Posts Tagged: "U.S. District Court for the District of Delaware"

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a petition for writ of mandamus asking the Delaware district court to vacate an order to produce certain documents to ensure compliance with Chief Judge Connolly’s standing orders on initial disclosures in patent litigation cases. Nimitz Technologies LLC petitioned the CAFC asking it to vacate a November 10, 2022, order by the Delaware court demanding Nimitz produce documents including communications between Nimitz owner, Mark Hall, his counsel, and patent assertion entity IP Edge and the related entity, Mavexar. Following a failure to timely comply with the standing orders, Nimitz had initially told the court that Hall was the sole owner and LLC member of Nimitz and asserted in a statement that Nimitz “has not entered into any arrangement with a Third-Party Funder, as defined in the Court’s Standing Order Regarding Third-Party Litigation Funding Arrangements.”

Heightened mandatory initial disclosures in patent litigation may affect a client’s decision to pursue litigation in a forum, especially if there is a risk (real or perceived) of having to disclose sensitive company information from the outset of litigation. In the District of Delaware, there has been much attention on recent requirements for transparency regarding litigation funding and company and/or patent ownership issued by Chief Judge Colm Connolly. The Chief Judge’s fervent enforcement of those requirements has prompted a writ of mandamus and potential review by the Federal Circuit. Although the propriety of the third-party litigation funding order may be reviewed by the Federal Circuit, best practices for complying with both the third-party litigation funding and Rule 7.1 Standing Orders will be discussed, along with potential impact of those orders on patent litigation in the long term, and considerations of whether certain information could be sealed.

After a client prevails in patent litigation in the United States District Court for the District of Delaware, the client often wants to know whether it can obtain its attorneys’ fees from the opposing party. The answer is yes, but only if the court finds exceptionality under 35 U.S.C. § 285, which states “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” (Although 35 U.S.C. § 285 applies to patent litigation in all United States district courts, this article focuses only on recent decisions of the District of Delaware. Another tool available to clients are enhanced damages claims under 35 U.S.C. § 284. Damages under Section 284, however, are “reserved for egregious cases typified by willful misconduct” and are not a focus of this article.) 

On May 6, the U.S. Court of Appeals for the Federal Circuit (CAFC), reversed in part, affirmed in part, vacated in part, dismissed in part, and remanded a judgment in an appeal from the U.S. District Court for the District of Delaware. L’Oréal USA, Inc., L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC. (collectively, “L’Oréal”) appealed the district court’s ruling in favor of plaintiffs Liqwd, Inc. and Olaplex, LLC, which sued L’Oréal for patent infringement, misappropriation of trade secrets, and breach of a non-disclosure agreement.