A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: October 2023

I know the title is for the wrong holiday, but I can only work with what the Court provides. If you want something more appropriate, encourage your local judge to issue opinions on murders most foul and revenge from beyond the grave this time next year. There's still time for opinions on disastrous chimney collapses for the holiday season.

Somehow the reindeed ended up looking more evil than the witch
Somehow the reindeed ended up looking more evil than the witch AI-Generated, displayed with permission


Today's case, Midwest Energy Emisions Corp. and MES Inc. v Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Oct. 26, 2023) (Mem. OP.) has an interesting wrinkle on the distinction between the requirements for induced infringement under 271(b), and contributory infringement under 271(c). The defendants there were all somehow involved in the sales and hauling of coal to various power plants (hence the title). One particular group of defendants was allegedly involved only in the moving of the coal from place to place, but was not alleged to actually make any sales. Accordingly that defendant group (called the "Cert Operations" defendants), moved for summary judgment that they had not induced or contributed to any infringement, despite their logistical role in the process.

Judge Burke granted the motion as to the contributory infringement claims but denied it as to the induced infringement claims, stating:

Plaintiffs’ allegations are that the CERT Operations Companies are liable here because they took steps to “provide” refined coal to power plants . . . —and one can “provide” such coal not only by selling the coal to the plants, but also by playing a role in having the coal delivered to the plants. . . . On this ground then, the Motion is DENIED as to the CERT Operations Companies.

Id. at 4 (cleaned up).

But the Court does not see (and Plaintiffs have not demonstrated) how simply “participating in the operation, production and delivery” of refined coal to a power plant on behalf of a refined coal company, without more, could equate to engaging in the sale of coal from the refined coal company to the power plant. And Section 271(c) requires that these CERT Operations Companies had to have participated in some way in that sales process—a process that involves two parties agreeing to transfer property or title in return for the payment of or promise to pay an agreed-upon price. . . . [P]laintiffs have not demonstrated that any of the CERT Operations Companies advertised the coal for sale, negotiated the terms of sale, collected payment for any sale, received a portion of any sales revenue or in some other meaningful way participated in the actual negotiation and sales process. Thus, summary judgment is GRANTED as to the claims for contributory infringement against the CERT Operations Companies.

Id. at 5-6 (cleaned up).

Its a useful reminder that the language of these two closely related sections is not precisely parallel.

Merry Halloween!

Markus Winkler, Unsplash

An order on Friday reminded me of a local counsel issue that comes up from time to time here in D. Del.

Whenever a party files a motion or a brief, the docket on PACER automatically includes a due date, like so:

312 OPENING BRIEF in Support re 311 MOTION to Amend Judgment, filed by ViaTech Technologies Inc..Answering Brief/Response due date per Local Rules is 11/8/2023. (Mayo, Andrew) . . . (Entered: 10/25/2023)

ViaTech Technologies, Inc. v. Adobe Inc., C.A. No. 20-358-RGA-JLH (D. Del. Oct. 25, 2023).

The docket text is not perfectly clear, but that due date is automatically generated based on a set of rules in PACER (that are …

No Stopping
Ben Tofan, Unsplash

Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.

We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:

ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court …

Timing a 12(c) motion is a bit tricky.

By definition, you raise it after your would normally file a motion to dismiss, as the pleadings are closed. You can file one as late as you want, as long as it's "early enough not to delay trial." Honestly, I'd never seen a motion denied for being too late—until now!

He's a slow reader
He's a slow reader AI-Generated, displayed with permission

The defendant in Ecolab Inc. et al v. DuBois Chemicals, Inc., C.A. No. 21-567-RGA (D. Del. Oct. 25, 2023) filed a motion for judgment on the pleadings at the same time as its SJ and Daubert motions, which was about 5 months before trial. Neither party devoted more than a few of their 40 allotted pages to the 12(c) motion—focusing instead on the SJ and Daubert issues.

(Note—the parties managed to fit the 12(c) motion briefing into their overall page limits for "dispositive motions" in the scheduling order. I think that's probably correct, but I've never seen an opinion actually addressing whether a later-filed 12(c) motion must adhere to those limits. It certainly looks like gamesmanship to give yourself an extra 20 page brief at summary judgment time, but what about a 12(c) motion filed 6 months earlier? Would those pages need to be deducted from a later SJ motion page count? I encourage someone braver than me to give it a try and see how it goes.)


Judge Andrews was having none of it and ...

Terracotta Warriors
Aaron Greenwood, Unsplash

Along the lines of on Friday's post, Judge Noreika issued an order in a different case this week denying a § 101 motion because it addressed only a subset of claims, and suggested that more claims may be asserted:

ORAL ORDER re (10 in 1:23-cv-00174-MN) (9 in 1:23-cv-00220-MN) MOTION to Dismiss - Defendants have filed motions to dismiss for failure to state a claim, arguing that claim 1 in two of the four asserted patents is directed to ineligible subject matter under 35 U.S.C. § 101. . . . Defendants state in a footnote that they are not addressing other claims, but that very same footnote suggests that the Court may face additional § 101 arguments in the future should Plaintiff add further asserted claims from the two patents at issue in the motion and that the Court may also later have to address § 101 with respect to the remaining two patents not subject to the present motion. (C.A. No. 23-220, D.I. 10 at 2 n.2). Given that Defendants' § 101 motions suggest that the Court will be forced to address § 101 issues in this case seriatim and because doing so is not a good use of the Court's time, IT IS HEREBY ORDERED that Defendants' motions to dismiss are DENIED without prejudice to renew as appropriate during summary judgment. ORDERED by Judge Maryellen Noreika on 10/23/2023.

AlmondNet, Inc. v. Freewheel Media, Inc., C.A. No. 23-220 (D. Del. Oct. 23, 2023).

What was in the footnote? An admission that the motion doesn't resolve all of the claims:

This motion is directed to only two claims—claim 1 of the ’307 patent and claim 1 of the ’249 patent—because they are the only claims of those patents that the Complaint alleges Defendants infringe. . . . While Plaintiffs could conceivably assert other claims of the ’307 and ’249 patents if the Court grants this motion, they would do so at their peril because those other claims add only incidental limitations to the two at issue here. Thus, resolution of this motion will likely dispose of two of the four asserted patents in this case. Moreover, because Plaintiffs’ patents are all similar—and all face similar obstacles under Section 101—Defendants believe that deciding this motion now will streamline and promote resolution of this entire case, and possibly of other AlmondNet cases as well, since they involve similar or overlapping patents. . . . Accordingly, Defendants believe that deciding this motion now, at the Rule 12 stage, will be an efficient use of the Court’s resources.

Id., D.I. 10 at 2 n.2.

This outcome is not unusual, but it's definitely something to keep in mind when evaluating ...

Like all right-thinking people, I hate the Hague.

Not the city, which is probably a nice place with a rich tradition of tulips and sausages, but the convention on international service of process which is a nightmare for those of us used to the stereotypically fast and loose system that reigns on this side of the pond.

Can you believe that out of 6 tries this was the best drawing of a tulip eating a sausage?  I think we'll hold off SKYNET for another few months
Can you believe that out of 6 tries this was the best drawing of a tulip eating a sausage? I think we'll hold off SKYNET for another few months AI-Generated, displayed with permission

The rules are labyrinthine, the requirements that can be figured out are onerous, and it frequently takes months for the central authority to determine that you've done something wrong and need to start the whole process over again. If, however, you somehow manage to get the central authority's stamp of approval, you've effectively insulated yourself from later attacks on the method of service.

That was the lesson of Judge Williams recent opinion in Tigo Energy Inc. v. SMA Solar Tech. Am. LLS, C.A. No. 22-915-GBW (D. Del. Oct. 23, 2023) (Mem. Op.). The plaintiff there had sued a german company and its american subsidiary for patent infringement. Service on the U.S. entity was easy enough, but the German parent refused to waive service, forcing the Plaintiff to go through the Hague. After a rejection, the central authority accepted the application and effected service on the German parent. The German parent then moved to dismiss for ineffective service, alleging that the documents failed to comply with the Hague convention, and that the German central authority accidentally served an unrelated company.

Judge Williams found these arguments ...

Dart in Target
Silvan Arnet, Unsplash

Both parties in Wrinkl, Inc. v. Meta Platforms Inc., C.A. No. 20-1345-RGA (D. Del.) agreed that the case should be dismissed after the PTAB invalidated 50 of the 54 asserted claims, but disagreed about whether the remaining 4 claims should be dismissed with prejudice.

The plaintiff claimed that it did not intend to assert the remaining claims, but that it should retain the right to, and that it is unaware of caselaw holding that the Court cannot dismiss some claims with prejudice and some without.

The defendant argued that the Court cannot split up the claims, and must dismiss all or nothing with prejudice:

Defendants contend there is no legal support or precedent …

"How many more claims will we assert? I'm glad you asked..." Klim Musalimov, Unsplash

We noted last year how Judge Noreika has sometimes denied § 101 motions to dismiss that challenge large numbers of claims, holding that it is more efficient to deal with such motions at the SJ stage (where, presumably, the case would be narrowed).

This week, the Court addressed a § 101 motion in Global Tel*Link Corporation v. JACS Solutions, Inc., C.A. No. 23-500-MN (D. Del.). The motion seeks a § 101 ineligibility finding for 5 claims across 5 asserted patents—i.e., one claim per patent. That's all the plaintiff asserted in the complaint. Id., D.I. 20.

In response, the plaintiff (wisely) argued …

In the last few years, its become increasingly easy to win a motion to stay pending IPR. Nowadays, if a good number of asserted claims are subject to the IPR, you can expect a good long stay.

Come on in, stay a while
Come on in, stay a while AI-Generated, displayed with permission

This naturally suggests a strategy for avoiding stays that I have been surprised not to see more of—splitting your suit into multiple different cases, each asserting just a few claims. This seems to be what occurred in ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484-CJB (D. Del. Oct 17, 2023) (Oral Order).

In that case, Immervision filed two separate suits at around the same time (but not actually on the same day) asserting different claims of the same patent. The PTAB issued an IPR that covered all of the claims asserted in one of the cases, but none of those asserted in the other. Apple moved to stay both cases (which had been consolidated for pretrial purposes), and Immervision opposed, just as to the case not covered by the IPR.

Unfortunately for the Plaintiff, Judge Burke found that it would make little sense to split these consolidated cases apart and granted to the motion to stay as to both cases:

Additionally, absent a stay in this scenario, two rounds of summary judgment and Daubert briefing/hearings would need to be held (one in this action and one in the 1733 action) -- as opposed to one combined summary judgment/Daubert process. Plus, since the PTAB's Final Written Decision in the 990 patent IPR is due in late summer 2024 (prior to the October 2024 trial scheduled in this case), if the PTAB upheld the claims at issue in that IPR, then no doubt ...

District Court Seal

Seems like it was just yesterday that we heard that Magistrate Judge Hall had been nominated to take Judge Andrews' seat when he takes senior status.

But it was actually yesterday that we heard that the Senate confirmed Judge Hall as a District Judge in the District of Delaware. According to Law.com, she was confirmed by a vote of 67 to 29, a wider margin than any other federal district court judge this year. Congratulations, Judge Hall!!!

Judge Hall will fill Judge Andrews' spot, after he takes senior status at the end of December. The Court has said that Judge Andrews expects to continue with a full caseload, leaving us with essentially five sitting district court judges. That's great …