A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: August 2023

It's got more of a Rufus from Bill & Ted vibe, but I think you get what I was going for
AI-Generated, displayed with permission

There is probably no more common desire than the ability to go back in time to correct one's mistakes. To use examples from the fascinating life of Jeff Goldblum, you could:

  • Decline that invitation to the trial run of a dinosaur themed amusement park
  • Check your laboratory for bugs before experimenting with teleportation, or alternatively, hire an assistant
  • Suggest someone else lead the pod people away so the group can escape. Ideally, this person would be a bit faster than you.

Most lawyers are bound by more mundane hopes. The job is riddled with tiny-seeming pitfalls with potentially disastrous consequences. Every time you fall into one, you wish you could just call a mulligan and fix …

What the gallery should look like when presenting confidential information
What the gallery should look like when presenting confidential information Andrew Seaman, Unsplash

I know—we have a lot of posts about sealing and redactions. But it's something that comes up in almost every IP case, and it's a place where parties and attorneys tend to get tripped up, with potentially major consequences. I think it's worth the occasional post to keep it at the top of all of our minds.

One of the most common places parties get tripped up is at trial, when they present confidential information when members of the public are in the courtroom and they fail to move to seal.

On Monday, Judge Hall issued an oral order providing some guidance on this issue. She …

Rowan Heuvel, Unsplash

Here's a fun fact for you—in the 7 years since the Supreme Court's decision in Halo, the use of the word "pirate" in Federal Court opinions has increased by 23%. This can probably be attributed to the following passage which shifted the focus of the enhanced damages inquiry from "willfulness" to something a bit looser and more . . . arrrggguable:

The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate . . . .

Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103-04 (2016)

There are worse legacies. But I digress.

The oft-cited loosy-goosy standard above has lead to an interesting split in decisions about how the enhanced damages provision, 35 U.S.C. 284 (which does not specifically reference willfulness), interacts with Section 298 (the only section of the patent act to actually refer to willfulness):

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent . . .

The question is, once a jury has found willful infringement, can the Court then consider the failure to obtain advice of counsel in determining whether to enhance damages?

Last week, Judge Kennelly held that 298 did not prevent the Court from considering the failure to obtain advice of counsel, and awarded ...

I'm not sure if
I'm not sure if "Ddrops" stands for "dew drops." But this is a nice picture regardless. Aaron Burden, Unsplash

We've talked about how pre-institution stays can be tough (but not impossible) to achieve, and about how Judge Burke has sometimes responded to a pre-institution motion to stay by asking for a status report and abbreviated briefing after the institution decision:

Therefore, no later than five business days after the PTAB rules on whether it will institute IPR as to the last of the petitions at issue, the parties shall provide the Court with a status report of no more than two single-spaced pages, indicating the outcome of the petitions and whether Defendant wishes to renew its Motion. If Defendant does wish to renew the Motion then, the Court will set a further (truncated) briefing schedule.

eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB, D.I. 108 (D. Del. Mar. 4, 2022) (Burke, J.).

Last week, Judge Williams adopted a similar view, denying a pre-institution motion to stay but offering to revisit the issue after the institution decision—and to take the previous briefing into account:

ORAL ORDER: Having reviewed Defendant MOM Enterprises, LLC's ("MOM") Motion to Stay Pending Inter Partes Review ("IPR") . . . , IT IS HEREBY ORDERED that the Motion is DENIED WITHOUT PREJUDICE to renew the request if the IPR is instituted. A court has discretionary authority to grant a motion to stay. . . . Because no institution decision has yet been issued, the Court will decline to stay the case until it hears from the PTAB. . . . By no later than five (5) business days after the PTAB issues its institution decision as to the IPR petition relating to the asserted patent, the parties shall file a joint letter updating the Court on the results of the PTAB's decision. If the PTAB grants the IPR petition, and if MOM then wishes to renew its Motion, MOM should include in the joint letter a statement that it intends to renew its Motion. The Court will then set a letter briefing schedule on the renewed Motion. When reviewing the renewed Motion, the Court will take into account the briefs already filed as to the instant Motion. ORDERED by Judge Gregory B. Williams on 8/25/2023.

Ddrops Company v. MOM Enterprises, LLC, C.A. No. 22-332-GBW, D.I. 108 (D. Del. Aug. 25, 2023). This mirrors Judge Burke's previous order, although Judge Williams' order doesn't state whether the later briefing will be truncated—that may depend on the circumstances.

Judge Williams' practice is useful to know because, obviously, it affects the calculus of whether it is worthwhile to bring a pre-institution stay motion at all.

This report, produced by the Court, is available on the Court's website. I’d encourage our readers to peruse the full report, but we highlight a few interesting statistics and announcements below.

IP Cases Continue to Dominate the Docket

In 2022, there was an increase in jury trials to 19 in the District of Delaware. Patent/IP cases accounted for 44% of all civil filings in the last 7 years and 43% in 2022 alone.

Pie Chart Delaware Docket
The United States District Court: District of Delaware

Nationally, patent filings decreased from 4,037 filings to 3,854. In the District of Delaware in 2022, 685 patent cases were filed, a 23.04 percent decrease from the previous year of 890. Delaware is second in the nation, after …

Lawyers, especially patent lawyers, are artists in the medium of obfuscation. Much of the job is finding the fuzzy areas at the edges of seemingly straightforward language and tugging at them to suit your needs. At best, it leads to moments of mad brilliance that Van Gogh might envy.

So it was in the case (fast becoming one of my favorites in the district) of a Markman dispute in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del. Aug. 15, 2023).

Person, cow, not cow, camera, tv
Person, cow, not cow, camera, tv AI-Generated, displayed with permission

The term in question was "non-animal."

As you probably gathered from the caption, the patent covered various fake meats (Facon, Soysauge, Ham-pty promises) with "non-animal" ingredients.

Being naturally averse to spoilers, I read the opinion until I got to the disputed term, and then stopped to ask myself "what could the dispute possibly be?" before peaking into the parties' arguments. I sat there a full 10 minutes before shaking my head and giving up.

As it happens, it was more reasonable than it looks at first blush. Impossible argued for the definition I'd immediately jumped to—not from an animal (or in the parlance of lawyers "derived from a non-animal source"). Motif's position, however was that the particular ingredients had to be chemicals (here, proteins) that were "not naturally present in animals" as opposed to merely not harvested from animals in this instance.

Judge Bryson ultimately sided with Impossible for boring science and law reasons. But game recognizes game, so I felt obliged to call out this impressive little dispute. I hope you readers are as inspired as I was.

Local Rule 7.1.5 governs motions for reargument, sometimes styled as motions for “reconsideration.” As we’ve noted, the deadline to move for reargument or reconsideration can be easy to miss. The deadline is just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.

What Is a motion for reargument?

A request for “clarification” of the Court’s prior order may be interpreted as a motion for reargument/reconsideration. But a motion for reargument is not a do-over. In fact, you cannot rehash arguments you already made—and you cannot make new arguments you could have raised earlier.

Mick Haupt, Unsplash

The scope of a motion for reargument is very narrow, and must show at …

As we've covered exhaustively in the past, it's becoming increasingly rare for Delaware Judges to consider indefiniteness at Markman, and it's rarer still to see someone get over the hump and knock a patent out.

AI-Generated, displayed with permission

Judge Andrews, however, is still willing to show a patent who's the boss at Markman (even for a non means-plus-function claim) as demonstrated this week in Genzyme Corp. v. Novartis Gene Therapies, Inc., C.A. No. 21-1736-RGA (D. Del. August 18, 2023).

The term at issue was, unsurprisingly, opaque:

Forms intrastrand base pairs such that expression of a coding region of [a] heterologous sequence is enhanced relative to a second rAAV vector that lacks sufficient intrastrand base pairing to …

Better $200/day than cell block 200, I suppose.
Better $200/day than cell block 200, I suppose. Kenny Eliason, Unsplash

When we last wrote about Mavexar, Chief Judge Connolly had held a civil contempt hearing after he ordered the sole member of Backertop, a Mavexar-related LLC, to appear in-person in Delaware and she failed to appear (she instead initiated a head-on challenge to the authority of the Court). She likewise failed to appear for her contempt hearing.

Today, the Court issued its opinion and order, holding the witness in contempt. It handily dispatched with each of the witness' arguments against the hearing.

It easily rejected their first argument—that the Court lacks jurisdiction after the entity, Backertop Licensing LLC, dismissed it's complaint. The Court reiterated the same ruling it made last time.

Next, the Court easily rejected the idea that civil contempt is "meant to benefit the complainant," citing multiple U.S. Supreme Court opinions to the contrary. It also rejected the idea that a party can re-litigate the underlying order in context of a contempt proceeding.

I found the Court's discussion of the alleged Fifth Amendment violation interesting, particularly when the Court attempts to identify exactly which Fifth Amendment right it could possibly have ...

Pascal Meier, Unsplash

Judge Andrews granted a motion to dismiss on § 101 grounds on Friday in Aviation Capital Partners v. SH Advisors, LLC, C.A. No. 22-1556-RGA (D. Del.).

The case involved a patent that the patent office had determined was patent eligible, after he examiner addressed and ultimately rejected patent ineligibility under § 101.

Judge Andrews was undeterred from re-examining eligibility:

I give no weight to the Patent Office's overall determination that the patent was eligible (which determination the PTO makes either expressly or impliedly for every issued patent), even if the PTO considered the cases being cited here.
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[As to the presence of an inventive concept] I again give …