Case 1:16-cv-00041-CFC Document 269 Filed 05/14/19 Page 1 of 4 PageID #: 11380
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH M ARKE T S TRE ET
`P.O. B OX 1347
`WI L M IN GTON, DE L AWARE 19899-1347
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`(302) 658-9200
`(302) 658-3989 FAX
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`MICHAEL J. FLYNN
`(302) 351-9661
`mflynn@mnat.com
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`May 14, 2019
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`VIA ELECTRONIC FILING
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`The Honorable Colm F. Connolly
`United States District Court
` for the District of Delaware
`844 King Street
`Wilmington, DE 19801-3555
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`Re:
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`f’real Foods, LLC et al. v. Hamilton Beach Brands, Inc. et al.,
`C.A. No. 16-41-CFC
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`Dear Judge Connolly:
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`Pursuant to the Court’s direction following the jury’s verdict on May 3,
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`2019, the parties have conferred on how to proceed with entry of judgment and
`post-trial issues.
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`The parties have agreed that: (1) no party will file any post-trial motion or
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`appeal related to the ’377 patent; and (2) that entry of judgment is warranted in
`favor of Plaintiffs on Defendants’ affirmative defenses and counterclaims of
`inequitable conduct and antitrust violations (see D.I. 10, Counterclaim Counts IX
`and X).
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`The parties have been unable to reach agreement on the issues related to the
`timing of any entry of judgment, invalidity briefing under 35 U.S.C. § 112, and
`post-trial briefing, and present their respective positions below. The parties are
`available at the Court’s convenience to discuss these issues.
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`Entry of Judgment
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`Plaintiffs’ Position: Plaintiffs request that the Court enter judgment based
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`on the jury’s verdict, the Court’s grant of Plaintiffs’ motion for judgment as a
`matter of law on Defendants’ inventorship claim during trial, and the issues
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`Case 1:16-cv-00041-CFC Document 269 Filed 05/14/19 Page 2 of 4 PageID #: 11381
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`The Honorable Colm F. Connolly
`May 14, 2019
`Page 2
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`decided by the Court on summary judgment. Plaintiffs’ proposed form of
`Judgment is attached as Exhibit A.
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`Defendants’ Position: It is Defendants’ position that before any judgment
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`can or should be entered, the outstanding 35 U.S.C. § 112 issues concerning
`invalidity of the asserted claims of the ’658 patent and claim 22 of the ’150 patent
`should be decided, separate from post-trial motions. Because Plaintiffs seek entry
`of a judgment before § 112 is determined for those claims, Defendants propose a
`two-phased schedule, the second phase to proceed after the § 112 issues are
`decided and judgment is entered (including the Court’s grant of Defendants’
`motion for judgment as a matter of law on Plaintiffs’ inducement claims during
`trial).
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`Briefing on Indefiniteness Issues
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`Defendants intend to move for a judgment of invalidity of Claims 1, 5, 6, 10,
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`and 11 of the ’658 patent and Claim 22 of the ’150 patent based on indefiniteness
`of the “sufficient mass” limitations under 35 U.S.C. § 112. The parties have
`agreed to a briefing schedule of May 22, 2019, for Defendants’ opening brief; May
`30, 2019, for Plaintiffs’ opposition brief; and June 5, 2019, for Defendants’ reply
`brief. The parties further agree that the briefs shall be limited to the current record
`in the case.
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`Plaintiffs’ Position: Because indefiniteness of the ’377 patent is no longer
`at issue, Plaintiffs propose that the briefing be limited to 1,250 words for opening
`and opposition briefs, and 625 words for Defendants’ reply brief.
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`Defendants’ Position: Defendants chose not to present testimony and
`evidence at trial about the unresolved facts related to the outstanding § 112 issues
`based on the parties’ trial agreement. That agreement provided that all remaining §
`112 issues would be taken up after trial following 10-10-5 page briefing, without
`regard to how many § 112 issues were actually pressed in that briefing. 4/29/19
`Tr. at 11:2 – 12:9. The parties’ briefing agreement should be honored with the 10-
`10-5 page briefing limits.
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`Case 1:16-cv-00041-CFC Document 269 Filed 05/14/19 Page 3 of 4 PageID #: 11382
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`The Honorable Colm F. Connolly
`May 14, 2019
`Page 3
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`Post-Trial Motions:
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`Plaintiffs’ Position: Plaintiffs propose that within 28 days of entry of
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`judgment (but no later than June 20, 2019), the parties shall file all post-trial
`motions, including motions under Fed. R. Civ. P. 50(b) or 59; motions to declare
`the case exceptional under 35 U.S.C. § 285 and for attorneys’ fees1; motions for
`pre- and post-judgment interest, supplemental damages, on-going royalties or
`accounting; and motions for permanent injunction.
`Plaintiffs further propose that opening briefs on such motions be filed on
`June 20, 2019 (limited to 10,000 words), opposition briefs be filed on July 18,
`2019 (limited to 10,000 words), and reply briefs be filed on July 31, 2019 (limited
`to 5,000 words). If Defendants’ move to stay an injunction, the opening brief shall
`be due on July 18, 2019, (limited to 2,500 words), Plaintiffs’ opposition shall be
`due on July 31, 2019, (limited to 2,500 words), and Defendants’ reply brief shall
`be due on August 7, 2019, (limited to 1,250 words).
`Plaintiffs’ proposed order on the motion and briefing schedule is attached as
`Exhibit B.
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`Defendants’ Position: Defendants’ proposed second phase should occur
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`after the Court decides the outstanding invalidity issues under 35 U.S.C. § 112 and
`enters judgment, as follows: 28 days after judgment – Post-trial opening briefs
`(combined 12,500 words per side); 28 days after opening – Post-trial opposition
`briefs (combined 12,500 words per side); and 14 days after opposition – Post-trial
`reply briefs (combined 6,250 words per side).
`Regarding any motion for a stay of injunction pending appeal, the parties are
`in agreement regarding the length of briefing. However, Defendants propose an
`alternative briefing schedule where the deadline for moving to stay any injunction
`is 28 days after Plaintiffs file their motion for an injunction.
`Defendants’ proposed order on the motion and briefing schedule is attached
`as Exhibit C.
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`Plaintiffs propose that the Court first determine whether Plaintiffs are
`entitled to attorneys’ fees based on a finding that this is an exceptional case under
`35 U.S.C. § 285, with a determination of the attorneys’ fees owed, if any, to follow
`separately.
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`Case 1:16-cv-00041-CFC Document 269 Filed 05/14/19 Page 4 of 4 PageID #: 11383
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`The Honorable Colm F. Connolly
`May 14, 2019
`Page 4
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`cc: All counsel of record
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`Respectfully,
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`Michael J. Flynn (#5333)
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