A Blog About Intellectual Property Litigation and the District of Delaware

It seems like only yesterday I was discussing the rare case where a third party moved to unseal the docket in a DE case. In fact, it was 12 days ago -- time flies when blogging.

Time flying
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Well it happened again, and this time we have an opinion.

The intervenors in CBV, Inc. v. ChanBond, LLC, C.A. No. 21-1456 (D. Del. Mar 28, 2023) (Mem. Order) were shareholders in the defendant, Chanbond, who sought to unseal various and sundry filings including the complaint, answer, and briefing on a TRO. The parties (perhaps readers of the blog?) largely agreed to unseal the filings but insisted that the dollar amount of a confidential settlement agreement …

Density Column
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Earlier this month, Judge Williams denied a defendant’s motion to bifurcate a second patent trial in Cirba, Inc. et al v. VMware, Inc., C.A. 19-742, D.I. 1623 (D. Del. Mar. 7, 2023) (oral order). In that case, the patentee had won an initial victory at trial, but the Court later granted a motion for a new trial based on evidentiary issues.

The defendant moved to stay the second trial because nearly all of the patents at issue had been found invalid—or were in danger of being found invalid—during a pending re-exam proceeding. The parties finished briefing, but the Court has not yet ruled or heard oral argument on the motion to stay. …

"From now on, your discovery disputes will be heard at the summit . . . " Alexander Milo, Unsplash

It's always good to know the limits when it comes to discovery disputes. In some cases, parties just can't seem to work together on discovery, and the parties end up bringing a lot of disputes.

At some point, the number of disputes may push the Court over the line. Famously (in Delaware—so perhaps not "famously" at all), former Chief Judge Sleet used to limit parties to three discovery disputes in patent cases before requiring them to seek leave. I don't know of any similar explicit limits set by any of our current judges, but pushing things too far can still …

One of the more common questions to Delaware counsel is "do I need an attorney declaration to accompany exhibits?"

I do declare! There is something a-very wrong with my hands!
I do declare! There is something a-very wrong with my hands! AI-Generated, displayed with permission

The answer, thankfully, is no. No Delaware rule requires them—you can attach those suckers right to your brief and be done with it. Easy peasy (legally speaking).

The lone place I do see them occasionally used is in support of summary judgment motions. One reason is that there's often a lot of exhibits and a declaration can act as a convenient table of contents. I've also sometimes seen it suggested that an attorney declaration might shield the attached exhibits from challenges under FRCP 56(c)(2) "that the …

Coals Fire
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In Continuous Composites, Inc. v. Markforged, Inc., C.A. No. 21-998-MN (D. Del.), after claim construction, the parties filed a stipulation of non-infringement of some of the asserted patents pending appeal to the Federal Circuit.

This is something that happens from time to time in circumstances like this, where the Court's construction means that the patentee cannot show infringement—and where the patentee wants to appeal the construction without having to litigate further.

In Continuous Composites, the parties stipulated that the Court would enter judgement of non-infringement on the patents with the claim construction issue, whenever the Court enters judgment on one remaining patent that apparently lacked that issue:

In view of the Court’s …

Subway platform
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Today Judge Andrews issued a memorandum order addressing a motion to dismiss in Metrom Rail, LLC v. Siemens Mobility, Inc., C.A. No. 22-49-RGA (D. Del.). He denied the motion (noting that "Allegations of direct infringement do not require much"), but questioned why the patent action was filed in Delaware at all:

The Court cannot help but note that it appears that the case should be transferred to the Southern District of New York, which would clearly have a much greater interest in a case that is all about the New York MTA [the Metropolitan Transportation Authority], its bid processes, and Plaintiff's allegations of nefariousness in connection with the same. Perhaps there is …

As a lawyer I am a creature of rules. Bound in a cage of local rules, standing orders and conventions, I sometimes struggle to see the possibilities that lay beyond. What might be seized if we broke those bonds?

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It turns out, nothing good.

Few cases illustrate this lesson better than Bausch & Lomb Inc. v. SBH Holdings LLC C.A. No. 20-1463-GBW-CJB (D. Del Mar. 20, 2023) (Oral Order). Earlier this month (following a bit of a trend in the district), Judge Burke issued an oral order requiring the defendant to clarify its claim construction positions:

The Court, having reviewed the parties' Joint Claim Construction Chart ("JCCC"), hereby ORDERS that by no later …

This is the kind of engine that has structure.
This is the kind of engine that has structure. Markus Spiske, Unsplash

There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.

Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.

Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:

I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).

The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff ...

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Judge Norieka issued a notable oral order earlier this week in Neurocrine Biosciences, Inc. v. Lupin Limited, C.A. No. 21-1042-MN (D. Del.).

The context is not fully clear from the docket, but it looks like the parties contacted the Court to initiate a discovery dispute regarding the sufficiency of the plaintiff's document collection efforts. But, instead of issuing the typical order starting the process, Judge Noreika ordered the parties to meet-and-confer again and set some expectations as to how the Court will handle the dispute:

ORAL ORDER - The parties have requested a discovery dispute teleconference regarding Defendants' request for discovery into the search methods Plaintiff used to find responsive documents. IT IS HEREBY ORDERED that the parties shall meet and confer again. Thereafter, on or before 5:00 PM on 3/20/2023 [five days from the order], the parties shall provide the Court with the current version of the discovery requests, explaining what part or parts remain in dispute. The Court will not act as a negotiator to whittle down overly broad requests. Therefore, Defendants should propose requests of appropriate scope with the understanding that the Court may simply deny requests that are overly broad on their face.

It looks like the Court may be trying out a more efficient way to resolve disputes over discovery requests.

As Judge Connolly famously noted in his "star chamber" opinion, part of the reason over-redaction is a problem is that the parties themselves have no real incentive to challenge one another on the issue. It's akin to a tragedy of the commons scenario, but worse—the parties suffer no adverse consequences from the redactions at all, because they can see all of the filings, it is only the public at large that is left with questions.

This unfortunate equilibrium is disrupted, however, when a third party requests unsealing.

It Is I, an Interested Third Party!
It Is I, an Interested Third Party! AI-Generated, displayed with permission

That's exactly what happened this week in United States of America v. Gilead Sciences, Inc., C.A No. 19-2103-MN. For those who haven't been following this fascinating case, the CDC has various patents on an HIV prophylaxis regimen (known as PrEP in the biz), following years of research into the issue. Gilead markets two blockbuster PrEP drugs—Truvada and Descovy—which the government alleges infringe those patents. The Complaint is rife with allegations that Gilead has been gouging customers with its pricing for these allegedly infringing drugs. See D.I. 1 at 48-49 ("Another critical barrier to increasing access to PrEP in the United States has been
the cost of Truvada®, which presently is only sold by Gilead"; "Many AIDS activists and many in the medical community have criticized Truvada’s price in the United States, particularly in light of HHS’s patents, the Government’s funding of clinical research on PrEP, and the relatively low cost at which Gilead apparently makes the product").

TL;DR, the case is a big deal even to normies. So, it probably shouldn't have come as a huge surprise when ...