A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2021

A few days ago, Magistrate Judge Fallon denied a request to stay her discovery ruling pending the losing party's objections and review by the District Judge. Defendant SXM in Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184-JFB-SRF asked Judge Fallon to follow the parties' "agreed-upon practice" to stay discovery rulings pending objections, a practice the parties had apparently followed in two prior instances.

Or not.
Or not. Erik McLean, Unsplash

On October 7, Judge Fallon ordered that the plaintiff's experts should have access to defendant SXM's confidential information. About a week later, the parties submitted a letter setting forth their respective positions on whether the discovery ruling should be stayed.

Judge Fallon declined to stay her ruling. She noted that...

isaac-smith-6EnTPvPPL6I-unsplash.jpg
Charting Goals and Progress, Isaac Smith, Unsplash

To give the reader a bit of a peak behind the curtain, it can sometimes be taxing to write 5 blog posts in a week. This is especially true on a week, like this one, where the Court issues fewer decisions than average. All of us at IP/DE have our own strategies for dealing with this -- my preferred method is to dig up some stats that I had always wondered about, but never bothered to figure out.

This week, my focus was on invalidity challenges in ANDA cases. In particular, what are the relative odds of invalidating a composition patent, vs. a method of treatment patent, vs. a formulation patent?

The …

Judge Noreika just addressed an issue that rarely comes up in D. Del.: whether a patent should be delisted from the Orange Book for non-compliance with the Hatch-Waxman listing requirements. Although the issue itself is uncommon, the decision highlights the difficulty of winning a Rule 12 motion that hinges on early-stage claim construction.

The plaintiff sued "for infringement of five patents, only one of which . . . is listed in the Orange Book." The defendants counterclaimed that the Orange Book patent "must be delisted because it claims a 'system,' not a drug product, or method of using a drug, as required by" the Hatch-Waxman Act. The defendants then moved for judgment on the pleadings on their delisting …

Not this kind of camera
Not this kind of camera Jakob Owens, Unsplash

Judge Hall issued a detailed privilege opinion last week, finding no privilege or work product protection for a number of documents after an in-camera review (while also finding that some others were privileged).

There are a number of useful holdings in the opinion. Some of the disputes arose in part because the custodian of the documents in question was unavailable, which means that the producing party lacks context for many of the documents.

For that reason, the producing party was unable to defend against production by offering a declaration that a document was prepared in anticipation of litigation, and the opinion resolves many of the disputes based purely on the text …

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …

Preliminary injunction motions are—in most cases—filed before substantial discovery has occurred. Nonetheless, a plaintiff seeking a preliminary injunction must support its motion (including both its assertion that it is likely to succeed on the merits an its assertion that it will be irreparably harmed absent an injunction) with evidence.

In Vertigo Media, Inc. v. Earbuds Inc., C.A. No. 21-120-MN, a patent case involving mobile phone apps that permit users "to send music that is simultaneously synchronized with the audience’s individual music streaming platform (Spotify, Apple Music, etc.) and played from audience members’ devices," Judge Noreika recently denied a preliminary injunction motion because plaintiffs had provided "scant" evidence of irreparable harm, and had likewise failed to substantiate their patent infringement arguments.

Mobile music
Samsung Galaxy S7 phone mounted to a car via CD slot., Michael Jin, Unsplash

The Judge first rejected plaintiffs' argument that they had shown irreparable harm as a result of price erosion:

Plaintiffs have offered no concrete evidence of price erosion, let alone evidence that damage caused by any such price erosion could not be quantified. Instead, Plaintiffs allege “complete price erosion” because Defendant markets its products for free. But Plaintiffs do not offer any evidence suggesting that they were planning to offer their product as a paid service or that the price has eroded at all.

Plaintiffs did present evidence that they had unsuccessfully contacted competitors with offers to license rights to their technology, but ...

The case is about microphones
Godwill Gira Mude, Unsplash

We've mentioned before that its difficult to win a Daubert motion, with the clear majority of cases finding that any issues with the expert's testimony go to the weight, rather than admissibility, and are best dealt with on cross-examination.

Judge Burke bucked that trend last week, granting a motion to exclude a damages expert's reasonable royalty calculation for failing to provide a sufficient factual foundation.

The Plaintiffs' expert in Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB, D.I. 575 (D. Del. Oct. 8, 2021), based his damages calculation on the cost to the defendant of designing around the the patent in suit. He based that cost, in turn, on what the plaintiffs had spent to design around one of the defendant's patents following an earlier (and unrelated) lawsuit. In equating the costs, he had apparently relied on conversations with the plaintiffs' technical expert who had opined that the required design around here would be "more extensive," and thus, "more costly and time consuming." Id. at 2 (quoting the expert report).

Interestingly, Judge Burke took no issue with ...

LA Sunset
Cameron Venti, Unsplash

This time last year, we wrote about a decision from Chief Judge Connolly denying a motion to transfer from D. Del. to the Central District of California. We didn't write about the "court congestion" factor because there wasn't much to say—the court simply noted that "[b]oth courts are among the busiest in the country" and concluded that the factor was neutral.

Late last week, however, Chief Judge Connolly granted a motion to transfer from D. Del. to C.D. Cal. Among other reasons, he concluded that "[g]iven the districts' relative caseloads, this factor favors transfer."

After noting that D. Del. has significantly more weighted filings per judge than C.D. Cal. (942 compared to 691), …

What I imagine claim construction arguments looked like
Immo Wegmann, Unsplash

Last week, Judge Noreika issued an interesting oral order regarding a claim construction dispute that was briefed—haphazardly, apparently—in the parties' summary judgment papers.

She criticized the briefing, ordered the parties to meet-and-confer and file ordinary claim construction briefing, and threatened sanctions if the parties don't try hard enough to reach agreement:

ORAL ORDER − In their summary judgment papers, the parties include arguments that either three or four additional claim terms must be construed by the Court. The parties' arguments are disjointed, do not focus on the intrinsic evidence and do not demonstrate any real understanding of what that other side's construction is. Thus, IT IS HEREBY ORDERED that, on or before 5:00 PM on …

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 …