the courtroom. And parties rarely seek to seal teleconferences, if only the parties are on.

But recent orders have made clear that if you may need to later seek to seal the transcript of a teleconference, hearing, or trial, the only safe thing to do is to request to seal the proceeding. This is true even if you are certain that only the parties are on the line.

We saw this …

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Court Dismisses Case Without Prejudice, Holding That Spending "Millions" Defending Co-Pending ITC Action Does Not Require With-Prejudice Dismissal

Andrew E. Russell, June 5, 2024
With Prejudice Dismissal

Dollar Bills
Sharon McCutcheon, Unsplash

In DivX, LLC v. Realtek Semiconductor Corp., C.A. No. 20-1202-JLH (D. Del.), the parties disputed whether the case should be dismissed with or without prejudice after the plaintiff moved to dismiss its own case.

The defendant responded, opposing dismissal without prejudice and arguing that a with-prejudice dismissal was warranted under a four-factor test used in previous cases (which focuses mainly on effort and expense of the present and potential future litigation, progress of the present litigation, and diligence in moving to dismiss). Id., D.I. 74 at 9.

The defendant argued that plaintiff had filed an ITC action against it, resulting in millions of dollars in fees. Id. at 12.

The Court didn't …

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Cross Briefing On Discovery Disputes Is Not an Opportunity to Pre-Brief the Other Side's Motion

Andrew E. Russell, May 20, 2024
Discovery Disputes Letter Briefs

"Guys, if we write our own opening brief on their issue, we'll get more than twice the page limit! The Court loves extra briefing, right?" ron dyar, Unsplash

I've had this come up a couple of times lately, and an opinion came out on Friday that addresses it.

Here is an example scenario: Each side has a discovery dispute. The Court sets a briefing schedule with opening, answering, and reply 3-page briefs. Can each side spend half of its opening brief pre-briefing the other side's issues? Should they?

Judge Fallon resolved this on Friday with a clear "No". You wait for the other side to file their brief, and then respond:

ORAL ORDER re 49 Joint Motion for Discovery …
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Court Denies Motion to Dismiss That Was Contingent on a Claim Construction Issue

Andrew E. Russell, May 17, 2024
MTD FRCP 12(b)(6)

Trash Can Basket
Gary Chan, Unsplash

If you file a motion to dismiss and it's contingent on resolution of a claim construction issue in your favor, you're at risk of being denied. We saw that yesterday in a case before Judge Hall, where she denied a motion to dismiss in advance of the Markman hearing:

ORAL ORDER: Having been reassigned this case, having reviewed the briefing filed in connection with Medacta's pending Motion to Dismiss Count III (regarding infringement of the '678 patent) for Failure to State a Claim (D.I. 12 ), and it appearing that the outcome of the Motion depends on the Courts claim construction of a particular term, and in light of the fact that claim construction disputes are …
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Judge Hall Cancels Markman, Defers SJ After Parties Propose 18 Terms

Andrew E. Russell, May 4, 2024

Eject Button
Brian De Groodt, Unsplash

We post often about how the Court handles Markman, and how much leeway the judges will give parties in seeking to construe terms (hint: it's usually 10 terms or less—and, these days, that's the total number, not the 10 terms per patent of old.).

This week, after parties in a case before Judge Hall sought construction of 18 terms, the Court vacated the Markman hearing and briefing schedule, and deferred all construction to the case dispositive motions stage (seemingly without additional pages):

ORAL ORDER: The parties have submitted a joint claim chart (D.I. 105 ) with 18 terms in dispute including, for example, "calculate" and "random." Defendants contend that 9 of the 18 disputed …
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Judge Hall Declines to Issue Jury Questionnaire

Andrew E. Russell, April 17, 2024
Jury Selection Trial Practice

Survey
Nguyen Dang Hoang Nhu, Unsplash

Juror questionnaires are rarely a sure thing. These are questionnaires that jury services sends to jurors called for service. The answers are then provided to the parties shortly before trial. Parties like them because they aid in jury selection, but the Court often raises concerns—although they do go out in some cases.

Judge Hall last week rejected a joint request for a jury questionnaire, noting that it would largely overlap with regular voir dire questions:

ORAL ORDER: Having reviewed the parties' joint letter regarding their request to send out a juror questionnaire (D.I. 522 ), IT IS ORDERED THAT the request is DENIED. The Court does not see a reason to burden the prospective …
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