A Blog About Intellectual Property Litigation and the District of Delaware


October Update on Upcoming D. Del. Jury Trials

Emily S. DiBenedetto, Oct. 11, 2021
COVID-19 Trial Calendar

Upcoming October Jury Trials

Of the six jury trials planned for October, four remain on the schedule as of now, including one patent and one trademark action. One patent jury trial was postponed for a second time this month due to the COVID-19 travel ban.

  • 10/12/2021: USA v. Crocker, C.A. 17-10-LPS (D. Del.): This criminal case was originally scheduled for a jury trial before Judge Stark on October 5, but was postponed at the last minute, likely due to a change in counsel. The trial is now set for October 12.
  • 10/18/2021: Parkell v. Frederick, C.A. 15-718-SB (D. Del.): The parties in this prisoner civil rights case agreed to jury trial before …
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Should I Stay Or Should I Go

Nathan R. Hoeschen, Oct. 7, 2021
IPR Stay

This case is staying right where it is
This case is staying right where it is A funny thing you can have the chance to experience at the Elk Island National Park, Yann Allegre, Unsplash

We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."

Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."

Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay ...

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Judge Andrews No Longer Referring 12(b)(6) Pleading Motions to Magistrate Judges

David M. Fry, Oct. 6, 2021
MTD 12(b)(6)

We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.

Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."

He ultimately concluded that:

  1. "[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
  2. "In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
  3. "I will, …
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Can You Object to an R&R if You Are the Prevailing Party?

Jeff Castellano, Oct. 5, 2021
R&R Objections to R&Rs

We have written about the ways in which a party can, despite its intention to object to a portion of a Magistrate Judge's Report and Recommendation, waive or otherwise fail to properly assert its objections.

However, an even more fundamental issue is whether a party is permitted to object in the first instance (or more specifically, whether a party is entitled to have a Judge rule on the merits of its objections). In a recent decision, Judge Andrews could not find "any reason to consider the merits of Plaintiffs' objections" to an R&R in which the plaintiffs prevailed.

Judge Andrews' decision evokes the general rule that a party cannot appeal from a judgment in its favor. Although Fed. R. Civ. P. 72(b)(2) and 28 U.S.C. § 636(b)(1)(C) - which set out the basic framework for objections to R&Rs on dispositive motions - do not themselves preclude objections by a prevailing party (both discuss objections to the proposed findings and recommendations by "any party"), Judge Andrews suggested that where a party prevails on the substance of the issues before the Magistrate Judge, that party's objections may be "moot."

The Magistrate Judge recommended...

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Judge Hall Chooses a Side in the Split Over Whether the Complaint Itself Can Establish "Knowledge" of a Patent

Andrew E. Russell, Oct. 4, 2021
Willfulness R&R

Divide
Crack on white concrete surface, Brina Blum, Unsplash

We've been following the district court cases holding that a complaint itself cannot establish knowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.

On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:

As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …
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When Filing a § 101 Motion to Dismiss, Don't Short-Change the Argument About Whether a Claim Is Representative

Andrew E. Russell, Oct. 1, 2021
MTD FRCP 12(b)(6)

You know what they say about eggs in baskets...
You know what they say about eggs in baskets... Natalie Rhea, Unsplash

In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.

This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.

A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …

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An Unexpected Outcome of a Motion for Interlocutory Appeal

Nathan R. Hoeschen, Sept. 30, 2021
101 Interlocutory Appeal

Judge Connolly issued an interesting opinion this week granting summary judgment of invalidity as to the three patents-in-suit under § 101, despite competing expert testimony regarding conventionality.

A 101 Motion Denied

Similar to Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015), the patents at issue in CareDx, Inc. v. Natera, Inc., C.A. No. 19-567 (CFC) (CJB), D.I. 183 (D. Del. Sept. 28, 2021) were directed to detecting a natural phenomenon -- here cfDNA in blood that signified a likely transplant rejection. The dispute between the parties thus largely focused on step two of the Alice framework and whether the method described in the patent was merely the application of well-known …

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Don't Overlook the Importance of Technological Comparability

David M. Fry, Sept. 29, 2021
Damages

Pop quiz: What's the easiest way to get prior licenses tossed from your reasonable royalty analysis?

Judge Andrews gave the answer today in a lengthy post-trial opinion in a case involving car seat technology. After determining that the asserted patents were valid and not infringed, he turned to damages.

Both parties relied on prior licenses that "deal generally with childcare products" to support their reasonable royalty analyses, including one "related to folding strollers" and one that "involves embedded chips that can alert a parent as a child safety feature[.]"

Judge Andrews disregarded both licenses because there was no evidence of technological comparability:

Neither party has made clear why the folded stroller in Scotty or the chip-based child safety feature of …
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Judge Noreika Orders Plaintiff to Provide Constructions

Jeff Castellano, Sept. 28, 2021
Claim Construction

The purpose of claim construction is to sort out the plain and ordinary meaning of claim terms to a person of ordinary skill in the art. However, where a party advances "plain and ordinary meaning," by itself, as a claim construction position, the other side and the Court may be left wondering what that party believes the meaning to be, and/or whether there is actually dispute about the meaning that requires Court action.

At least one former Judge in this District expressly forbade parties from arguing for "plain and ordinary meaning" alone, as it "effectively leaves claim construction in the hands of the experts rather than the court." But there are, as we have noted, situations where simply arguing for the adoption of the plain language of the claim term can be a viable claim construction position.

Although Judge Noreika does not make any blanket prohibitions in this regard, she has occasionally ordered parties to explain what they mean by "plain and ordinary meaning." For example...

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Judge Burke Gives His Views on the State of § 101 Motions After Berkheimer

Andrew E. Russell, Sept. 27, 2021
§ 101

We dug up a transcript.
We dug up a transcript. Jon Butterworth, Unsplash

Last week, in deciding a renewed motion to stay pending a § 101 motion to dismiss, Judge Burke commented on the likelihood of success of such motions:

The Court, having reviewed the parties' letters relating to Defendant's request to renew its motion to stay, . . . hereby ORDERS that the request is DENIED. . . . [I]n light of the circumstances here (including the statistical unlikelihood of prevailing on a Section 101 motion to dismiss as to each of the four separate patents−in−suit), the Court concludes a stay is not warranted.

Defendant had renewed the motion to stay after Judge Burke denied it in late April. That transcript was …

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