A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: March 2021

We keep writing about how hard it is to win a motion to strike in D. Del., which is generally true. That said, it's still possible to get late-disclosed theories and evidence excluded, especially when there's no good explanation for the delay.

Yesterday afternoon, one plaintiff learned that lesson the hard way. As often happens, the plaintiff argued that the defendant's expert raised new opinions on motivation-to-combine in his reply report.

But instead of moving to strike (or seeking leave to submit a sur-rebuttal report, or dealing with the issue during expert depositions...), the plaintiff simply waited until summary judgment briefing. There, it submitted a rebuttal declaration from its own expert in support of its answering brief on invalidity. …

Before the Supreme Court held in Markman v. Westview Instruments that claim construction is an issue of law to be decided by the judge, and not the jury, parties would often build alternative theories of infringement and invalidity into their contentions and expert reports to take into account the different claim construction positions being argued. Because they couldn't know which position would be accepted, they were forced to plan for both, and present theories under both at trial.

Markman changed that practice. Now that claim construction is almost always decided before trial (and usually before expert reports), parties can focus on the judge's construction while building their trial presentation. However, it is worth remembering that pretrial claim construction is not set in stone, and that the judge can modify that construction based on any number of inputs, including the evidence at trial and the parties' evolving arguments.

Judge Noreika did exactly that in a ruling issued earlier this week, leading to a non-infringement finding for the defendant, and eliminating the need for a post-trial opinion on the evidence and argument submitted during trial.

April
Charles Deluvio, Unsplash

No further news on April jury trials since our last update. The following two jury trials still appear to be set, with the first to start on Monday of next week:

  • 4/5/2021: JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC, C.A. No. 18-553-MN (D. Del.): The parties in this contract action just filed a letter indicating that they have made efforts at settlement, at Judge Noreika's request, but this case is still set to go forward as of now. The Court held the pretrial conference today.
  • 4/26/2021: USA v. Tyshaun Blue, C.A. No. 20-63-RGA (D. Del.): No change; this case appears to be set to go later next month.

To my knowledge, if it goes forward next week, JHL will be the first post-pandemic jury trial in the District of Delaware ...

A different kind of Sherman
A different kind of Sherman Sherman Tank at Clervaux Castle, Luxembourg, R Boed, CC BY 2.0

This week, Chief Judge Stark ruled on a motion to dismiss a FRAND-related antitrust claim brought by Lenovo against InterDigital relating to 3G/4G phone standards.

According to the Court, InterDigital contracted with the European Telecommunications Standards Institute (ETSI) to license its patents at FRAND rates, and its patents were incorporated into the 3G/4G standards. The ETSI requires patentees to license their patents at FRAND rates to avoid anti-trust concerns.

Lenovo's antitrust claims allege that InterDigital, by demanding higher-than-FRAND rates, has obtained an unlawful monopoly power over the 3G/4G standards. Lenovo also alleges that InterDigital defrauded ETSI during the standards development process:

Lenovo allege[s] …

Hatchet on Log
Andrew E. Russell, CC BY 2.0

Judge Andrews issued an interesting opinion on Wednesday discussing the level of control necessary for divided infringement -- an issue that has not come up much in the district.

As the Federal Circuit laid out in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, (Fed. Cir. 2015), divided infringement requires the parties that collectively perform all of the method steps to be part of a joint enterprise, or for one of them to "direct or control the other's performance." Id. at 1022–23.

This "direct or control" requirement has historically been a pretty good grounds for motions to dismiss or summary judgment in the district. In the 5 years since Akamai …

As we pointed out last July, Judge Connolly has publicly questioned (several times) whether post-complaint knowledge is enough to state a claim for willfulness or indirect infringement. Today, he answered that question with a resounding no.

In nearly two full pages of footnotes, Judge Connolly collected the conflicting authority across the nation—and within the district—on whether an infringement complaint, by itself, is enough to support the knowledge element of willful and indirect infringement claims.

He went on to explain his own views:

ZapFraud has identified, and I know of, no area of tort law other than patent infringement where courts have allowed a plaintiff to prove an element of a legal claim with evidence that the plaintiff filed …

The nailgun at issue.
The nailgun at issue. US Pat. No. 7,156,012

Judge Connolly granted summary judgment of invalidity this week, finding three claims indefinite due to their physical impossibility.

The patent relates to a faster air-powered nail gun, which uses a trigger to control the gun by providing "fluid communication"—i.e., air flow—between air valves.

All of the patent's claims involve triggers and "fluid communication" of various sorts, but defendants picked up on some weird phrasing in one independent claim:

a trigger valve exterior frame to which the main valve control channel is fluidly connected;

Defendants argued that the "exterior frame" is solid and can't be "fluidly connected" to the trigger.

Plaintiffs disagreed, arguing that a person of skill in the art would …

On Friday, Chief Judge Stark released his opinion summarizing his bench rulings from his most recent Section 101 day. This is how the patents fared:

Content Square v. Quantum Metric, Inc., C.A. No. 20-832-LPS (D. Del.)

In the first case, Content Square, the Court invalidated the claims of 2 of the 5 asserted patents.

Not this kind of web crawling.
Not this kind of web crawling. Michael Anfang, Unsplash

The invalidated patents related to "heat map patents," which relate to displaying heat maps of web browsing data. These include U.S. Patent Nos. 10,063,645 and 10,079,737.

The third patent, which was not invalidated, related to "creating multiple versions of a website to determine users' preferences." Interestingly, the Court held …

Sit back, relax, and enjoy this long post about <a href='#' class='abbreviation' data-toggle='tooltip' data-placement='top' title='United States District Court for the District of Delaware'>D. Del</a>. local rules...
Sit back, relax, and enjoy this long post about D. Del. local rules... XPS, Unsplash

The District of Delaware's local rules are available on the court's website, but they don't tell the whole story—there are a number of critical rules and practices set forth in other documents that are not as obvious on the site.

These can really trip you up if you're not familiar with D. Del. practice.

This post is geared towards mainly towards out-of-town or in-house counsel. It covers the basics and then lays out where to find some of those other important rules if you have a …

Daubert motions are as tough as they are common. It seems every case spawns at least one on each side, and the vast majority are denied with the Court finding that any deficiencies in the expert's methodologies are merely grounds for exploration on cross-examination.

One type that consistently beats these odds (at least in Delaware) is directed to damages experts that attempt to use the damages figures from prior jury verdicts as starting points for a hypothetical negotiation.

Judge Andrews in particular has held a hard line on this issue as shown in his decision on Wednesday in Sprint Communications Company L.P. v. Charter Communications, Inc, C.A. No. 17-1734-RGA, D.I. 573 (D. Del. Mar. 16, 2021). …