A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Newspaper
AI-Generated, displayed with permission

Ok, ok, I know. No one cares about standards of review. I know. But this is interesting!

Today Judge Andrews ruled on objections to a R&R recommending that the Court deny a motion to dismiss a breach-of-contract claim, and grant a motion to dismiss a trade secret claim, without prejudice.

So far, nothing out of the ordinary. But the interesting part is the standards of review applied.

In reviewing the magistrate judge's recommendation to deny the motion to dismiss on the breach of contract claim, the Court applied the ordinary de novo review standard for dispositive matters under FRCP 72(b).

The defendant, however, also objected to the magistrate judge's decision to dismiss the trade secret claim …

Judge Andrews issued an opinion today addressing the a motion to dismiss a trademark claim. As the Court explained, to make out a trademark claim, a plaintiff must show a likelihood of confusion. To assess a likelihood of confusion, the Court applies six-factors known as the Lapp factors.

The Court found, though, that when dealing with names as similar as "Javo" and "Javy," the Court can find the allegation of a likelihood of confusion plausible without having to resort to the full test:

I find Plaintiffs allegations of likelihood of confusion to be plausible. Javo and Javy, both made-up words (which might be suggestive of java, a term often used to refer to coffee), could easily be confused. . . . Both sides are in the coffee business. There are additional pleadings that are harder to evaluate at this stage of the case. I do not think assessing the likelihood of confusion from a full-blown Lapp factors analysis is appropriate. Plaintiff does not have to prove its case in its complaint. "[T]he existence of consumer confusion is a fact-intensive analysis that does not lend itself to a motion to dismiss." Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884, 897 (9th Cir. 2019) (citation omitted). I agree. The motion to dismiss for failure to plausibly allege likelihood of confusion is denied.

Good to know!

That smoke is from the double-barrelled patent action/§ 1983 claim she just filed
That smoke is from the double-barrelled patent action/§ 1983 claim she just filed William Isted, Unsplash

The opinion also touched on a term you don't hear very often in the patent world: a "shotgun pleading."

Looking at the cases the Court cites—and with help from the internet—a shotgun pleading seems to be one that recites many (possibly jumbled) facts and vague claims in the hope that something sticks:

[A] shotgun complaint shifts onto the defendant and the court the burden of identifying the plaintiff's genuine claims and determining which of those claims might have legal support.

Adger v. Carney, C.A. No. 18-2048-LPS, 2020 U.S. Dist. LEXIS 52533, at *17 (D. Del. Mar. 26, 2020).

Although the narrative text is chronologically organized, it does not set out separate claims but rather ...

We've talked quite a bit on the blog about navigating the concise statement of facts in summary judgment briefing. Judges Connolly, Noreika, Williams, Burke, and Hall all require one, and it's a common—yet severe!—stumbling block in the district which has hobbled many a fine brief.

Mehmet Turgut Kirkgoz, Unsplash

Indeed, we talk about it so much that you could (almost) be forgiven for thinking that all of our judges require such a statement with their summary judgment briefing.

Judge Andrews, however, has never adopted the practice and actually does not allow parties to submit separate statements of fact (or at least, not ones that otherwise expand the page limits). He made this point quite clearly in an order last week responding to a motion to strike such a statement:

Defendant requests that I strike Plaintiffs rogue statement of uncontested facts, which Plaintiff opposes. (D.I. 197 , 198 ). I expect counsel to know my practices, whether written or unwritten. My practice for summary judgment motions does not permit what Plaintiff did. There is nothing in the scheduling order of this case or the later form order on the Courts website that would serve as encouragement for Plaintiff to do what it did. Neither, however, is there anything expressly prohibiting what Plaintiff did. Plaintiffs statement of facts, which has 12 pages of text, is (by eyeball) about 8 pages of facts that are scattered throughout its opening brief with about 4 pages of citations in support, which are omitted from the opening brief. Thus, Plaintiff has gained a 4-page advantage by committing something more akin to a traffic violation than a felony. I think the proportionate response is ...

"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents." AI-Generated, displayed with permission

Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.

The Court found that this "folklore" was relevant to the implied license defense:

While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from ...

This. This is what you need to include with your motion to amend.
This. This is what you need to include with your motion to amend. Andrew E. Russell

Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.

This is something parties often mess up, as we've mentioned.

Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:

Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …

Judge Andrews
Wikipemedia Commons

We're a little bit slow on the draw on this one. But for anyone who hasn't heard, the District of Delaware announced on Friday that Judge Andrews will take senior status in December 2023. The announcement notes that Judge Andrews will maintain a full caseload:

The United States District Court for the District of Delaware announces that Judge Andrews informed the President on January 5, 2023 that he intends to take senior status at the end of December 2023. Judge Andrews expects to continue with a full caseload once he becomes a Senior Judge.
Judge Andrews is an exemplary judge and colleague, and the Court is extremely grateful that he will continue to serve this institution and the public as a Senior Judge.

The District of Delaware hasn't had a judge on senior status for some time. To the extent that a new judge is appointed and Judge Andrews maintains a full caseload while on senior status, that's akin to a fifth judgeship for D. Del.—a 25% increase in the number of available judges.

The Law360 article on the announcement has some more details, including some very nice comments by Chief Judge Connolly.

Google apparently indexed its allegedly confidential information on its own search engine.
Google apparently indexed its allegedly confidential information on its own search engine. Pawel Czerwinski, Unsplash

Whew, this is another one that falls in the "I'm glad I'm not involved in that" bucket (some previous entries here and here).

On Friday, Judge Andrews rejected a frivolous motion to seal, after he found some of the supposedly-sensitive information as a top result on Google:

This is about as frivolous a motion to seal as I have seen. Defendants submitted a declaration of Phil Harnish in support of their motion to transfer the case to the Northern District of California. The motion is based on the purported need to avoid disclosing “sensitive personal information about employees that, if revealed, would …

The Court has said in the past that "winning summary judgment in a patent case is like hitting a hole in one." Well, yesterday DePuy Synthes scored a hole in one, invalidating all asserted claims of one patent on SJ in RSB Spine, LLC v. DePuy Synthes Sales, Inc., C.A. No. 19-1515-RGA (D. Del. Nov. 22, 2022).

How Did They Do It?

Basically, they won it at claim construction, but couldn't end the case until summary judgment.

The patent at issue, U.S. Patent No. 6,984,234, covers a "base plate" that a surgeon can screw into two bones in a person's spinal cord to stabilize them.

The base plate screws into the bones (blue, below), and a …

"Sure our damages figure sounds big, but look how big this other number is!" AI-Generated, displayed with permission

This week, Judge Andrews issued an order on the six motions in limine that the parties filed in Sprint Communications Company, L.P. v. Mediacom Communications Corp., C.A. No. 17-1736-RGA (D. Del. Nov. 14, 2022).

The order is short and to the point, and doesn't identify what the MILs relate to. But if the docket shows that there are at least two MILs here worth mentioning, if only because they come up so often.

Prior Proceedings

The defendant first moved to exclude the outcomes of multiple prior cases, as well as pending cases against co-defendants. Plaintiff responded that the prior …

Bookmarks
Chiara F, Unsplash

I thought I'd share an old transcript that has come in handy a number of times since it issued back in 2013, where Judge Andrews made a helpful ruling about how and when patentees must respond to conception date interrogatories—an issue that comes up frequently.

In Vehicle Interface Techs., LLC v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA (D. Del.), the defendant filed a discovery dispute to compel a full response to an interrogatory asking for the date of conception and reduction to practice.

The patentee had responded, but the answer was not very helpful. According to the discovery dispute letter:

[The patentee] stated that the sole inventor . . …