A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: July 2020

Remember these?
Remember these? Tim Gouw, Unsplash

It can be tough to get late-produced theories or evidence excluded in Delaware, because the Court must apply the permissive Pennypack factors that typically favor admission.

The factors include prejudice, ability to cure any prejudice, disruption of trial, and bad faith/willfulness.

But lately, the Court seems to be granting more motions to strike such theories. Today, Judge Andrews granted a motion to strike a late DOE theory offered for the first time in a reply report.

Judge Andrews Isn't Messing Around

He shot down the Pennypack factors in four short and to-the point paragraphs.

As to the first factor, he found prejudice because admission of a late theory requires …

Delaware suspended jury trials on March 18, 2020 and they are currently not scheduled to resume until the end of August. Although bench trials are technically allowed under this scheduling order,only one has taken place so far.

With this major time-sink gone, it struck IP/DE that we might see more opinions being issued faster. But so far this does not seem to be the case.

According to DocketNavigator, the Court issued 25 discrete opinions on 12(b)(6) motions between March 18th and last week (not counting decisions on objections to R&R's), with an average decision time of 164 days from the filing of the last brief. During the same period last year, however, the Court issued 32 such opinions, …

CDC / Alissa Eckert, MS; Dan Higgins, MAMS

This afternoon, Judge Andrews set guidelines for a bench trial that's scheduled to start on September 14, 2020. The trial will include some live witness testimony (from "the five or so witnesses who are able to testify in person"), along with video testimony from "[t]he three or so witnesses who are unable or unwilling to testify in person[.]"

Only a small number of attorneys will be allowed in the courtroom ("probably two per side"), and "[m]asking and social distancing will be enforced." Everyone else will have to watch the proceedings via live stream, with the expectation "that very few people will decide it is necessary to come to the courthouse."

Stay tuned …

This morning, Docket Navigator covered Judge Bryson's D. Del. discovery opinion that was made public this week, focusing on his denial of a motion to strike errata to a 30(b)(6) deposition transcript.

But there are (at least) three other interesting points about the errata in the opinion:

  • COVID issues make deposition errata more necessary:
Mr. Rothrock had to prepare for his deposition under difficult circumstances, including having to consult remotely with others in the company. Mr. Rothrock understandably could have made a mistake during his deposition in light of the numerous topics and challenging circumstances in which he was forced to prepare. Given those circumstances, I will not disregard Mr. Rothrock’s errata.
  • The Court noted that, as usual, …

In both common usage and patent drafting, "computer" has become shorthand for an incredibly broad range of hardware and software, across almost every possible technological space. The breadth of meaning attributable to that single word can be a challenge for litigants and courts working through issues of claim construction or other issues (e.g., Section 101 motions, in which references to concrete computer components can lift a patent out of abstractness, and references to generic components can doom it). On the one hand, "computer" is readily understood by almost everyone in a general sense; on the other, standing alone, it has no specific meaning.

Judge Noreika recently addressed the question of whether a claimed "'computer . . . to computationally' obtain, change, or calculate specified aspects of the radiation beam arrangement or weights" should be construed as a means-plus-function term under 35 U.S.C. § 112, ¶ 6 (pre-AIA).

A Crack
Crack on white concrete surface, Brina Blum, Unsplash

Two opinions in the past week have come to differing conclusions as to whether the recitation of claim elements in a complaint is sufficient to state a plausible allegation of infringement.

Recitation of Claim Elements Helpful

In the first, Dynamic Data Technologies, LLC v. Brightcove Inc., No. 19-1190-CFC (D. Del. July 20, 2020), the Court denied a 12(b)(6) motion to dismiss an allegation of direct infringement, stating that it was sufficient to:

identif[y] products accused of infringing each of the asserted patents, identif[y] at least one claim of each asserted patent that the accused products infringe, and describe[] how those products infringe the identified claim.

To show …

Cell Tower
Cell Tower Ben Vaughn, Unsplash

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …

While pre-institution stays pending IPR are usually seen as disfavored in this District, they are occasionally granted. The circumstances must be right, however.

Judge Connolly recently ordered a stay in Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 20-0104-CFC pending IPRs that had been filed—but not instituted—on all asserted claims.

He noted that a related action had already been stayed pending IPR, and that the defendants had agreed "to forgo their inequitable conduct counterclaims and defenses in both actions," and found good cause to stay. As a condition of the stay, he required that defendants dismiss their inequitable conduct defenses and counterclaims, and ordered that they would be "barred" from pursuing those defenses in both actions...

Gavel, Bill Oxford, Unsplash

Law360 reports bipartisan support for an upcoming bill that would create 65 new judgeships, including one in the District of Delaware.

It may not sound like much, but a single new DE judgeship would be a 25% increase in the number of district court judges here.

The District Court hasn't expanded since 1984, and it consistently ranks among the busiest district courts. This year it ranked third in weighted filings per judgeship (just barely behind number two, the S. D. Indiana). More than a quarter of all 2019 patent cases were filed in Delaware.

Of course, there has been talk of a new DE judgeship before and nothing has come of it. So we'll …