A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: 2024

The intersection of patent and anti-trust law is tricky. Like, Boston intersection tricky.

"It used to be a cow-path that avoided a snakepit, but now we let cars use it!" Leon Bredella, Unsplash

Judge Williams had an interesting opinion on the issue last week in Jazz Pharms., Inc. v. Avadel CNS Pharms., LLC, C.A. No. 22-941 (D. Del. May 24, 2024), ruling on a motion to dismiss various antitrust counterclaims. In this ANDA case, Jazz sued Avadel for infringing one of its Orange Book patents. Avadel, however, successfully moved the Court to de-list that patent from the Orange Book grounds that it did not claim a method of use (it was instead directed to a risk mitigation …

Defendants are often (but not always) the ones who just happen to want to move a trial back.
Defendants are often (but not always) the ones who just happen to want to move a trial back. AI-Generated

Trial dates in Delaware generally tend to stick, with certain exceptions (e.g., parties moving to extend the schedule, particularly the dispositive motion deadlines).

We saw an example of that this week in International Business Machines Corporation v. Zynga, Inc., C.A. No. 22-590-GWB (D. Del.). There, the defendant tried to delay trial based on schedule issues, an O2 Micro issue, and to permit expert report supplementation based on potential new evidence. The Court didn't go for it:

ORAL ORDER: The Court has reviewed the parties' letters regarding the trial schedule (D.I. 445, 449, 450). Zynga's request to alter the …

Section 101 Motions are common as dirt, and as likely to be trod under the judicial foot (although the last time we checked they had a decent win rate in Delaware).

You lose at least as often as you win, and even if you win there's a fair chance the patentee will get a chance to amend to add in new facts relevant to the analysis -- particularly as to step two's conventionality/inventiveness inquiry.

This weeks decision from Judge Williams in Dish Techs. LLC v. FuboTV Media Inc., C.A. No. 23-986 (D. Del. May 21, 2024), shows us an intriguing third way.

A most unusual posture . . .
A most unusual posture . . . AI-Generated, displayed with permission

The complaint listed just a bare handful of claims and the Defendant, Fubo, moved to dismiss under 101. The parties fully briefed the motion, and there was even an oral argument before Judge Williams. Judge Williams is historically a bit more likely than most to grant a 101 motion, so perhaps the plaintiff was feeling the heat after that hearing.

So, rather than wait to see how it all panned out, the plaintiff preemptively moved to amend the complaint both to specify more asserted claims, and to add in some allegations about how inventive and unconventional it all was. Fubo called foul (#sportspun) arguing that the proper time to move to amend was before the parties and the Court went to all this trouble, especially when plaintiffs had all the relevant information beforehand and had previously litigated these patents.

Judge Williams, although noting that the request was late, granted the motion to amend:

[T]he Court finds that Dish delayed in seeking leave to amend to assert new allegations for the subset of allegations that are based on facts that Dish knew, or should have known, as of the filing date of the original complaint.
The Court also finds, however, that Dish's delay in seeking leave to amend its complaint to include those allegations was not "undue." When the Court dismisses without prejudice a party's complaint for pleading deficiencies, that party can attempt to re-plead by adding additional factual allegations. Because "delay alone is generally an insufficient reason to deny leave to amend," that party has some leeway in attempting to re-plead by asserting facts that they knew, or should have known, as of the filing date of the initial complaint.

Id. at 5-6 (internal citations omitted)

The court then addressed futility under the usual Rule 15 standard and allowed the amended pleading. More interestingly, the Court addressed the obvious question of ...

Just stop.
Just stop. Jana Knorr, Unsplash

Long-time readers can maybe skip this post, as we've discussed this issue before.

But I thought it was worth a post, because it's still something that comes up from time to time. But the court's rulings are clear: You can't redact information from document production just because you think it is irrelevant. You have to produce the documents without redactions.

This came up again this week, this time before visiting judge Murphy. Consistent with our other judges, he rejected the idea of permitting redactions of irrelevant material:

Defendants’ motion to modify the stipulated protective order (DI 52) is DENIED. . . . Defendants were unable to identify any occasion where a district court …

Sometimes I wonder what it might have been like to be on a patent jury in 1840. The claim at issue is 12 words, something like "a machine for curing drunkenness through violent shaking, operated by a crank."

(Eds. note - is that a haiku?)

A be-wigged and mustachioed defense lawyer argues that it was really more of a swivel than a crank, and anyways it was well known in the prior art that drunkenness could be cured by shaking the inebriated patient manually, and thus no patent should have issued.

Pictured: Sobriety
Pictured: Sobriety Tadeusz Lakota, Unsplash

The jury nods in agreement at these self-evident truths, and then goes on to deliver a verdict after a brief luncheon of organ meat pies. Justice, like lunch, is served.

Those halcyon days are, of course, long gone as evidenced by Judge Andrews' opinion in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del. May 17, 2024) (Mem. Op.), which dealt with a claim (one of many) that was 424 words long.

The opinion on the various post-trial motion goes into great detail about the difficulties of presenting a coherent trial on such complicated software claims:

Much of the trial testimony on infringement can only be understood, if at all, with great effort. The claims are very long and complicated. For example, claim 1 of the '287 patent is 424 words long. At trial, Express Mobile divided the claims into four parts, which it color-coded as red, green, gold, and blue. The testimony of Plaintiffs technical expert about how Shopify's system worked was intermingled with references to its meeting, e.g., the "red group of limitations." The testimony at times lacked the usual one-to-one correspondence with the specific limitations in the claims, and that combined with the color-coding means that trying to figure out whether there was sufficient evidence to show infringement is difficult.

Id. at 9 (internal citations omitted).

Given that description, I was surprised to see that the patentee had actually prevailed at trial to the tune of $40,000,000. Judge Andrews apparently agreed because he ...

"Guys, if we write our own opening brief on their issue, we'll get more than twice the page limit! The Court loves extra briefing, right?" ron dyar, Unsplash

I've had this come up a couple of times lately, and an opinion came out on Friday that addresses it.

Here is an example scenario: Each side has a discovery dispute. The Court sets a briefing schedule with opening, answering, and reply 3-page briefs. Can each side spend half of its opening brief pre-briefing the other side's issues? Should they?

Judge Fallon resolved this on Friday with a clear "No". You wait for the other side to file their brief, and then respond:

ORAL ORDER re 49 Joint Motion for Discovery …

Trash Can Basket
Gary Chan, Unsplash

If you file a motion to dismiss and it's contingent on resolution of a claim construction issue in your favor, you're at risk of being denied. We saw that yesterday in a case before Judge Hall, where she denied a motion to dismiss in advance of the Markman hearing:

ORAL ORDER: Having been reassigned this case, having reviewed the briefing filed in connection with Medacta's pending Motion to Dismiss Count III (regarding infringement of the '678 patent) for Failure to State a Claim (D.I. 12 ), and it appearing that the outcome of the Motion depends on the Courts claim construction of a particular term, and in light of the fact that claim construction disputes are …

Its going to be a short post tonight because I'm writing a brief and a Minnesota team looks like it may fail to disappoint me in the playoffs for the first time ever.

Please do good wolves. Please.
Please do good wolves. Please. Chris Ensminger, Unsplash

Thankfully today we got an argument about venue that I had never seen before. I mean, It's been 8 years since TC Heartland -- its really pretty nuts that you can still see something new.

The case was Institute for Environmental Health, Inc. v. National Beef Packing Company, LLC, C.A. No. 23-826-JS (D. Del. May 16, 2024). Defendant was moving to transfer, and before addressing the usual Jumara factors, the court addressed the threshold question of whether venue was proper in Delaware.

Defendant—and this is the weird part—argued that it did not reside in Delaware because, it was a Delaware LLC, rather than a corporation. The Court disagreed:

Defendant argues that as an LLC it is unincorporated, and thus under TC Heartland, LLC, it does not “reside” in Delaware because it was not “incorporated” in Delaware. However, Defendant was organized as an LLC under Delaware law and therefore for purposes of venue resides in Delaware. Further, other federal district courts have held that an LLC resides in the state in which it was organized . . . Accordingly, venue is proper in the District of Delaware.

Id. at 7-8 (internal citations omitted).

As near as I can tell this is the first time a party has made this argument in Delaware. Judging by the decision, I don't expect to see too many more, but I do appreciate the easy post.


Go Wolves!

"That's Jim. He's been like that since he forgot to mention our fifth non-infringement argument in the JMOL after he was up until 4am doing exhibit objections. Turns out that's the one we needed to preserve." Sabina Music Rich, Unsplash

Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.

Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.

But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.

The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.

Trial teams handle this many different ways, but the most common seems to boil down to ...

Motions for summary judgment that a particular patent is "not invalid" (why can't we just say valid? I think the patents would like that better) are generally pretty winnable.

Why do they have to say it like that doc?  Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me!
Why do they have to say it like that doc? Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me! AI-Generated, displayed with permission

A brief survey of the last 10 such decisions found that fully half were granted. Most of those decisions, however, dealt with 112 or 101 issues. If you're moving on your more classic obviousness and anticipation issues, however, you've got a pretty rocky row to hoe. A look back at those opinions finds that only 30% of the last 10 were granted, at least one of which appeared to deal with a defense that was largely abandoned.

Today's opinion in Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 (D. Del. May 2, 2024), is a good example of a situation where such a motion is worth shooting for (and possible ordering higher in your list). The plaintiff, Qorvo (pronounced just like it looks), complained that the defendant's obviousness expert had failed to present any testimony on the motivation to combine. Defendant countered that their expert had done the appropriate analysis, but had simply failed to use various "buzz words" from Graham, KSR, and the like.

Judge McCalla agreed with ...