A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: April 2024

Working in patent law for as long as I have, I've developed a fair collection of dictionaries I can turn to when I'm working on a Markman brief and require a bit of support.

(Eds. Note - It's also useful for playing especially cutthroat games of scrabble!)

You can tell whoever took this picture has never actually played scrabble.
You can tell whoever took this picture has never actually played scrabble. Brett Jordan, Unsplash

Perusing these tomes has given me an appreciation for the subtle art of the dictionary and the intense (bordering on worrisome) logophilia of those who create them. I am a particular fan of the OED's practice of including quotations featuring the usage of the word, beginning with the first extant, and showing its varying usages throughout history.

(Eds. Note—I swear, I'm not as lame as this post makes me sound. I just think writing a dictionary would be fun . . . .)

The lesson of todays case, Astellas Pharma Inc. v. Lupin Ltd., C.A. No. 23-819-JFB-CJB, D.I. 200 (D. Del. Apr. 19, 2024) (R&R), is that such artistry is best left for the dictionaries.

The patent in Astellas required treatment with a controlled release formulation "such that the treating is with a reduced food effect." The defendant (opposing a request for preliminary injunction) argued that "reduced" food effect was an indefinite term of degree. In support they pointed to a passage in the specification that seemed to provide several possible definitions for "reduced":

The wording “the effects by food are reduced” as used herein means, for example, a reduction by 10% or more, a reduction by 20% or more in another embodiment, and a reduction by 30% or more in still another embodiment, in comparison with Cmax of a conventional formulation. Alternatively, the term means, for example, a reduction of 10% or more with respect to the rates of decrease of Cmax and AUC in administration after food intake, in comparison with Cmax and AUC in administration in the fasted 15 state, a reduction of 20% or more in another embodiment, and a reduction of 30% or more in still another embodiment.

Astellas at 14 (quoting '451 patent, col. 7:57-67)

Judge Burke found this inconsistency persuasive, noting that ...

License for Thee
AI-Generated, displayed with permission

Maybe it's just me, but pre-trial evidentiary opinions are always fun to read. They often involve rules that don't come up in other written opinions, and all of the rulings tend to be highly impactful for trial (otherwise the parties wouldn't be spending their extremely limited pre-trial time and MILs on the issues).

We got an opinion from Judge Bryson last week on pre-trial evidentiary issues in Acceleration Bay LLC v. Activision Blizzard Inc., C.A. No. 16-453-WCB (D. Del. Apr. 28, 2024). There are a number of interesting rulings in it, but one in particular that is worth calling out involved whether a party can offer evidence of past licenses to prove damages. …

Colored Plants
Scott Webb, Unsplash

This decision is a bit dense, but it's on an issue that could come up in any case.

The plaintiff in TOT Power Control, S.L. v. Samsung Electronics Co., Ltd., C.A. No. 21-1305-MN (D. Del.) accused several products by name, and also stated in its infringement contentions that it would "seek discovery as to the identity of any [of the defendant's] products with substantially similar designs to the expressly listed accused products." D.I. 131.

The case progressed, and it turns out that the defendant does, indeed, have multiple products with similar names. The Court ultimately granted a motion to compel the defendant to provide financial discovery on each of the alternative products, even …

Today's case begins with what I imagine is the worst expert report ever presented in a patent case. How do I know that? Because the whole thing was 2 pages, about half of which was explaining that he was not "retained or specially employed to provide expert testimony" and thus did not have to provide a report under Rule 26(a)(2)(B), but merely a summary of opinions under (a)(2)(C). The entirety of the substantive portion of the report is about the same length as this introductory paragraph, which I wrote in less time than it took me to drink a delicious diet pepsi. I was thinking about just block-quoting it here, but it really screwed with the formatting, so you'll just …

"Our two identified custodians have the 'majority' of relevant docs and any others have 'duplicative' info." Discovery dispute goes *poof*? AI-Generated, displayed with permission

In the District of Delaware, unless the parties agree otherwise, ESI discovery is guided by the Default Standard for Discovery. The Court published the Default Standard over a decade ago, and at this point quite a bit of case law has developed interpreting its various provisions.

Among other things, the Default Standard requires each party to identify "[t]he 10 custodians most likely to have discoverable information" in a case. These custodians' files will ultimately be searched as part of the document production process.

One common question is: what if we have less than 10 custodians with discoverable information? The answer to that is typically "disclose what you have," but I had not seen a case setting a standard for when a party can disclose less than 10 custodians—until this week.

In Attentive Mobile Inc. v. 317 Labs, Inc., C.A. No. 22-1163-CJB (D. Del.), Judge Burke addressed a discovery dispute where the defendant identified just four custodians. He denied a motion to compel the identification of more custodians based on an argument that the four custodians had a "majority" of the non-duplicative ...

There are a few words I dread seeing in an order. Some are obvious—"egregious," "sanctions," "nonsensical," "balding," etc. Others I only learned to fear after seeing them used in an opinion—"valiant," "sporting," "leakage" (don't ask).

In an opinion issued over the blog's break, Judge Williams gave new fuel to the pyre of woe that is my subconscious, and added a new word to my list: IRONY

Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly.
Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly. Filip Mroz, Unsplash

Even without the irony, Chervon (HK) Ltd. v. One World Techs., Inc., C.A. No 19-1293-GBW, D.I. 394 (D. Del. Mar. 26, 2024) was an unusually interesting discovery dispute. In that case, the parties agreed to a case narrowing procedure wherein, after final contentions, the defendant was to elect no more than 3 grounds per asserted claim. When the defendant served that election, plaintiff complained that it included grounds that were not charted in the final contentions. In an apparent attempt to moot the issue, the defendant then served (without seeking leave) new contentions that did chart all of the elected grounds. The plaintiff then moved to strike the portions of the election not previously charted and the new contentions in their entirety.

Judge Williams granted that motion, striking most of the elected grounds and all of the new contentions, in particular noting that the defendant had not sought leave to serve them. Unfortunately this left the defendant without any elected grounds for several claims, and so they served a new election of asserted grounds including only grounds which were charted in the original, unstruck contentions (with a bit of a fudge factor). Shortly after service they moved for leave to submit the new contentions, and plaintiff cross-moved to strike them.

Which is where we get to the IRONY of it all ...

"They brought four motions to strike? We better bring 5!" AI-Generated, displayed with permission

There was an interesting order last week in Cleveland Medical Devices Inc. v. ResMed Inc., C.A. No. 22-794-JLH (D. Del.).

The parties filed a letter initiating a discovery dispute conference with the Court. These letters must include non-argumentative descriptions of each dispute the parties raise with the Court. Here, the letter listed a total of nine motions to strike expert reports, including five from the plaintiff and four from the defendant.

Typically the Court reviews these letters and sets a date for a conference and for briefing on each sides' issues. Here, however, the Court took issue with the extraordinary number of …

Scanning a Network Printer
AI-Generated, displayed with permission

In some ways, the title says it all—but here is a bit more detail. In Throughtek Co., Ltx v. Reolink Innovation Inc., C.A. No. 23-218-GBW-SRF, D.I. 60 (D. Del. Apr. 19, 2024), the patent at issue claimed a system for identifying a networked device in order to establish a connection to it, by scanning a bar code or other image patter on the device.

The defendant moved to dismiss under § 101, arguing that the patent was directed to an abstract idea.

Judge Fallon issued an R&R holding that using the bar code for the connection information solved a problem necessarily rooted in computer technology, and was a specific improvement to computer …

I love a 1782 Application. It's like watching a foreign film -- you get to learn all these neat little tidbits about other countries and ponder what it might be like to live and die as a Moldovan Lawyer.

Huh, everyone wears hats here
Huh, everyone wears hats here AI-Generated, displayed with permission

Judge Williams decided one such application related to a suit in that most exotic of locations - Germany.

The applicant in In Re Ex Parte Application of Nokia Techs., C.A. No. 23-1395-GBW (D. Del. Apr. 18, 2024) (Mem. Order) was seeking source code and other docs from a little mom and pop shop called Amazon, for use in pending and contemplated German infringement proceedings.

The Court denied the request …

Nguyen Dang Hoang Nhu, Unsplash

Juror questionnaires are rarely a sure thing. These are questionnaires that jury services sends to jurors called for service. The answers are then provided to the parties shortly before trial. Parties like them because they aid in jury selection, but the Court often raises concerns—although they do go out in some cases.

Judge Hall last week rejected a joint request for a jury questionnaire, noting that it would largely overlap with regular voir dire questions:

ORAL ORDER: Having reviewed the parties' joint letter regarding their request to send out a juror questionnaire (D.I. 522 ), IT IS ORDERED THAT the request is DENIED. The Court does not see a reason to burden the prospective …