A Blog About Intellectual Property Litigation and the District of Delaware


LPS
The Honorable Leonard P. Stark

The view as you take off on the redeye after a one-hour deposition of a non-critical witness
The view as you take off on the redeye after a one-hour deposition of a non-critical witness Saman Tsang, Unsplash

At this point, the vast majority of the impact of COVID-19 on the District of Delaware seems to have passed. The Court has entered Phase 4, full return to normal operations. It's becoming uncommon, at this point, to see counsel or Court personnel wearing masks at the courthouse.

The COVID-19 pandemic was obviously a horrible tragedy, but one positive response to it has been the widespread adoption of remote depositions, which are far (far!) more efficient for certain circumstances. If you've ever flown cross-country for a deposition, then boarded the red-eye back immediately after the deposition, you may agree.

But sometimes the other side won't agree to a remote deposition. That's why I found this order from Judge Stark (who it seems is still working hard in Delaware) to be interesting:

ORAL ORDER: Having reviewed the parties' letters regarding a discovery dispute (see D.I. 543, 544), IT IS HEREBY ORDERED that Plaintiffs' request that MSN and Sandoz be required to produce Dr. Reus for an in-person deposition is DENIED. Virtual depositions have been permitted for fact discovery in this case due to the ongoing global health crisis. (See, e.g., D.I. 34 at 13-14) Defendants represent that their expert is at some greater-than-average risk of adverse health consequences were he to contract Covid and Plaintiffs fail to identify any meaningful prejudice that would ...

On Friday, former District of Delaware Chief Judge Stark authored what I believe is his first Federal Circuit opinion as a sitting Federal Circuit judge: In re A. Zeta S.R.L., No. 2022-1178, 2022 U.S. App. LEXIS 15992, at *1 (Fed. Cir. June 10, 2022) (affirming a PTAB trademark decision).

Note—before you e-mail to say I'm wrong!—Judge Stark has sat by designation at the Federal Circuit many times before, and has authored at least one Federal Circuit opinion as a district judge. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314 (Fed. Cir. 2016). But I think this is his first written opinion since his nomination.

Interestingly, ever since moving to the Federal Circuit, …

Money
Pepi Stojanovski, Unsplash

As we've recognized before, motions for reconsideration can be tough.

First, the deadline to move for reargument or reconsideration is fairly easy to miss. It's just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.

Second, the standard for reconsideration is fairly narrow. As we've discussed, you can't rehash arguments you already made—but you also can't make new arguments you could have raised earlier.

What does that leave? New arguments that you couldn't have raised earlier. And those typically result from something unanticipated in the Court's ruling or order.

This week we had a good example of a worthwhile motion for reconsideration. In …

Following the Court's announcement of a transition plan last week, the Court issued an implementing standing order on Wednesday, and today we saw a wave of reassignments from Judge Stark cases—all to Judge Andrews.

A number of cases were re-assigned, including:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, C.A. No. 15-1168 (D. Del.)
  • Future Link Systems, LLC v. Amlogic Holdings, Ltd., C.A. No. 21-634 (D. Del.)
  • Finjan LLC v. Trustwave Holdings, Inc., C.A. No. 20-371 (D. Del.)
  • Celanese International Corporation v. Anhui Jinhe Industrial Co., Ltd., C.A. No. 20-1775 (D. Del.)

In each case, Judge Andrews ordered the parties to produce a status report within …

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 …

This week, Judge Stark granted defendants' motions for attorneys' fees in two separate cases. Although the cases are unrelated, there is nonetheless a fair amount of overlap in what the Court found persuasive in granting fees.

Money
Pepi Stojanovski, Unsplash

The defendants in both cases - Wi-Lan v. Sharp Electronics Corp., C.A. No. 15-379-LPS and Belcher Pharmaceuticals, LLC v. Hospira, Inc., C.A. No. 17-775-LPS - moved for fees under 35 U.S.C. § 285, arguing that the cases were exceptional.

So what helps convince a judge that a case is exceptional, and what are some other through-lines in these rulings?

Clllaaiiiimmmmss!!!! claaaaiiiiiimmmmssss!!!
Clllaaiiiimmmmss!!!! claaaaiiiiiimmmmssss!!! An old asylum near Berlin, Nathan Wright, Unsplash

When the Court orders a patentee to reduce the number of asserted claims -- what happens to the ones that are dropped? Are they truly gone, or might they still maintain some sort of cursed half life -- banished from the case yet hungering to be asserted anew?

As we've discussed in the past, patentees will often argue that due process requires they be allowed to assert each of their claims, regardless of the Court's case management concerns. Since, however, a patentee maintains only their best claims, the issue typically becomes moot before it prompts an opinion squarely addressing the due-process issue.

Fortunately (for bloggers) the issue came to a head in Vaxcel Int'l Co. Ltd. v. HeathCo LLC, C.A. No. 20-224-LPS, D.I. 122 (D. Del. Feb. 2, 2022). There, Judge Stark had ordered the plaintiff to reduce its asserted claims down to 21 (from 167 initially asserted). Id., D.I. 48. After this narrowing, Judge Stark held several of the remaining claims invalid for indefiniteness. The plaintiff thus sought to replace the invalidated claims with ones that it had previously jettisoned (that allegedly lacked the indefiniteness problem).

Noting that the narrowing order stated that it would be modified only for "good cause," Judge Stark found that it was lacking here, especially in light of the fast approaching close of fact discovery. ...

Broken
CHUTTERSNAP, Unsplash

We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.

Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:

ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …

Warehouse
Adrian Sulyok, Unsplash

Here's one I haven't seen before. In EIS, Inc. v. Intihealth GER GmbH, C.A. No. 19-1227-LPS (D. Del.), the counterclaim-defendant filed a motion for a TRO to force the patentee defendant to withdraw infringement notices it provided to Amazon.com regarding the counterclaim-defendant's products, and to force them to request that Amazon restore the product's ranking and reviews on the site:

Plaintiff EIS Inc. (“EIS”) respectfully moves the Court to grant a temporary restraining order to enjoin Defendants, requiring them to withdraw their patent infringement notice(s) to Amazon that reference EIS’s “Satisfyer” products, and ordering that the withdrawal shall request that Amazon restore EIS’s product listings with the same rankings and customer reviews …

As we've mentioned, Judge Stark has been nominated to the Federal Circuit. He had his nomination hearing before the Senate Judiciary Committee last week. The full video is available on the Judiciary Committee web site: Link to Video.

In the video, Judge Stark's introduction by Delaware Senators Carper and Coons starts at 49:27, and Judge Stark himself appears at 1:04:42. The introductions are about 7 minutes long, and the questions run for about 30 minutes.

Some highlights about Judge Stark, mostly from the introductions:

  • 14 years on the bench
  • 6000 civil and criminal cases
  • 2400 patent cases
  • 93 trials (63 patent trials)
  • 2100 written opinions
  • Only 2% of his opinions reversed or affirmed with criticism

As …