A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: September 2020

We've Found the Bottom: A Claim Construction So Unsupportable that It Fails the Rule 12 Plausibility Standard

Andrew E. Russell, Sept. 30, 2020
MTD § 101

The most famous use of the phrase
The most famous use of the phrase "self-evident"? Engraving by William J. Stone

In ruling on § 101 motions to dismiss, the Court typically adopts plaintiff's constructions outright, if plaintiff offers any. Those constructions may or may not be enough to avoid dismissal, but I can't recall any instance where the District of Delaware actually had to reject a construction as implausible under the FRCP 12(b)(6) standard.

Until now. In Synkloud Tech. v. HP, Inc., C.A. No. 19-1360-RGA (D. Del. Sep. 28, 2020), plaintiff tried to bake the § 101 "non-conventional" standard into the proposed claim construction. Clever! But Judge Andrews described the problems with that approach as "self-evident":

Plaintiff states that a person of ordinary skill …
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Disclosure of Expert Theory in Claim Construction Brief Defeats Later Motion to Strike

Andrew E. Russell, Sept. 28, 2020
MTS Pennypack

Judge Burke held last week that providing a substantive response to an indefiniteness theory in a claim construction brief was sufficient to preserve that argument for a later rebuttal expert report.

Typically you'd see that kind of disclosure in a discovery response on reasons for validity, or maybe in an expert declaration opposing a claim construction position (as opposed to being set forth as argument).

But the holding here makes sense under FRCP 26(e), which requires supplementing discovery responses only if the "information has not otherwise been made known . . . in writing."

It looks like the Court meant it when it held, earlier this month, that "any substantive response" to a theory prior to rebuttal expert reports …

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Judge Andrews Counts References

Nathan R. Hoeschen, Sept. 25, 2020
Claim Narrowing

Clerks frantically tallying prior art references and combinations
Clerks frantically tallying prior art references and combinations Brown Abaca, Crissy Jarvis, Unsplash

This blog could be nothing but disputes about claim narrowing. We'd have 72,000 posts a year and we'd never get to the bottom of all the little sub-disputes, and how each judge prefers to handle them. I'm sure it would be quite popular.

This week in IPA Technologies Inc. v. Amazon.com, Inc., Judge Andrews clarified his position on one of the more common disputes -- how exactly to count "references" for the purposes of narrowing.

The defendant, Amazon, had been ordered to reduce the number of references in its invalidity contentions and had responded by limiting itself to 4 prior art "systems." …

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Fed. Cir. Improves Cost / Benefit Calculus for Defendants Joining IPRs

Andrew E. Russell, Sept. 24, 2020
Estoppel IPR

Previous equations for deciding whether to join an existing IPR
Previous equations for deciding whether to join an existing IPR Roman Mager, Unsplash

Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.

Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.

The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.

It relied on the Facebook decision we talked about …

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Waiver, and How the Judges Have Handled Public Access to Remote Hearings

Andrew E. Russell, Sept. 24, 2020
Litigation COVID-19

It's interesting that the Court is now regularly offering public access information for remote hearings. I can't recall it doing that before the coronavirus.

The only pre-coronavirus remote hearings I can think of were for scheduling and discovery dispute conferences, where public access is not usually a concern. Scheduling conferences often took place privately in chambers even when they were in-person, and discovery dispute conferences often involve confidential information anyway. It looks like they judges are still handling these how they always have.

These days, however, the Court regularly holds all kinds of other, more substantive hearings remotely, and most of the judges have been taking steps to allow the public to attend. Here is what the judges have been …

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Judge Andrews Lays Out Updated Thoughts on Transfer Motions, Transfers Case

Andrew E. Russell, Sept. 23, 2020
Jumara Transfer

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In an opinion today, Judge Andrews laid out his updated thoughts on transfer motions, particularly in light of COVID-19 travel restrictions and the related difficulties.

Here are some interesting points re: his views:

  • In granting transfer, he focused on the fact that the Plaintiff's principal place of business was not Delaware
  • He held that convenience of counsel is irrelevant, because parties can choose their counsel.
  • As far as court congestion, he noted that "[o]ne other Delaware judge and I each individually had more old cases than the entire Western District [of Washington]," and that the Judicial Conference has recommended …
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Amending Might Save Your Indirect and Willful Infringement Claims

Jeff Castellano, Sept. 22, 2020

Where a patentee asserts indirect and/or willful infringement claims in its complaint, but does not allege facts showing pre-suit knowledge or intent with respect to the asserted patent(s), the following question arises: Can the original complaint provide knowledge of the patents-in-suit sufficient to support claims for post-suit indirect/willful infringement? It turns out the answer to that question is both yes and no, as Judge Burke explained in a September 22 Report and Recommendation in ZapFraud, Inc. v. Barracuda Networks, Inc., 19-1687-CFC-CJB.

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The Kind of Mistake That Gets Your Expert Testimony Excluded

Andrew E. Russell, Sept. 21, 2020
Litigation Daubert

[UPDATE: Apparently not! This opinion was reversed on a motion for reconsideration; further update below]

Judge Connolly today struck portions of an expert report where the expert opined that the accused product did not infringe because it included extra components in addition to what was claimed in a means-plus-function claim element.

According to the Court, this is contrary to the well-established principle that additional structure does not preclude infringement of an MPF claim element, if the required structure is also there.

[UPDATE: As the Court recognized on reconsideration, that was not what was happening here. Instead, the expert was pointing out that the opposing party's expert had failed to identify the a structure that performed the function, not that the …

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Judge Bryson Issues 22-Page Opinion in Two Days, Stays Case Pending Re-Exam Just 11 Weeks Before Trial

Andrew E. Russell, Sept. 18, 2020
Re-exam Stay

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
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