A Blog About Intellectual Property Litigation and the District of Delaware


JLH
The Honorable Jennifer L. Hall

Keys, Phone, Wallet, Delaware Counsel

Nathan R. Hoeschen, Nov. 16, 2023
Discovery Disputes

Even occasional Delaware practitioners will be aware of the meet and confer requirement for non-dispositive motions embodied in LR 7.1.1:

. . . every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. For purposes of this Rule, “a reasonable effort” must include oral communication that involves Delaware counsel for any moving party and Delaware counsel for any opposing party.

This rule gets an additional piquante twist in the context of discovery disputes, wherein several judges' procedures require …

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Judge Hall Confirmed to the District of Delaware!

Andrew E. Russell, Oct. 18, 2023
Nomination Congestion

District Court Seal

Seems like it was just yesterday that we heard that Magistrate Judge Hall had been nominated to take Judge Andrews' seat when he takes senior status.

But it was actually yesterday that we heard that the Senate confirmed Judge Hall as a District Judge in the District of Delaware. According to Law.com, she was confirmed by a vote of 67 to 29, a wider margin than any other federal district court judge this year. Congratulations, Judge Hall!!!

Judge Hall will fill Judge Andrews' spot, after he takes senior status at the end of December. The Court has said that Judge Andrews expects to continue with a full caseload, leaving us with essentially five sitting district court judges. That's great …

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Judge Hall Cuts Parties' Trial Time after Seventh Discovery Dispute Hearing

Andrew E. Russell, Sept. 18, 2023
Trial Time Trial

"Do we want to bring this discovery dispute, or do we want to cross their corporate rep at trial? Choices, choices..." Vladislav Babienko, Unsplash

We've written before about how the Court sometimes sets up escalating obstacles for parties who are insensitive to the Court's time and bring too many discovery disputes. In that case, the Court gave the parties "homework" (writing letters to the Court) after their seventh discovery dispute.

In Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-MN-JLH (D. Del.), the Court referred all pre-trial matters up until dispositive motions to Magistrate Judge Hall.

Judge Hall took action after the parties brought what looks like seven discovery disputes. The docket shows the Court's escalating response to the parties disputes:

  • June 1 - First teleconference
  • June 16 - Second teleconference
  • July 7 - First in-person hearing
  • July 14 - Second in-person hearing
  • August 3 - Third in-person hearing
  • September 1 - Fourth in-person hearing; Court warns that future disputes will be charged to trial time
  • September 14 - Fifth in-person hearing; Court charges the parties' trial time

Guessing from the docket, it looks like the parties brought a number of rapid-fire discovery disputes starting on June 1. For the third dispute in about a month, the Court increased the friction on the parties by forcing them to come to Delaware to argue the disputes.

That doesn't seem to have slowed them down at all. After three in-person disputes ...

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Judge Hall Shuts Down Attempt to Hold Miniature Inequitable Conduct Trial Before Summary Judgment

Andrew E. Russell, Sept. 11, 2023
Bench Trial Inequitable Conduct

"Hmm, I wonder if the Court would do two trials..." Juan Rumimpunu, Unsplash

Defendants are often looking for ways to resolve cases early—§ 101 motions to dismiss, motions for judgment on the pleadings, early summary judgment motions, and so on. Sometimes these can succeed, but it can vary a lot depending on the judge and the circumstances.

Here is one I haven't seen before: In Ravgen, Inc. v. Biora Therapeutics, Inc., C.A. No. 20-1734-RGA-JLH (D. Del.), the defendant moved for the Court to schedule a one-day bench trial on inequitable conduct just after the close of expert discovery, and before the summary judgment deadline—around 7-10 months before trial.

Their logic was that a "single one-day …

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Patent Marking: Better Watch Those Burdens of Proof, or You'll Lose Your Pre-Suit Damages

Andrew E. Russell, Sept. 30, 2022
Summary Judgment Pre-Suit Damages

Here's an AI-generated patentee dealing with the burden of proof on marking.
Here's an AI-generated patentee dealing with the burden of proof on marking. AI-Generated, displayed with permission

My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.

Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:

[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.

One interesting thing about marking, ...

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Please Stop, It's Already Dead

Nathan R. Hoeschen, Sept. 8, 2022
Supplemental Authority

markus-spiske-Cf5kL7vcF6U-unsplash
Markus Spiske, Unsplash

I am not, as a rule, a giggler.

However, the timeline of events below—relatable in their banality, painful in their recounting—did elicit an ungentlemanly outburst when I read it this morning.

August 16 - Judge Hall holds a hearing on a 101 motion in Innovative Memory Systems Inc. v. Micron Technology Inc., C.A. No. 14-1480-RGA-JLH

August 17 - The defendant submits a succinct, 1-page, notice of subsequent authority, citing a recent 101 opinion from Judge Andrews.

August 19 - Plaintiff files a 1.5 page response to the notice

August 29 - Defendant responds with a 1.5 page response to the response (sur-response?)

August 31 - Plaintiff responds again about this same opinion (a sur-sur-response?)

September 6 …

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A Helpful Order on Moving to Amend to Add Inequitable Conduct

Andrew E. Russell, Sept. 2, 2022
Inequitable Conduct FRCP 15

Attorney searching for factual support for their inequitable conduct allegations
Attorney searching for factual support for their inequitable conduct allegations Agence Olloweb, Unsplash

Yesterday, in Intercept Pharmaceuticals v. Apotex Inc., C.A. No. 20-1105-MN (D. Del. Sept. 1, 2022), Judge Hall granted a motion to amend to add inequitable conduct allegations almost a year after the deadline for amendment in the scheduling order.

Most D. Del. scheduling orders include a deadline for motions to amend or to join additional parties. Normally, the standard for motions to amend in the Third Circuit is relatively easy to meet. But when there is a scheduling order deadline for amendment, the Courts has held that parties must show "good cause" under Rule 16 if they move to amend after the …

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"Flawed Logic" Leads to Short Opinion, Negative Outcome

Andrew E. Russell, July 11, 2022
Claim Construction

Cell Phone
Tyler Lastovich, Unsplash

In patent infringement cases, plaintiffs' claim construction strategy sometimes seems to boil down to "Plain meaning! Construe it later! Everything is in!", while defendants often go for "No plain meaning! Construe it now! Our thing is out!".

Note that, for defendants, it's not necessarily that everything is out of the claim. It's often that there is one specific thing from the specification that is required, and that just happens to be the one thing the defendant's product doesn't have or do.

This strategy doesn't have a great success rate for defendants, but often I feel like the attitude is that "well it's worth a shot." I'm not sure that's always true, because a really bad argument …

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Court Denies Motion to Strike Bare-Bones Infringement Contentions, Suggests Motion to Strike Later Expert Reports Instead

Andrew E. Russell, April 21, 2022
Infringement Pennypack

Bare Bones
Mathew Schwartz, Unsplash

Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.

Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).

Having a reasonable idea …

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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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