A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: March 2023

Judge Andrews Finds That "Analysis Engine" and "Event Classification Engine" Are Means-Plus-Function Terms (And Indefinite)

Andrew E. Russell, March 20, 2023
Means-Plus-Function Claim Construction

This is the kind of engine that has structure.
This is the kind of engine that has structure. Markus Spiske, Unsplash

There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.

Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.

Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:

I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).

The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff ...

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Judge Noreika: "The Court Will Not Act as a Negotiator to Whittle Down Overly Broad [Discovery] Requests."

Andrew E. Russell, March 17, 2023
Meet-and-Confer Discovery Dispute

Attorneys
AI-Generated, displayed with permission

Judge Norieka issued a notable oral order earlier this week in Neurocrine Biosciences, Inc. v. Lupin Limited, C.A. No. 21-1042-MN (D. Del.).

The context is not fully clear from the docket, but it looks like the parties contacted the Court to initiate a discovery dispute regarding the sufficiency of the plaintiff's document collection efforts. But, instead of issuing the typical order starting the process, Judge Noreika ordered the parties to meet-and-confer again and set some expectations as to how the Court will handle the dispute:

ORAL ORDER - The parties have requested a discovery dispute teleconference regarding Defendants' request for discovery into the search methods Plaintiff used to find responsive documents. IT IS HEREBY ORDERED that the parties shall meet and confer again. Thereafter, on or before 5:00 PM on 3/20/2023 [five days from the order], the parties shall provide the Court with the current version of the discovery requests, explaining what part or parts remain in dispute. The Court will not act as a negotiator to whittle down overly broad requests. Therefore, Defendants should propose requests of appropriate scope with the understanding that the Court may simply deny requests that are overly broad on their face.

It looks like the Court may be trying out a more efficient way to resolve disputes over discovery requests.

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The True Protagonist of Delaware's Redaction Saga

Nathan R. Hoeschen, March 16, 2023
Redactions

As Judge Connolly famously noted in his "star chamber" opinion, part of the reason over-redaction is a problem is that the parties themselves have no real incentive to challenge one another on the issue. It's akin to a tragedy of the commons scenario, but worse—the parties suffer no adverse consequences from the redactions at all, because they can see all of the filings, it is only the public at large that is left with questions.

This unfortunate equilibrium is disrupted, however, when a third party requests unsealing.

It Is I, an Interested Third Party!
It Is I, an Interested Third Party! AI-Generated, displayed with permission

That's exactly what happened this week in United States of America v. Gilead Sciences, Inc., C.A No. 19-2103-MN. For those who haven't been following this fascinating case, the CDC has various patents on an HIV prophylaxis regimen (known as PrEP in the biz), following years of research into the issue. Gilead markets two blockbuster PrEP drugs—Truvada and Descovy—which the government alleges infringe those patents. The Complaint is rife with allegations that Gilead has been gouging customers with its pricing for these allegedly infringing drugs. See D.I. 1 at 48-49 ("Another critical barrier to increasing access to PrEP in the United States has been
the cost of Truvada®, which presently is only sold by Gilead"; "Many AIDS activists and many in the medical community have criticized Truvada’s price in the United States, particularly in light of HHS’s patents, the Government’s funding of clinical research on PrEP, and the relatively low cost at which Gilead apparently makes the product").

TL;DR, the case is a big deal even to normies. So, it probably shouldn't have come as a huge surprise when ...

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Opinion: The Third Circuit's Proposed 5 p.m. Filing Deadline Is a Good Idea and the Arguments to the Contrary Are Wrong

Andrew E. Russell, March 15, 2023
Filing Deadline

Hourglass
Aron Visuals, Unsplash

The Third Circuit Court of Appeals announced a proposed rule change recently that implements a 5 p.m. filing deadline:

26.1 Date of Filing and “Last Day”/ Deadline for Filing
Documents received by the Clerk by 5:00 p.m. Eastern Time will be filed as of the day of receipt and documents received after 5:00 p.m. will be filed as of the next day the clerk’s office is open, regardless of the means of transmission (electronic filing or otherwise). Documents received by 5:00 p.m. Eastern Time on the last day for filing will be considered timely filed, unless a different time is set by a statute, local rule, or court order. Documents received after 5:00 p.m. Eastern Time …
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Claim Narrow, Claim Broad

Nathan R. Hoeschen, March 14, 2023
Claim Narrowing

This morning I woke up and everything hurt. It was cold, and my old house made a sound like a sad kazoo with every mournful gust of wind. I'm still working out the physics of that last bit. As I sat down to my porridge, I admitted to myself that I was old.

More than usually cursed art (FYI, it's supposed to be a kazoo)
AI-Generated, displayed with permission

Anyway.

All this is to say that I felt like nothing was going my way. So I empathized with the filers of a seemingly simple stipulation in Cleveland Medical Devices, Inc. v. ResMed Inc., C.A. No. 22-794-GBW.

The scheduling order there differed from Judge Williams' form in that it added a specific provision for the reduction of prior art, limiting the number of claims asserted for each patent, as well as the number of prior art references for each patent:

The parties shall reduce the number of asserted claims and asserted prior art used for anticipation and obviousness combinations as follows:
• On January 9, 2023 . . . Plaintiff shall serve an Initial Election of Asserted Claims, which shall identify no more than 64 total asserted claims, and no more than 10 asserted claims per patent.
• On February 8,2023 . . ., Defendant shall serve an Initial Election of Prior Art, which shall identify no more than 64 total references and no more than 10 references per patent that can be used for anticipation or as combinations for obviousness . . .

Id. at D.I. 41 Paragraph 3(g).

Later, the parties had a dispute over the per-patent cap ...

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Judge Fallon Denies Discovery on Unlaunched, Abandoned, and Future Products—But Defendant Can't Redact That Information from Otherwise Responsive Docs

Andrew E. Russell, March 13, 2023
Document Production Accused Products

Abandoned
Cédric Dhaenens, Unsplash

Judge Fallon made an opinion public today that deals with whether a plaintiff can get discovery on unlaunched, abandoned, and future products in the lead up to a preliminary injunction hearing. The Court held that discovery on those products was not proportional to the needs of the case:

Zwift has shown that the document discovery requested by Wahoo is not proportional to the needs of the case at this stage of the proceedings. (D.I. 72) The complaint establishes that Wahoo was aware of Zwift’s unlaunched and abandoned hardware products, yet it did not raise these products in its motion for a preliminary injunction, indicating that the relevance of the requested discovery to the preliminary injunction inquiry …
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A Vacated Trial Win May Not Show a Likelihood of Success—Even a $237 Million One

Andrew E. Russell, March 10, 2023
Standing Preliminary Injunction

Photograph of all of plaintiff's likelihood of success arguments securely located in one basket.
Photograph of all of plaintiff's likelihood of success arguments securely located in one basket. Court, Unsplash

Judge Williams ruled on a preliminary judgment motion yesterday in Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del. Mar. 9, 2023). In that case, the plaintiff had originally gone to trial back in 2020, and won a $237 million jury verdict, plus a jury finding of willful infringement. Id., D.I. 550 at 6.

The Court previously vacated that win, however, because it turns out that one of the plaintiffs, Cirba Inc., had assigned all rights in the patent at issue to another entity, Cirba IP. The Court held that the re-assignment meant that Cirba Inc. lacked standing such that it should not have been part of the trial, and that including Cirba Inc. in the trial impacted the arguments enough to warrant a new trial. Id. at D.I. 752, 946.

Yesterday, the Court addressed plaintiff's motion for a preliminary injunction pending the new trial. It looks like it was an easy decision for the Court, because plaintiff relied entirely on the previous trial win to show a likelihood of success—despite the fact that the Court had granted a new trial:

Rather than brief why it will likely prove infringement, Cirba summarily states that it "is likely to succeed on the merits of its patent infringement claim because it already has," referring to the vacated verdict from the first trial. . . . This Court, however, granted VMware's motion for a new trial. . . . "[I]t is quite clear, that the order granting the new trial has the effect of vacating the former judgment, and to render it null and void, and the parties are left in the same situation as if no trial had ever taken place in the cause." United States v. Ayres, 76 U.S. 608, 610 (1869). Thus, Cirba has made no "clear showing" that it will likely prove infringement.

It's not hard to see what plaintiff was thinking here. On the surface, the Court ...

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Damages Arcanum

Nathan R. Hoeschen, March 9, 2023
Damages Lost Profits

We try to keep it light here at IP/DE, but sometimes I actually learn something and I feel sort of obliged to pass it on. You know, some real dark arts stuff that I wouldn't have known if I didn't have to read absolutely everything written in the district for this blog.

Why does he have six fingers? Why on only one hand?
AI-Generated, displayed with permission

Today's bit of lore today is about damages, and a split amongst district courts that visiting Judge Bryson has taken a stand on. Can a corporate parent can claim lost profits that would have initially accrued to its subsidiary?

The trite answer to this is "no." The Federal Circuit has squarely held that "a patentee may not claim, as its own damages, the lost profits of a related company." Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 1375 (Fed. Cir. 2015). However, as Judge Bryson pointed out in his opinion in Kaneka Corp v. Designs For Health, Inc., C.A. No. 21-209 (D. Del. Mar. 3, 2023) (Mem. Op. & Order), several courts have held that lost profits of a subsidiary can still be claimed if they flow "inexorably" from the subsidiary to the parent.

Judge Bryson agreed, stating

To be sure, the Federal Circuit has not expressly recognized that lost profits can be awarded when those profits flow inexorably from a subsidiary to the patentee . . . I find the weight of district court authority on that point to be ...
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Another D. Del. Judge Orders an In-Person Claim Construction Meet-and-Confer, and Cancels Markman (And: Some Thoughts on Claim Construction Meet-and-Confers)

Andrew E. Russell, March 8, 2023
Meet-and-Confer Claim Construction

Andrew E. Russell

Just last week, we wrote about Judge Noreika ordering an in-person meet-and-confer to occur between lead trial counsel regarding claim terms, in the courtroom in Delaware, and "continuing until excused by the Court." In ordering the in-person meet-and-confer, Judge Noreika noted that the parties had "spoke[n] for just 20 minutes about 10 disputed terms" during their meet-and-confer.

Yesterday, Chief Judge Connolly issued an order along similar lines—but outright canceling the Markman hearing. Like Judge Noreika did, the Court noted that the parties had failed to adequately meet-and-confer about a disputed term:

Plaintiffs first made their new proposal [to construe "tangent"] during the "meet and confer" discussion required by paragraph 13 of the Revised Scheduling Order. . . …
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Page Limitless

Nathan R. Hoeschen, March 7, 2023
Page Limits Stipulation

My colleague Andrew wrote a post long ago about all of the things you can stipulate to in D. Del., and all the things you cant. Take a moment to read it—I'll wait.

AI-Generated, displayed with permission

Aaaand we're back. You'll note one of the stipulations listed as "iffy" (legal term) was stipulations to extend page limits. We got a good example of just how iffy those can be last week from Judge Noreika:

IT IS HEREBY ORDERED that the Stipulation is DENIED. The request to extend page limits was filed seven minutes before the over-the-page limit brief was filed. The effect of this was that Plaintiff granted itself an extension without leave of Court and without respect for the Court and its rules. THEREFORE, IT IS FURTHER ORDERED that the Motion for Preliminary Injunction is DENIED for failure to comply with the page limits. Counsel may re-file the motion with a brief that complies with the Court's rules.

Janssen Biotech, Inc. v. Amgen, Inc., C.A. No. 22-1549-MN (D. Del. Mar. 2, 2023) (Oral Order)

Obviously, it didn't help that the parties filed their stip just minutes before the relevant brief, giving the Court no opportunity to act on it. But it led me to wonder just how often these stipulations are denied in ...

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