New Cases

New This Week (September 20, 2021)

Menu: Scheduling/Case Management | Discovery | Patent Specific Hearings/Motions | Mediation/Settlement Conferences | Trial

Scheduling/Case Management 

Central District of California (Western Division—Los Angeles)

District Judge George H. Wu.

Lonati, S.P.A. et al v. Soxnet, Inc. et al. – The U.S. District Court for the Central District of California in Los Angeles ordered supplemental briefing from plaintiffs with respect to their Motion for Order Authorizing Service of Process By Alternative Means, pursuant to FRCP 4(f)(3). As part of its motion, plaintiffs indicated that they wished to effect service on defendant as soon as possible so their infringement claims can be adjudicated but reported “that service times through the Hague Convention in China have increased exponentially” due to the COVID-19 pandemic. The Court instructed plaintiffs to provide supplemental briefing, including “to make a showing that they fall under one of the exceptions enumerated in the Hague Convention.” (Case No. 2:20-cv-05539; September 9, 2021).

Northern District of Illinois (Eastern Division—Chicago)

District Judge Virginia M. Kendall

Mantissa Corporation v. First Financial Corporation et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division granted in part and denied in part plaintiff’s Motion To Stay, providing a short stay to “accommodate the immediate health concerns of Plaintiff.” The plaintiff had requested a stay of six months indicating that “the CEO of Plaintiff has an acute medical condition that affects memory and mental capacity, and increases his risk of exposure to the Delta variant of COVID-19 . . . [and complicating] the medical condition in the near term, the CEO and his wife were diagnosed with COVID-19 earlier this week and received antibody treatments on August 31, 2021 in Bay County, Florida.” The plaintiff also noted that the CEO is “actively managing” its positions in the litigation and “is the lead inventor on the patent-in-suit and will attend the claim construction hearing in person as Plaintiff’s witness in this case.” The Court stated that the plaintiff “is not incapacitated, is able to communicate his wishes to his attorneys and is represented by experienced counsel who know what positions he is asserting . . . [and if he] desires to testify at the hearing, he may do so via videoconference.” The Court reset the claim construction hearing from September 14, 2021 to November 4, 2021 at 10 a.m., and instructed the parties to meet and confer and advise the Court if the hearing will proceed via Webex, in person, or a hybrid of both. (Case No. 1:17-cv-009174; September 9, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright

Monolithic Power Systems, Inc. et al v. Meraki Integrated Circuit (Shenzhen) Technology, Ltd. et al. - The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Dismiss Claims I through VI from the First Amended Complaint for lack of personal jurisdiction under Rule 12(b)(2), finding that defendant has not met its burden in showing that personal jurisdiction is improper. As part of its analysis, the Court addressed concerns raised by defendant regarding the burden imposed by subjecting a foreign company to United States law in light of the COVID-19 pandemic. The Court noted that it has made several accommodations in light of the pandemic and that it is “cognizant of the realities this pandemic has brought around the world.”  It pointed to the March 12, 2020 Standing Order Regarding Coronavirus and Court Proceedings to explain that “[t]o the extent any parties have concerns regarding the COVID-19 pandemic, the Court permits persons to appear at ‘hearing[s], deposition[s], mediation[s], or trial[s] . . . by teleconference, videoconference, or other method.’” The Court further indicated that “[a]s the circumstance surrounding the pandemic continue to fluctuate, [it] is willing and able to work with the parties should other concerns arise over the course of litigation.” (Case No. 6:20-cv-00876; September 1, 2021).

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Discovery

District of Delaware (Wilmington)

District Judge Richard G. Andrews

TQ Delta LLC v. Comcast Cable Communications LLC – The U.S. District Court for the District of Delaware in Wilmington issued a Letter of Request For International Judicial Assistance to the appropriate judicial authority of France requesting assistance to obtain evidence, including documentary and testimonial evidence, to be used in a civil proceeding. In the Letter, the Court noted that “should Covid-related restrictions on travel and/or indoor gatherings prevent the examination from being performed in person, the examination can be conducted via videoconference.” (Case No. 1:15-cv-00612; September 8, 2021).

 

Magistrate Judge Christopher J. Burke

Sysmex Corporation et al v. Beckman Coulter, Inc. – The U.S. District Court for the District of Delaware in Wilmington granted defendant’s motion to stay the case pending completion of the deposition of one of the four inventors of the two patents-in-suit, vacating the remaining dates in the current Scheduling Order. As part of its analysis the Court noted that “[d]ue at least in significant part to COVID-related issues,” defendant has not been able to depose the witness and the deposition (if it does not get further postponed) is now scheduled to go forward on September 26-27, 2021, while fact discovery is long closed, the deadline for submitting summary judgment motions is a few days away, and trial is currently scheduled to begin on February 14, 2022. In acknowledging the potential prejudice, the Court stated what “reasonable patent attorney or client representative” would not say “I am unduly prejudiced!” if told “at the beginning of the case that you would only be able to take the deposition testimony of a key inventor (who works for the opposing party, and who should know quite a lot about the issues at play in the case), until long after discovery closes, at a time when the summary judgment process is nearly over and just a few months before trial is to start.” (Case No. 1:19-cv-01642, presiding before District Judge Richard G. Andrews; August 25, 2021).

Northern District of Illinois (Eastern Division—Chicago)

Magistrate Judge Jeffrey Cole

LKQ Corporation et al v. General Motors Company et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago denied plaintiff’s Motion To Compel, with some exceptions, refusing to require live depositions or providing “double the deposition time for remote depositions requiring translators.” The Court did allow for three additional hours and “in order to make depositions taken remotely of witnesses in South Korea more manageable, they will begin at 6:00 pm Chicago time and be broken into two five-hour segments over two evenings – or days, in South Korea.” As part of the Court’s analysis, it rejected the plaintiff’s request to have what the Court considered “mini-trials and oath swearing contests and inevitable challenges to statements in witness affidavits in order to find out if people are constantly working from home or sometimes working from home or have traveled for business, etc., as the plaintiff insists must occur before video depositions – rather than in person depositions – may be ordered.” The Court stated that neither this case nor any other “justifies procedures that threaten the prospective health and safety and peace of mind of deponents, court reporters, and lawyers” noting that “[c]ontrary to the suggestion in plaintiff’s motion, there is, and continues to be, a global pandemic that has, to date, taken the lives of more than 640,000 Americans alone – more lives than were lost by Americans in all of World War II – and whose virulence increases daily.” (Case No. 1:20-cv-02753, presiding before District Judge Thomas M. Durkin; September 9, 2021).

 

Western District of Texas (Austin)

District Judge Alan D. Albright

Align Technology, Inc. v. 3Shape A/S et al.- The U.S. District Court for the Western District of Texas in Waco issued a Request For International Judicial Assistance (Letter Rogatory) to the Ministry of Justice in Denmark to summon a witness, who is a resident of Denmark, to produce documents and provide testimony regarding deposition topics. The Court requested that the examination be conducted via video conference due to the COVID-19 pandemic related restrictions and to all U.S. counsel to join the hearing. (Case No. 6:20-cv-00979; September 7, 2021).

Neonode Smartphone LLC v. Apple Inc. - The U.S. District Court for the Western District of Texas in Waco issued an Amended Letter Of Request For International Judicial Assistance in response to the Stockholm District Court’s Advisory Letter, clarifying and substantially narrowing the requested discovery requested from two individuals. As part of its justification, the Court indicated that the requested testimony was “necessary due to practical problems in having and enforcing the two witnesses . . . to appear in a court in the United States, in particular during the ongoing disruptions resulting from the COVID-19 pandemic.” (Case No. 6:20-cv-00505; September 7, 2021).

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Patent Specific Hearings/Motions

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Japan Display Inc. f/k/a Hitachi Electronic Devices (USA), Inc. et al v. Tianma Microelectronics Co., Ltd.  – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Central District of California pursuant to 28 U.S.C. § 1404(a), finding that defendant failed to demonstrate that litigating in the Central District of California would be “clearly more convenient”.  As part of it analysis in finding that the Administrative Difficulties Flowing from Court Congestion factor weighed against transfer, the Court noted defendant’s assertion that the trial date may be subject to change due to COVID-19 pandemic because of the “restrictions in Japan, which could postpone depositions that must be taken.”  The Court pointed out, however, that it “has a faster time to trial compared to the Central District of California” and found that “the stage of the case has progressed to the point that a transfer would unavoidably extend the time to trial in this matter even further.”   (Case No. 2:20-cv-00283; August 25, 2021).

The Chamberlain Group, Inc. v. Overhead Door Corporation et al. The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Northern District of Texas pursuant to 28 U.S.C.§ 1404(a), finding that defendants failed to show that the Northern District of Texas was “clearly more convenient.” As part of its analysis, the Court found that the first public factor – the administrative difficulties flowing from court congestion – weighed against transfer, in part, based on evidence submitted by plaintiff that the median time between filing and trial is 748 days in the Eastern District and 971 days in the Northern District of Texas. The Court indicated that its “ability to address this motion at a point earlier in time” had been impacted by the fact that “[s]ince March 1, 2021 [the] Court has tried nine jury trials to verdict as a part of addressing the serious backlog caused by the COVID-19 pandemic.”   (Case No. 2:21-cv-00084; September 10, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright

Broadband iTV, Inc. v. DISH Network LLC -- The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Waco Division of the Western District of Texas to the District of Colorado, or in the alternative, to the Austin Division of the Western District of Texas.  As part of its analysis of the factor regarding administrative difficulties flowing from court congestion, the Court considered the time to trial noting that the average time to trial in Colorado for patent cases was over 40 months (pre-COVID-19 pandemic) while the trial in Texas is anticipated to held about 52 weeks after the Markman hearing.  The Court also found that defendant did not provide any evidence that the scheduling of this case has been impacted by the COVID-19 pandemic, noting that the Markman hearing was held on November 13, 2020 in the middle of the pandemic, and the Court “has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic . . . [holding] its first patent jury trial in October 2020 . . . [and] three more in-person jury trials in the first quarter of 2021.” And, without evidence that the District of Colorado is fully open to this date or is capable of safely holding in-person jury trials in the pandemic, the Court found that a transfer to the District of Colorado would cause greater delay. With respect to the alternative request for intra-district transfer, the Court denied the request without prejudice indicating that the Austin courthouse remains closed due to the Covid-19 pandemic, and it is not clear whether it will be open for jury trial in the near future. The Court did instruct defendant that it may refile its Motion to Transfer to the Austin Division if circumstances change when it comes close to the trial. On September 3, 2021, the Court denied defendant’s Motion for Reconsideration which was filed after the Federal Circuit denied its petition for a writ of mandamus but suggested that the Court “should ‘reconsider its determination in light of the appropriate legal standard’ for transfer factors . . .”  The Court reconsidered its previous Section 1404 transfer factor analyses in light of the Federal Circuit’s guidance in the Mandamus Order and appropriate legal standard as clarified in the Apple and Samsung cases, but still ruled that defendant did not meet its “significant burden” to show the District of Colorado is “clearly more convenient”, finding two factors strongly weigh against transfer, including court congestion, one factor strongly favors transfer, and the remaining factors were neutral. (Case No. 6:19-cv-00716; April 20, 2021 and September 3, 2021).

Fintiv, Inc. v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco issued an Order transferring the case back to the Waco Division, after the case had previously been transferred from the Waco Division to the Austin Division pursuant to defendant’s motion to transfer under 28 U.S.C. § 1404(a).  After the action was transferred to the Austin Division in December 2019, the COVID-19 pandemic began in the United Stated in March 2020, and jury trials in the Austin courthouse have largely been suspended since and “it remains uncertain whether the Austin courthouse will be open for jury trial in the foreseeable future.” The Court found that the intervening COVID-19 pandemic has frustrated the original purpose of transferring the action to the Austin Division. The Court further noted that “[i]f this case remains in the Austin Division, the jury trial will remain in limbo for an indefinite period of time.” (Case No. 1-19-cv-01238; September 8, 2021).

Ikorongo Texas LLC et al v. Lyft, Inc.  – The U.S. District Court for the Western District of Texas in Waco denied defendant's Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant had not met its heavy burden to demonstrate that the Northern District of California is a “clearly more convenient” venue than the Western District of Texas. The Court found, in part, that the access to proof and the cost of attendance for willing witnesses weighed in favor or only slightly in favor of transfer while other practical problems that make trial of a case easy, expeditious and inexpensive, and administrative difficulties weighed against transfer with the other factors being neutral. With respect to the administrative difficulties public-interest factor, for which the plaintiffs argued that “the Northern District of California will suffer from more congestion than usual given the continued suspension of in-person proceedings due to the current COVID-19 pandemic”,  the Court pointed to a number of facts such as a January 2022 trial date and the Waco Division’s own patent-specific Order Governing Proceedings ensuring efficient administration of patent cases as indicating “a greater efficiency of bringing cases, especially patent cases, to trial in the Western District of Texas than in the Northern District of California.” On September 1, 2021, the Court granted defendant’s Emergency Motion for Reconsideration of This Court’s Order Denying Transfer, in light of the Federal Circuit’s guidance, ordering that the case be transferred to the Northern District of California. (Case No. 6:20-cv-00258; March 1, 2021 and September 1, 2021).

Ravgen, Inc. v. Quest Diagnostics Incorporated - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Central District of California, finding that the defendant failed to meet its “significant burden” to demonstrate that the Central District of California is “clearly more convenient” than the Western District of Texas. In finding the administrative difficulties flowing from court congestion public-interest factor weighed strongly against transfer, the Court noted that “the median time to trial for patents cases in this Court (the Waco Division) is over 10 months shorter than the 33.6-month median time to trial for patent cases in the CDCA,” while further noting that “the trial backlog in the CDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 would make the time to trial for patent cases, and all cases in general, even longer.” It contrasted this to the Western District of Texas which conducted its first patent jury trial during the COVID-19 pandemic in October 2020, and has since conducted at least seven jury trials, six of which are patent jury trials including five patent jury trials in the Waco courthouse in the first half of 2021 alone. (Case No. 6:20-cv-00972; August 20, 2021).

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Mediation/Settlement Conferences

District of Delaware (Wilmington)

Magistrate Judge Jennifer L. Hall

Best Medical International, Inc. v. Varian Medical Systems, Inc. et al. – The U.S. District Court for the District of Delaware in Wilmington entered an Order Governing Mediation Conference and Mediation Statements, scheduling the Conference for October 2, 2020 at 10:00 a.m., at which time “[a]ll required participants are to report at this time by video conference and to remain available until excused by the Court.” The Order states that “[c]ounsel shall arrange three separate video conference lines to use throughout the mediation process when the mediation begins: (i) a dedicated line for Plaintiffs; (ii) a dedicated line for Defendants; and (iii) a joint line available for both sides should the Judge wish to have discussions with all parties. All lines should remain open for use by counsel and the Court until the mediation is concluded.” On August 20, 2021, the Court issued an Order scheduling the mediation conference to reconvene on October 12, 2021 at 1:00 p.m. via video conference.  The Court also indicated that the previous Order governing mediation remains in effect. (Case No. 1:18-cv-01599, presiding before District Judge Maryellen Noreika; August 20, 2020 and August 20, 2021).

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Trial

Central District of California (Southern Division—Santa Ana)

District Judge David O. Carter

Pinn, Inc. v. Apple Inc. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana reset the jury trial for September 14, 2021 at 9:00 a.m. (PDT) and the pretrial conference for June 14, 2021 at 8:30 a.m. (PDT), after discussing with counsel the Court's schedule and the “expected availability of a jury venire.” On September 3, 2021, the Court continued the jury trial to September 28, 2021 at 8:30 a.m. During a status conference held on September 10, 2021, the Court continued the trial to October 26, 2021 at 8:30 a.m. (Case No. 8:19-cv-01805; March 3, 2021, September 3, 2021 and September 10, 2021).

Northern District of California (Oakland)

Senior District Judge Phyllis J. Hamilton

Cyntec Company, Ltd. v. Chilisin Electronics Corp. et al. – The U.S. District Court for the Northern District of California in Oakland issued a Final Pretrial Order for the 8 day jury trial that is schedule to commence on August 23, 2021.  On September 1, 2021, the Northern District of California jury returned its verdict, finding that the asserted patents were willfully infringed, and that plaintiff was entitled to damages of $1,552,493.00 in lost profits, $320,463.00 in royalties for sales which plaintiff had not proven its entitlement to lost profits. (Case No. 4:18-cv-00939; July 30, 2021 and September 1, 2021).

District Judge Jon S. Tigar

Droplets, Inc. v. Yahoo, et al. – The U.S. District Court for the Northern District of California in Oakland requested the parties to submit a Supplement To The Joint Pretrial Statement consistent with the rulings made at the pretrial conference held on August 13, 2021.  The Statement included a requirement that, unless excused by the Court, “all party-affiliated trial participants (including attorneys, staff, IT Specialists, consultants, party witnesses and party representatives) shall either: (1) be vaccinated for COVID-19 and provide proof of vaccine or (2) test negative for COVID-19 within five days prior to their first appearance at the courthouse (including appearance at voir dire or other proceedings) with confirmed negative results and provide confirmed negative results, prior to entering the courthouse.” Any unvaccinated participant would be required to be tested weekly throughout the trial and provide negative test results each week. The Statement also included the parties’ positions regarding vaccination of jurors, with the plaintiff stating that “the time to object to the impact of a vaccination requirement on the jury pool will be once data about the venire panel in attendance, from which the jury is to be selected, has been made available”, and the defendant agreeing with “the Court’s suggestion to excuse all unvaccinated jurors from jury service for this trial.” The defendant requested, alternatively, that should plaintiff object to sitting only vaccinated jurors that the Court “require any unvaccinated jurors to present a negative Covid-19 test either each week of jury service or until the Delta variant of Covid-19 subsides within the Oakland Division.” The jury trial is set to begin on September 13, 2021. On September 2, 2021, the Court issued an Order Continuing Trial And Setting Case Management Conference granting plaintiff’s unopposed motion for a continuance.  The Court indicated that in light of the ruling it “need not and does not now reach the other issues set forth in [plaintiff’s] motion regarding the composition of the jury or the presence of unvaccinated persons in the courtroom.” In particular, as part of its motion, the plaintiff argued that “proceeding now and excluding unvaccinated jurors would violate the Seventh Amendment and the Jury Selection Act.” The Court indicated that it intended to reset the trial for March 7, 2022 as requested by the parties. (Case No. 4:12-cv-03733; August 13, 2021, August 20, 2021 and September 2, 2021).

District of Delaware (Wilmington)

District Judge Richard G. Andrews

Ingevity Corp., et al. v. BASF Corp. – The U.S. District Court for the District of Delaware in Wilmington granted the plaintiff’s request for a continuance of the jury trial, due to issues related to the COVID-19 pandemic, finding “there is little chance for a successful jury trial on September 14th, and I think it is prudent to continue it now.”  The Court noted that “this is a jury trial, not a bench trial, and, while I believe that most bench trials should be able to be fairly conducted through partial or complete reliance upon video technology, a jury trial is a different animal.” The Court did not, however, continue the August 28, 2020 pretrial conference, indicating in a separate oral order, that it will be held using Skype for business. In an Order After Pretrial Conference, the Court indicated that the jury trial will begin on January 4, 2021 at 9:30 a.m. (EST). The Court indicated that under the present plans trial counsel would be limited to two per side and noted that during the conference it had “explained some of its expectations in relation to COVID-19, and also set a conference on December 14, 2020, at 10 a.m. to further refine them in light of then-current events.” On December 4, 2020, the Court issued an Order resetting the jury trial to begin on September 7, 2021 at 9:30 a.m., and the pretrial conference set for August 20, 2021 at 9:00 a.m. On August 11, 2021, the Court issued a Memorandum Order re: Proposed Pretrial Order, in which it indicated that live witnesses are expected to be in person, not by video. The Court also indicated that it “does not expect to exclude anyone from the courtroom.” On August 28, 2021, the Court entered the Joint Proposed Final Pretrial Order, which indicated that “[g]iven the evolving travel restrictions and guidelines related to the COVID-19 pandemic, the parties will meet-and-confer in good faith to address any accommodations necessary to facilitate witness participation at trial, including any adjustments to whether certain testimony will be presented live or via deposition transcripts.” On September 15, 2021, the District of Delaware jury returned its verdict finding that plaintiff was entitled to compensatory damages of $28,285,714.00 for its antitrust claims and $16,483,475.00 for its tortious interference claims.  (Case No. 1:18-cv-01391; August 3, 2020, August 28, 2020, December 4, 2020, August 11, 2021, August 24, 2021 and September 15, 2021).

Chief Judge Colm F. Connolly

Par Pharmaceutical, Inc. et al v. Eagle Pharmaceuticals, Inc. – The U.S. District Court for the District of Delaware in Wilmington entered a Stipulated Order To Permit Live Trial Testimony, allowing defendant’s expert witness to testify remotely at the in-person bench trial. The expert resides in Germany and anticipates that it would be extremely difficult, if not impossible, to attend the July 7, 2021 trial in person “in light of the ongoing health risks and travel restrictions resulting from the COVID-19 pandemic.” Instead, the witness will travel to Brussels, Belgium to testify live, but remotely, via contemporaneous audio and visual transmission that will be provided by TrialGraphix via its Zoom trial platform. The Order further required that the expert “shall not use any virtual backgrounds unless otherwise agreed upon by the parties and the Court”, and once examination has commenced “there shall be no unrecorded or unnoted communications between [the expert] and any person (including any counsel), by any means, including through telephone, electronic chat, email, or text message, while the trial is on the record.” When trial is off the record, the expert and counsel may communicate by “any means, such as in a ‘break-out room’ or by telephone call or email, as would be permitted for in-person testimony.” The expert was ordered not to communicate with anyone else regarding the substance of his testimony, absent express permission from the Court, once cross examination has begun until he has concluded his testimony on cross examination.  On September 16, 2021, the Court issued its Final Judgment entering judgment in favor of defendant and against plaintiff with respect to the infringement allegations, and dismissing without prejudice defendant’s counterclaims of patent invalidity and unenforceability.  (Case No. 1:18-cv-00823; July 6, 2021 and September 16, 2021).

District Judge Maryellen Noreika

ArcherDX, LLC et al v. QIAGEN Sciences, LLC et al. – The U.S. District Court for the District of Delaware in Wilmington denied defendants’ request for a continuance of the August 23, 2021 jury trial date due to the CDC travel restrictions preventing individuals from Germany and the United Kingdom from travelling to the United States which, it was argued, would adversely affect the ability to present defendants’ case as several witnesses and client representative are located in those countries. Plaintiff responded that defendants assumed that it is impossible for its foreign witnesses to travel to the United States without having attempted to obtain permission to enter the country and failed “to address why the few foreign witnesses they contend are necessary for this US dispute cannot appear live by video.” On August 6, 2021, the Court issued an Order Regarding Live Trial Testimony Received By Remote Means pursuant to the parties’ Stipulation.  Seeking certainty with respect to the ability for foreign corporate representatives or witnesses to participate in the upcoming trial, particularly given that “the recent rise of Covid-19 cases due to the Delta variant has cast further uncertainty on the quarantine rules of each country, and there is no date being reported for the potential lifting of the current travel ban”,  the parties entered a Stipulation “solely intended to approve the use of remote means to facilitate the live testimony of certain witnesses and to facilitate attendance by individuals in excess of the Court’s courtroom limitations.” The specific parameters for the testimony to be received live via remote means will be discussed between the parties and the vendor, and presented to the Court for further discussion prior to the pretrial conference. The matter is scheduled to go to trial by jury on August 23, 2021, and the trial is scheduled to be conducted in-person. On August 20, 2021, the Court issued an Order After Pretrial Conference ordering, among other things, that each side may have no more than three (3) people in the courtroom at any given time and individuals in the courtroom must wear a mask at all times and the mask must be worn properly (i.e., covering the person’s nose and mouth), however, vaccinated counsel may remove his or her mask when examining a witness or making an argument. On August 27, 2021, the District of Delaware jury returned its verdict, finding that the asserted patents were willfully infringed and were not proven invalid by clear and convincing evidence, and that plaintiff was entitled to damages of $841,756.00 in lost profits, $1,593,762.00 in royalties for sales in the United States and $2,240.303.00 in royalties for sales outside the United States. (Case No. 1:18-cv-01019; July 9, 2021, August 6, 2021, August 20, 2021 and August 27, 2021).

District Judge Leonard P. Stark

Sunoco Partners Marketing & Terminals LP v. Powder Springs Logistics, LLC, et al. – The U.S. District Court for the District of Delaware in Wilmington sua sponte ordered the parties to submit a joint status report whether the trial, scheduled to begin on July 20, 2020, could proceed in light of the COVID-19 pandemic. In particular, the parties were directed to meet and confer and submit a joint status report, “advising the Court of their views on, among other things: (i) whether they believe trial can and should proceed on July 20; (ii) whether they believe they have a right to a jury trial and, if so, whether they are willing to waive that right in favor of a bench trial; and (iii) whether, if the trial proceeds on July 20, any witnesses might request to appear by video or other remote technology rather than travel to the courtroom.” The Court will hold a status teleconference on July 15 at 11 a.m. (EDT). The trial is scheduled to begin on August 3, 2020 and the pretrial conference is scheduled for July 27, 2020 at 2 p.m. (EDT). After giving “due consideration to the parties’ input and preferences, as well as the physical and staff limitations of the courtroom and courthouse, and mindful of its utmost duty to take all reasonable precautions to protect the health and safety of the citizens who will be called as jurors, the Court [] decided to impose the type of restrictions on in-court participation it was contemplating in its questions to the parties.”  In particular, the August jury trial will be conducted with no live witnesses testifying in the courtroom, limitations on the representatives in the courtroom for the parties, a simulcast videp feed into another room in the courthouse providing access to interested members of the public and press and other trial members who are not using one of the allotted courtroom slots, and any other special arrangements needed to be made with the Court’s staff to allow the trial to take place partially-remotely, including taking all “necessary steps to eliminate paper exhibits (i.e., absent compelling reason, all exhibits shall be displayed to witnesses and the jury electronically.)” The Court further indicated that it was “working with a District-wide committee to develop protocols for jury selection and for allowing the jury, Court staff, and counsel to interact safely in the courtroom.” It will be providing “further guidance in the coming weeks” how the trial “will differ from the pre-pandemic trials”; for example, “how voir dire will be conducted, where the jury will be seated, where the jury will go during breaks and deliberations, where counsel tables will be placed, how to ensure that exhibits needed for cross-examination are kept secure until needed, whether counsel will be permitted to be present in the same room with witnesses who are being examined remotely, face covering and any other PPE requirements for those [] in the courtroom.” Following a July 13, 2020 teleconference, the jury trial scheduled to begin on August 3, 2020 was continued.  In a July 17, 2020 Order, the Court directed the parties to meet and confer and submit a joint status report providing their views about when the trial should be set for trial.  In addition, the pretrial conference scheduled for July 27, 2020 at 2:00 p.m. (EDT) was converted to a teleconference. On August 20, 2020, the Court entered an Oral Order after “[h]aving reviewed the parties' August 14, 2020 joint status report (D.I. 604), and having considered the parties' positions as well as the ongoing uncertainty regarding resumption of civil jury trials and the uncertainty of the Court's schedule,” ordering the parties to “meet and confer and, on September 4, submit another joint status report, providing their updated positions as to how this case should now proceed.” On October 7, 2020, the Court issued an Oral Order directing the parties to meet and confer and submit another joint status report advising the Court of their and their witnesses' availability for a jury trial to be held between November 30 and December 10. The parties were also advised that the Court has not yet decided not to hold trial beginning on November 5 (with jury selection on November 2 and/or 3) but is considering other options. The Court also informed the parties that it had issued its Jury Trial Restart Guidelines, available on the Court's website, which the Court intends to discuss with the parties when trial is scheduled. After numerous discussions with the parties regarding whether and when to schedule jury trial, the Court indicated it has “found (unfortunately) no date that is reasonable and available to all parties and to the Court.” Therefore, the Court ordered that the trial be continued until a date to be determined, “most likely in 2021 (and certainly NOT in 2020).” It was also noted that “any trial may need to be further rescheduled due to further developments, including the evolving public health situation and other cases (especially criminal cases) that may require trial.” On August 25, 2021, the Court issued an Oral Order setting the final pretrial conference to be held on November 12, 2021 and jury selection and jury trial to be held on November 23, 2021 beginning at 9:00 a.m. (Case No. 1:17-cv-01390; June 9, 2020, June 24, 2020, July 2, 2020, July 13, 2020, July 17, 2020,  August 20, 2020, October 7, 2020, October 13, 2020 and August 25, 2021).

Northern District of Illinois (Eastern Division—Chicago)

District Judge Virginia M. Kendall

Trading Techs. Int'l, Inc. v. BGC Partners, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division issued a Minute Docket Entry indicating that the Court's Trial system adopted during the COVID−19 pandemic has the jury beginning on August 6, 2021. On September 7, 2021, the Northern District of Illinois jury returned its verdict, finding that the patents were not proven invalid and that they were infringed, but not willfully infringed, and that plaintiff was entitled to damages of $6,610,985. (Case No. 1:10-cv-00715; July 16, 2021 and September 7, 2021).

Southern District of New York (Manhattan)

District Judge Gregory H. Woods

Au New Haven, LLC f/k/a Uretek LLC, et al. v. YKK Corp. – On April 21, 2020, the U.S. District Court for the Southern District of New York in Manhattan sua sponte “adjourned sine die” a jury trial scheduled to begin on June 15, 2020, because it “does not anticipate that it will be able to conduct a jury trial in June 2020.” The court indicated that it will reschedule the trial when it has more information about “the timeline for the resumption of normal operations.” In providing further guidance to the parties, however, the court noted that, due to rescheduling also occurring in other matters as a result of the pandemic, it “does not anticipate that it will be able to schedule a trial to begin in this matter until sometime this winter at the earliest—more likely, the trial will not be rescheduled to begin until a date in 2021.” In a May 15, 2020 Text Order, the Court indicated that the final pretrial conference previously scheduled for 10:00 a.m. on May 28, 2020 will still proceed as a telephonic conference, to focus on the parties' pending motions in limine, and that the Court anticipates holding a second final pretrial conference closer to the date of trial. The Court issued a docket order indicating that it will hold a teleconference on August 24, 2020 at 3:30 p.m. The Court further indicated that it “has received some limited guidance suggesting that it may be possible to resume jury trials as early as this fall . . . [and during the teleconference it] intends to discuss the prospect of rescheduling this trial for December 7, 2020, and setting deadlines for supplemental pre−trial submissions, including deadlines for filing motions in limine prompted by the Court's summary judgment opinion.” On September 21, 2020, the Court issued an Order adjourning the jury trial “sine die.” In a joint submission the parties had indicated that they agreed the trial should be scheduled as soon as possible in 2021 when a relatively certain trial date can be determined rather than continuing to hold the current December 7, 2020 alternate trial position described by the Court during a conference call. The parties highlighted “the number of individuals involved (party representatives, witnesses and counsel, including many residing in jurisdictions with COVID-19 travel restrictions and with a resulting mandatory 14-day quarantine period in New York, as well as similar quarantine periods upon their return home), the costs to the parties, the business interruption, the length of trial and the real possibility that [the] case will not proceed to trial in any event on December 7, 2020 due to the court system’s overall caseload, all warrant in favor of a more certain trial date in early 2021.” During a January 12, 2021 conference, the parties were invited to submit a joint letter by no later than January 26, 2021, providing their respective positions regarding the trial schedule in the matter, given the recent developments with the COVID-19 pandemic and in-person proceedings in the District. On January 21, 2021, the Court adjourned the jury trial scheduled for May 21, 2021 after reviewing a joint letter from the parties agreeing that the trial should be continued, in light of the uncertainties caused by the COVID-19 pandemic, to a date in the second half of 2021 when a relatively certain trial date can be determined. The Court further indicated that it intends that the jury trial in the matter will begin on November 29, 2021 at 9:00 a.m. (EST), however the parties were advised that the trial date is subject to the Southern District of New York’s jury trial schedule. On June 15, 2021, the Court issued an Order advising the parties that “a criminal trial has been scheduled for the same date as this case[, and] because such trials enjoy priority under the Court’s internal processes, the parties should prepare for the possibility that this case may be tried at another date.” In an Order issued on August 19, 2021, the Court informed the parties that “as a result of the criminal trial previously noted by the Court and the limited availability of trial dates resulting from the COVID−19 pandemic, the trial currently scheduled to begin on November 29, 2021 is adjourned sine die.” The Court further indicated that, assuming that the Southern District of New York's jury trial protocol remains in place, the Court will make an application for a new trial date in either the first or second quarter of 2022. (Case No. 1:15-cv-03411; April 21, 2020, May 15, 2020,  July 31, 2020, September 21, 2020, January 12, 2021, January 22. 2021, June 15, 2021 and August 19, 2021).

 

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Optis Wireless Tech., LLC, et al. v. Apple Inc. –The U.S. District Court for the Eastern District of Texas’s Marshall Division sua sponte ordered expedited briefing with respect to Defendant’s Motion to Continue Trial, requiring plaintiffs to file any response on or before 5:00 p.m. (CDT) on Friday, July 17, 2020. The Motion requests the Court to continue the August 3, 2020 jury trial until October 5, 2020, due to the increasing caseloads and “undue risks” associated with the COVID-19 pandemic, and assess at that time whether conditions have improved enough to hold the trial. The Court facing a “conundrum of first impression”, denied defendant’s Motion to Continue Trial.  It was “persuaded, on balance, that moving forward with the trial as scheduled is the better choice” given the “precautions crafted, the absolute lack of any reliable information as to when the current pandemic may abate, and the global struggle between these sophisticated parties which only worsens while a resolution is delayed.” While acknowledging that the COVID-19 pandemic “presents serious public health concerns”, the Court indicated that is has “diligently undertaken to put in place reasonable precautions in order to facilitate a full and fair trial, while maintaining the health and safety of those involved.” The Court e-mailed “precise instructions” to counsel for the parties in advance of the July 27, 2020 pretrial conference and indicated that it “intends to provide additional guidance to counsel for the parties as part of the pretrial conference [] including limiting the number of persons seated at counsel tables to three persons per table during voir dire and during trial; directing trial counsel and the jury—once the trial begins—to wear face shields which will allow for a full view of the lawyers’ and jurors’ faces and expressions while providing substantial protection from projection of breath droplets; and encouraging all participants to follow the CDC’s community mitigation-guidelines.” The Court further felt that the plaintiff would be prejudiced because the requested two-month continuance would likely result in a delay of many months, “pushing this trial well into 2021 or 2022.”  Finally, with respect to the due process concerns regarding the inability of certain witnesses to testify in-person at trial due to international travel restrictions, the Court found that real time live video testimony may be presented. On August 11, 2020, the Eastern District of Texas jury returned its verdict, finding that the patents were not proven invalid and that they were willfully infringed, and that plaintiff was entitled to damages of $506,200,000 as a royalty for past sales. On April 14, 2021, the Court granted defendant’s Motion for New Trial as to damages, but denied it all other respects, including as to liability. On August 13, 2021, the Eastern District of Texas jury returned its verdict, finding that the plaintiff was entitled to damages of $300,000,000 as a lump-sum for past and future sales. On September 8, 2021, the Court entered a Final Judgment in accordance with the jury’s unanimous verdict ordering that plaintiff shall recover from defendant the sum of $300,000,000.00 as a lump-sum for past and future sales, but the Court concluded that enhancement of the compensatory award was not warranted under 35 U.S.C. § 284, notwithstanding the jury’s finding of willfulness, and the Court elected not to enhance the damages awarded. (Case No. 2:19-cv-00066; July 15, 2020, July 21, 2020, August 11, 2020, April 14, 2021, August 13, 2021 and September 8, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright 

Fintiv, Inc. v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco issued an Order denying defendant’s Motion To Stay of the jury trial, but “to afford the Federal Circuit more time to resolve [defendant]’s mandamus petition, the Court [continued the] trial for one week, with a new trial date of October 12, 2021.” As part of its analysis, the Court found that the defendant’s reliance on the “surge of COIVD cases does not justify a continuance or stay either.” The Court found unavailing the argument based on “outdated facts”, in particular the Court’s statements back in March 2020 and the Standing Order dated on April 9, 2020. The Court noted that with a much better understanding of COVID, it “has safely conducted six patent jury trials and several other non-patent civil trials and criminal trials during the COVID pandemic between October 2020 and June 2021, with no reported COVID exposure of those involved in any of the trials.” And further noted that “it is even safer to conduct jury trials now compared to early 2021 given that COVID vaccines, which have been proved to be highly effective, are readily available in the United States.” The Court also indicated that “even if the trial is continued to February or March 2022, there is no guarantee that COVID pandemic will subside by then.” (Case No. 1-19-cv-01238; September 16, 2021).

Eastern District of Virginia (Norfolk)

Magistrate Judge Robert J. Krask

Biedermann Technologies GmbH & Co. KG v. K2M, Inc. et al. – The U.S. District Court for the Eastern District of Virginia’s Norfolk Division issued an Order rescheduling the pretrial conference to October 15, 2021 at 9:30 a.m., and determining that it should be conducted remotely using the zoomgov.com platform in keeping with the guidance delineated in General Order No. 2020-16, Case No.2:20mc7, because of the public health emergency posed by the COVID-19 pandemic. On August 19, 2021, the Court granted the parties’ Joint Motion  for Limited Supplementation of Expert Reports and Extension for Related Pre-Trial Disclosures finding that good cause was shown. (Case No. 2:18-cv-00585, presiding before District Judge Mark S. Davis; May 17, 2021 and August 19, 2021).

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