We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.
Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:
Plaintiff's Choice of Forum: This always favors plaintiff, and …
Patent lawyers often lament their clients' casual correspondence, which sometimes read like the villains monologue that might close the first act of an early 80's Disney Movie.
Today's case, Jackson v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 309 (D. Del. Aug. 2, 2024), is the rare case where those casual communications are helpful to the case.
You see, NuVasive had a prior agreement with Dr. Jackson that included a covenant not "assert . . . any claim that the development, manufacture . . . or exploitation of any NuVasive prodect . . . infringes and of the Jackson Group's rights" in a variety of defined IP categories. So, when Dr. Jackson sued for infringement of various patents not specifically listed in the agreement, the parties naturally disputed whether they fell within the terms of the covenant.
This leads us to an internal email from one of NuVasive's IP attorneys who worked on the agreement which helpfully stated, "I just want to ensure we’re as clear as possible that we’re FOREVER FREE FROM JACKSON (and any down-stream licensees/assignees) based on the rights we originally obtained and are now obtaining.”
Plaintiff moved in limine to exclude this email as hearsay, arguing that NuVasive would use it to prove the truth of the statement that they "were obtaining" rights that would leave them "FOREVER FREE" of Jackson.
Judge Andrews, however, found that the statement could be admitted subject to a limiting instruction:
Mr. Spangler's live testimony about what he wanted to achieve in the 2014 Agreement is not hearsay. The email clearly expresses Mr. Spangler's goal in the negotiations, which is evidence of his motive, intent, and plan. See Fed. R. Evid. 803(3). His motive, intent, and plan, in conjunction with other evidence, appear to be relevant to proving two of Defendant's counterclaims . . . I agree with Defendant that if Mr. Spangler's testimony were challenged, as it seems almost certainly likely to be, at least impliedly, the email would not be hearsay if offered in response to that challenge. Fed. R. Evid. 801(d)(l)(B) . . . . Thus, I will admit the email. The motion (D.I. 293) is DENIED. There is a bit of hearsay within the email. If Plaintiff wants me to give a limiting instruction in connection with that bit, Plaintiff is ORDERED to submit any such proposal before the pretrial conference is held.
Id. at 3-4.
I for one find it amusing that this rare example of a communication helpful to a case was authored by an attorney. It's probably good advice to all you in-house folks out there—send the occasional email to your buds explaining that you're totally in the right. It might turn out to be important one day.
It's usually risky to send long, unsolicited letters to the Court seeking relief, particularly with extensive argument. Generally you are well served to keep letters short and limited or you may annoy the Court.
The Court frequently says that it prefers parties to make requests for relief by motion rather than letter. This is even included most (maybe all) of the judges' form scheduling orders:
Applications by Motion. Except as otherwise specified herein, any application to the Court shall be by written motion. Any non-dispositive motion should contain the statement required by Local Rule 7.1.1 [that the parties have verbally met-and-conferred with local counsel on the line].
But the Court doesn't always enforce this. It's not …
Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.
Judge Andrews issued an interesting decision yesterday that illustrates the unique difficulties of proving infringement of a means + function claim.
In ViaTech Techs., Inc. v. Adobe Inc., C.A. No. 20-538-RGA (D. Del. July 17, 2024), the Court construed a means + term as having two functions:
Sometimes I wonder what it might have been like to be on a patent jury in 1840. The claim at issue is 12 words, something like "a machine for curing drunkenness through violent shaking, operated by a crank."
(Eds. note - is that a haiku?)
A be-wigged and mustachioed defense lawyer argues that it was really more of a swivel than a crank, and anyways it was well known in the prior art that drunkenness could be cured by shaking the inebriated patient manually, and thus no patent should have issued.
The jury nods in agreement at these self-evident truths, and then goes on to deliver a verdict after a brief luncheon of organ meat pies. Justice, like lunch, is served.
Those halcyon days are, of course, long gone as evidenced by Judge Andrews' opinion in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del. May 17, 2024) (Mem. Op.), which dealt with a claim (one of many) that was 424 words long.
The opinion on the various post-trial motion goes into great detail about the difficulties of presenting a coherent trial on such complicated software claims:
Much of the trial testimony on infringement can only be understood, if at all, with great effort. The claims are very long and complicated. For example, claim 1 of the '287 patent is 424 words long. At trial, Express Mobile divided the claims into four parts, which it color-coded as red, green, gold, and blue. The testimony of Plaintiffs technical expert about how Shopify's system worked was intermingled with references to its meeting, e.g., the "red group of limitations." The testimony at times lacked the usual one-to-one correspondence with the specific limitations in the claims, and that combined with the color-coding means that trying to figure out whether there was sufficient evidence to show infringement is difficult.
Id. at 9 (internal citations omitted).
Given that description, I was surprised to see that the patentee had actually prevailed at trial to the tune of $40,000,000. Judge Andrews apparently agreed because he ...
As we've mentioned previously, it has been Judge Andrews' practice for the past couple years to summarily reject filings that seal exhibits in their entirety, with an order like the following:
The redacted filings (D.I. 453 , 454 , and 458 ) are REJECTED because parts of them are redacted in their entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting …
Judge Andrews' form scheduling order for patent cases requires a joint claim chart. In that chart, in addition to listing the constructions, the Court requires the parties to explain why the parties are seeking construction of each term:
The Joint Claim Construction Chart should include an explanation of why resolution of the dispute makes a difference.
Judge Andrews added this requirement in early 2023. I haven't seen much activity on his dockets related to it—until last week.
In Belden Canada ULC v. CommScope, Inc., C.A. No. 22-782-RGA (D. Del.), the parties filed a joint claim construction chart. The chart included 21 terms and, each time, the parties …
Look, I get it. We write about redactions alot. Andrew wrote about redactions yesterday. I begged him not to, but he was like "shut up, I do what I want" before threatening me with the broken end of a bottle.
But alas, I have lived long enough to see myself become the villain of this blog. Judge Andrews issued an opinion the other day that had some guidance on redactions that was too helpful not to share (if a bit disheartening for the budding redactors). Both parties in Regenxbio Inc. f/k/a ReGenX v. Sarepta Therapeutics, Inc., C.A. No. 20-1226, D.I. 249 (D. Del Feb 22, 2024) (Oral Order) filed timely notices of …
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA-SRF (D. Del.), plaintiff asserted infringement of claims from six patents. Back in July, 2023, Judge Andrews ordered the plaintiff to narrow its case to seven asserted claims across all of the patents prior to trial, which is set for Monday, February 26, 2024.
On Tuesday of this week, the Court issued its ruling on several pre-trial claim construction disputes. Plaintiff lost some of the disputes and, apparently, decided that it needed to stipulate to non-infringement of that claim.
With one of its seven claims out of the case, and with less than a week to go before trial, Plaintiff sought leave to re-assert one …
Here at IP/DE, we try to have substantive, funny posts where we can all learn something about litigation in DE while being mildly amused.
Sometimes, though, all we get to be is mildly amused. This will be one of those posts.
Just look at this oral order:
ORAL ORDER: The deadline for Waydoos brief in opposition to the Motion for Permanent Injunction is extended to five minutes after I resolve the pending motion to withdraw (assuming I permit withdrawal) or until a date to be set (assuming I deny permission to withdraw). I note that the record to date appears to support the conclusion that Waydoo is …
