I told you all! I told you we'd hear about this case again! Did you listen? No! I was called a fool, a madman! But who's laughing now! Whhoooo's laughing nowwwwwww!
That's right, we're going spooky this monthAI-Generated, displayed with permission
I speak of course of the Federal Circuit decision in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023). As we discussed last time, when I made my dire warning that you fools failed to heed, the Federal Circuit there reversed the district court judgment invalidating several unasserted claims under 101, noting that the Plaintiff had taken pains to clarify that only 4 specific claims were at issue, …
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for oneAndrew E. Russell, displayed with permission
Judge Bryson issued an opinion today in Michael R. Cahill, Trustee of the Hunt Irrevocable Trust v. Air Medical Group Holdings, Inc., C.A. No. 21-679-WCB (D. Del. Oct. 16, 2023). In it, he describes a clever procedural maneuver that failed, but resulted in a positive outcome anyway.
The case involves an breach of contract claim affirmative claim and counter-claim. The Court granted summary judgment for the plaintiff on their affirmative claim, holding that it was time-barred under a provision of the contract that set out a time for bringing claims.
Somehow I feel like this inventor ought to have two dogs, one named "Solution" and the other "Result"AI-Generated, displayed with permission
We haven't been posting much about § 101 lately. That's largely because things have leveled out a bit. Everyone basically knows the drill at this point.
But it was still great to read Judge Bryson's opinion in KOM Software Inc. v. NetApp, Inc., C.A. No. 18-160-WCB (D. Del. Oct. 4, 2023).
In it, Judge Bryson tackled two separate patents, both challenged on § 101 grounds. Both patent specifications were directed to the same invention, but the claims differed widely. Judge Bryson easily found one abstract and one not, illustrating the difference.
Judge Andrews issued a claim construction opinion today resolving an interesting dispute.
The parties disagreed as to whether the patentee had acted as its own lexicographer. Here is the text from the patent spec:
As used herein, the term “plant” includes reference to whole plants, plant organs (e.g., leaves, stems, roots, etc.), seeds and plant cells and progeny of the same. “Plant cell,” as used herein includes, without limitation, seeds, suspension cultures, embryos, meristematic regions, callus tissues, leaves, roots, shoots, gametophytes, sporophytes, pollen, and microspores.
Pioneer Hi-Bred International, Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA, D.I. 72 (D. Del. Aug. 2, 2023).
Seems pretty clear, right?
Not so much, according to the plaintiff. It argued that one of the specification's definitions shouldn't apply to the term as it was used in the claim. Here is ...
Filing the complaint is often one of your earliest interactions with a new client. Don't mess it up!AI-Generated, displayed with permission
It's time for another in our series of knowledge base posts. This time: Filing a patent complaint in the District of Delaware.
It's honestly not all that difficult to file a complaint. But, still, when I do it, I sometimes wonder: Am I forgetting anything?
I thought I'd post a non-exhaustive checklist of items that should be included when filing a complaint, with some light commentary.
But first, a disclaimer! This is a non-exhaustive list, and it may contain errors. Consult your counsel, particularly your Delaware counsel. Do not treat this as legal advice for your particular situation. …
We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgivingPennypack factors.
We've also discussed how you really ought to have a reason for a late disclosure.
On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:
ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …
Wow! This is something you don't see every day. The defendant in Truinject Corp. v Galderma S.A., C.A. No. 19-592-GBW (D. Del.) filed—and won—five motions for summary judgment.
Impressively, each of the five motions had its own grounds. This isn't an instance where one winning argument resolved five motions.
Here are the five motions:
Breach of Contract: No damages. The Court granted summary judgment that because the alleged harm was not actually caused by the breach, there can be no damages.
Trade Secret Misappropriation: No misappropriation. Plaintiff showed that misappropriation could have happened—because employees had access and worked on defendant's product—but offered no evidence that it did happen.
So much in our world is phrased in dire, and certain, terms. "No Running," "High Voltage," "Angry Birds"—
Bellini looks evil, but she wants you to know that she loves you and she is just as fluffy as she appearsMe, displayed with permission
It can be hard to differentiate between those warnings that are merely distant precautions (check engine), and those that represent an understanding of a dark and heartless fate (again, angry birds). An example may help to illustrate this point.
I give you the following passage in Judge Connolly's form scheduling order on the use of pincites:
Pinpoint citations are required in all briefing, letters and concise statements of facts. The Court will ignore any assertions of uncontroverted facts and controverted legal principles not supported by a pinpoint citation . . .
Scheduling Order [Non-Patent Case], Para. 4 (Rev. March 2, 2020)
Looking at that, one might think there was some wiggle room. One would be incorrect.
We know this courtesy of a recent teleconference in In re: Seroquel XR Antitrust Litigation, C.A. No. 20-1076-CFC (D. Del. Oct. 4, 2023) (Hearing Tr.). One of the plaintiff groups had submitted briefing in support of their motion for cert and attached 466 pages of expert reports without any pincites. The defendants filed a later complaining about the issue as well as the general attachment of entire reports and transcripts rather than exhibits.
Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."
Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.
Uh Oh - An Emergency Extension Motion Fails
That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.). …
As you may recall, the witness initially attempted to appear via teleconference, citing financial concerns and responsibilities at home and at work. Judge Connolly denied the request, and she ultimately failed to appear for the hearing. Thus began a running fine of $200 per day (that the Court is open) until she appears.
AI-Generated, displayed with permission
Shortly thereafter, Backertop moved to stay enforcement of the order pending appeal. Judge Connolly denied that motion in a short opinion today noting that success on appeal was unlikely:
I think it unlikely that Backertop and Ms. LaPray will prevail in their appeal. Indeed, were Ms. LaPray's reading of Rule 45 to be adopted by the Federal Circuit, a resident of Hawaii (which is more than 100 miles from any other federal judicial district) could form a shell LLC, give the LLC no assets except for a questionable patent, assert the patent in frivolous infringement lawsuits filed under the LLC' s name in the other 93 federal judicial districts, and have the LLC engage in fraudulent and sanctionable conduct through the course of those suits with impunity
Backertop Licensing LLC v. Canary Connect, Inc., C.A. No. 22-572-CFC, D.I. 62 at 5-6 (D. Del. Oct 3, 2023)
Given the track record of Mavexar appeals so far, this seems a fair assessment.
And so the fine continues to pick up steam. By my count, it has currently been building for 31 taxable days. for a total of $6,200 smackeroos.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
