A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Richard G. Andrews

As jury trials in Delaware continue to get back on track, the judges' trial calendars are jam packed for 2021 and 2022. What does this mean if you have an upcoming trial date and need to move it?

In some cases, you might be out of luck. Yesterday, Judge Andrews denied an unopposed motion to extend a case schedule that would have pushed trial from June 2022 to September 2022. The purpose for the request was to provide additional time to complete fact discovery.

In an oral order, Judge Andrews rejected the request outright:

The Parties say they need more time, but simply needing more time is not good cause. The Court's schedule is already completely full …

When parties seek to dismiss or stay a patent dispute in federal court in favor of arbitration pursuant to an agreement, someone needs to decide whether the parties' dispute falls within the scope of the agreement's arbitration provision (and is thus arbitrable). Whether that question is decided by the court or the arbitrator depends on the language of the agreement. So, in essence, the court must interpret the agreement for the limited purpose of divining the parties' intent (or lack thereof) to shunt arbitrability to the arbitrator.

In a recent order in Nidec Corp. v. Seagate Technology LLC, C.A. No. 21-52-RGA, Judge Andrews found...

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

Whenever collateral estoppel comes up in a patent case, it usually generates some interesting discussion. Yesterday's decision from Judge Andrews in TQ Delta v. 2Wire is no different.

After the Federal Circuit reversed a PTAB determination of unpatentability on an unasserted claim, the plaintiff moved to estop the defendant from challenging the validity of two related claims in the district court litigation.

Judge Andrews concluded that summary judgment was inappropriate because the defendant adequately "explained how the differences between the [asserted claims] and [the adjudicated claim] alter the invalidity analysis[,]" but he also addressed an interesting question: Is a petitioner "fully represented" in an IPR when another petitioner is taking the laboring oar before the PTAB?

The defendant …

Industry standards can be helpful for a patentee tasked with proving infringement of standard-compliant products. Standards often lay out mandatory features, such that a patentee may be able to use infringement of the standard itself as a shortcut to establish infringement of a standard-compliant product (although there are limits on that type of proof, including that the patent must cover all possible implementations of the standard).

The question of whether infringement by a standard can be used to shortcut infringement proofs for a product recently came up before Judge Andrews on a summary judgment motion by the plaintiff in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA.

The defendant's products in TQ Delta were accused of implementing an infringing functionality . . .

Last month we wrote about Judge Andrews' order that a plaintiff who won a default judgment against Aston Martin, LLC must file any settlement agreements from seven other patent suits, in order to help the Court determine the proper damages award.

Plaintiff has now responded.

We wondered in our last post whether the Court would permit plaintiff to file under seal. The answer is yes: the Court found the following short paragraph from the briefing to be sufficient to permit filing the settlement agreements and settlement amounts under seal:

Good cause exists to seal these Settlement and License Agreements. The Agreements contain confidentiality clauses such that if the documents were not filed under seal, Plaintiff might be in breach …

As jury trials re-start in this District and elsewhere, litigants may wonder whether and how to help the jury understand the impact of the pandemic on the court and, more specifically, the proceedings they are about to witness. In at least one case in this District, competing jury instructions touching on those topics were proposed by the parties just prior to the start of a jury trial last month. In that case—In re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA—the parties took slightly different approaches, although they seemed to agree that the jury should be instructed not to read anything into the precautionary measures taken by the Court and the parties. ...

Overflowing with delicious facts
Overflowing with delicious facts Natalie Grainger, Unsplash

The seeds of a motion to dismiss are often planted in the complaint. To some extent this is unavoidable—for instance, try asserting software patent claims without raising the specter of a § 101 motion. Sometimes, though, you can avoid a motion to dismiss by just including a little less detail in the complaint—and especially by not referring to troublesome documents.

Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., C.A. No, 20-662-RGA, D.I. 103 (D. Del. May 28, 2021) is a good example (we discussed another aspect of this opinion last week). There, Icon brought counterclaims for patent infringement related to a series of patents that the parties had previously litigated, resulting in a settlement agreement and license. Peloton moved to dismiss those claims, arguing that the referenced license disposed of the infringement claims.

The interesting bit is that the license itself was not attached to Icon's counterclaims, but was only supplied to the Court with Peloton's motion to dismiss. In ruling on the motion, Judge Andrews noted that this would normally convert the 12(b)(6) motion into a summary judgment motion, unless ...

In certain circumstances, a stay pending the resolution of an ITC Section 337 Investigation is automatic. But where the overlap in patents is not total, whether to stay proceedings on the non-overlapping patents is left to the discretion of the district court judge.

The USITC in Washington DC, Toytoy at the English Wikipedia, CC BY-SA 3.0 , via Wikimedia Commons, CC BY-SA 2.0

Judge Andrews recently exercised that discretion to deny a request to continue a stay for non-overlapping patents where one of twelve patents-in-suit was still pending at the ITC.

Initially, five of the twelve patents had been asserted at the ITC. Of those, three were involved in an appeal to the Federal Circuit, and just one was remanded to the ITC.

The defendant in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-RGA argued that all five overlapping patents were subject to a mandatory stay under 28 U.S.C. § 1659(a). ...

These are not Pelotons.
These are not Pelotons. Jonathan Petit, Unsplash

In competitor cases, parties sometimes include Lanham Act claims alongside patent claims. That's what happened in Peloton Interactive, Inc. v. Icon Health & Fitness, Inc., C.A. No. 20-662-RGA (D. Del.), where both sides brought patent and Lanham Act claims or counterclaims.

Peloton moved to dismiss defendant Icon's Lanham Act counterclaims, which alleged that Peloton had made various false and misleading statements concerning things like whether the Peloton bike was the "first of its kind" and unique among its market, along with statements about Peloton music offerings.

Peloton argued that Lanham Act claims are subject to a higher pleading standard, relying on an old E.D. Pa. case from long before the Supreme Court's decisions on this issue in Twombly / Iqbal:

Peloton urges the Court to apply an “intermediate” standard that first appeared in Max Daetwyler Corp. v. Input Graphics Inc, 608 F. Supp. 1549, 1556 (E.D. Pa. 1985). The Court held, “[i]n litigation in which one party is charged with making false statements, it is important that the party charged be provided with sufficiently detailed allegations regarding the nature of the alleged falsehoods to allow him to make a proper defense.” . . . ICON argues that the standard articulated in Max Daetwyler is inappropriate because it was decided before Twombly and Iqbal. . . . Additionally, there is disagreement within district courts in the Third Circuit as to its applicability. . . .

Judge Andrews declined to apply the heightened standard, quoting