We take a break from blogging around this time every year. We're starting early this year, since news has been a bit slow lately and Nate has a trial this week. See you in a couple of weeks!
Entries for date: June 2025
I always find that it can be helpful to see how judges rule on things, even if the rulings are kind of fact-specific, because it can still give you a sense of how they will rule on other things. (Thus, we have a blog.)
In Attentive Mobile Inc. v. Stodge, Inc., d/b/a Postscript, C.A. No. 23-87-CJB (D. Del. Jun. 12, 2025), Judge Burke addressed a Daubert motion to preclude a damages opinion that included revenue from non-infringing functionality in its royalty base, on the basis that it failed to apportion damages.
The patentee argued …
We missed this when it came out, but Judge Fallon issued an opinion in March that addressed whether a defendant could evade service of process by, he claims, not opening the door when the process server tried to serve him.
In Pelham v. Vbit Techs. Corp., C.A. No. 23-162-JLH-SRF (D. Del.), a securities action, the plaintiff filed a Return of Service from their process server stating that they had served one of the defendants by personally delivering the complaint to the defendant at home—but the defendant disagreed:
On March 17, 2023, Plaintiffs filed a Return of Service, of the original summons and complaint. (D.I. 6) The affidavit of the process server states that on March 7, 2023, he personally served Jin Gao at his residence. . . . Subsequently, on April 5, 2023, Gao's counsel emailed Pelham's counsel, who filed the Return of Service, informing counsel that Gao was not personally served. . . . Gao's counsel did not receive a response from Pelham's counsel.
Id., D.I. 70 at 13.
The defendant submitted what he claimed was doorbell camera video to rebut the claim that he was served—but the Court did not consider that video, because ...
ne of my many litigation dreams is to develop an inescapable trap for my opponent. A no-win situation in which to prevail on infringement, they must lost validity or vice versa. In Insoluble dilemma that can only lead to their resigning the case.
On this note, I present to you the novel indefiniteness theory presented in Kaneka Corp. v. Designs for Health, Inc., C.A. No. 21-209-WCB (D. Del. June 16, 2025). The claims at issue there were your garden variety claims to a solution that specified at least X% of unobtanium, Y% of salt, etc. The claims did not specify the precise parameters under which one was to measure these percentages.
(Eds. Note—Always fun to see some analytical chem in an opinion. Shout out to my HPLC and HPLC-MS peeps, ride on)
The defendants' expert had apparently measured the percentages of their product using his preferred method, and found that it was outside of the claimed percentages. The defendants then made the unusual move of submitting a conditional expert report on indefiniteness, arguing that if the plaintiff's expert found that the product did infringe, it meant the claims were indefinite because different methods for analyzing the percentages could yield different results, and thus that a POSA would not know whether a given product infringed.
Judge Bryson rejected this theory, and granted a motion to strike the report:
The defendants’ theory of indefiniteness is that if different testing methodologies produce different results, such that one testing protocol shows infringement and another shows no infringement, the claim language at issue must be indefinite. That theory is fundamentally flawed. As long as the claim defines infringement according to a single measurable standard, the fact that two different testing protocols may produce different results creates only an issue of infringement. It does not create an issue of claim indefiniteness.
In such a case, if two measurement techniques produce different results—one infringing and the other not—the task of the litigants and the fact-finder is to determine which of the two techniques is the more accurate, and to base a judgment of infringement on that finding. In this case, the limitation at issue requires Kaneka to prove that “the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %.” That is a fixed ratio with a single value for a specific chemical compound. Different testing methods, or testing done at different times and under different conditions, may produce varying results, either above or below the 90 wt % figure. But that is just to say that different testing procedures may be more or less accurate, and that particular samples of the accused product may infringe or not infringe depending on the conditions under which they are tested. But inconsistency in the results does not indicate that the claim limitation is indefinite, as 90 wt % of reduced coenzyme Q10 has only a single meaning, even though different tests at different times and under different conditions may produce results on either side of the 90 wt % value, which is fixed and definite.
Id. at 8-9 (internal citations omitted).
I saw this opinion last week and figured it would make for a nice lighthearted Friday post, but it got bumped to today when I decided to instead post about parties consenting (or not) to hearings and trial in E.D. Tx. So this is now a lighthearted Monday post.
Decades ago, former Chief Judge Robinson was known to occasionally include Princess Bride movie references in her opinions. See, e.g., Adkins v. E.I. du Pont de Nemours & Co., C.A. No. 95-315-SLR, 1995 U.S. Dist. LEXIS 17707, at *19 n.5 (D. Del. Nov. 21, 1995) (after a party called offering a more specific amended pleading …
We noted last month that there have been more assignments to visiting judges lately, including to visiting Judge Campbell Barker of the Eastern District of Texas.
Later last month, Judge Barker issued an order in 17 cases asking parties to let the Court know whether they consent to hearings or trial in the Eastern District of Texas:
Within 28 days . . . . each party shall file a notice stating whether the party consents to trial, see 28 U.S.C. § 1404(a), hearings, see Fed. R. Civ. P. 77(b), or both in the Eastern District of Texas, Tyler Division.
Yesterday was the deadline to respond for most cases. We put together some quick, rough statistics of …
Federal Courts is one of those classes that everyone has a tumultuous relationship with. My own professor on the subject continues to vex me by running a rival legal blog. Like Boat News before them, they shall be long forgotten to history whilst IP/DE reigns ascendant. Their name spoken only by those frightened few who stumbled upon their dark and damp remains.
In any event, while issues of federalism, preemption, and the like do not often rear their heads in my practice, they often spawn an interesting opinion when they do. Case in point, Judge Fallon's opinion in Convatec, Inc. v. HR Pharms., Inc., C.A. No. 24-1248-RGA-SRF (D. Del …
We've talked about this before, but it was so long ago that I think it's worth pointing out again. Typically, left to their own devices, parties in patent cases will schedule initial contentions, then claim construction and a Markman hearing, and then final contentions.
In theory, the final contentions can then reflect claim constructions. In practice, it doesn't always work out that way, given that a Markman opinion may come out after the hearing anyway. If you want to have constructions before final contentions, you need to leave a fair …
Lawyers have the odd habit of speaking in our own, often pointless, patois. Why do we say inter alia? Ceteris paribus? De benne esse? Is it all to save the occasional word through the vagaries of Latin grammar? Is it a plot to make our work less comprehensible to the layman, and thus to puff ourselves up? Are we just word nerds?
The issue is often worsened when legalese butts up again other technical jargon, as in a patent specification. Hence the constant claim construction battles over the "plain and ordinary meaning" of a crumfustulator among wild-animal podiatrists.
(Eds. note—should have saved the picture for the crumfustulator. You'll just have to use your imaginations for that one)
But what happens when the patent does use words with a plain meanings to both the expert and the novice? Would that intriguing state of affairs be a boon or a curse in a patent case?
Last week's opinion in Lab. Corp. of Am. Holdings v. Natera, Inc., C.A. No. 21-669-GBW (D. Del. June 5, 2025) (Mem. Order) shed some light on the question. The plaintiff there had a source code expert who opined on how the code operated, but explicitly did not provide any opinion on whether the relevant product infringed (that was done by a different expert who relied on the source code expert's report). Indeed, he testified that when he wrote the report he hadn't even read the Court's claim construction opinion. Nevertheless, his report used several common phrases contained in both the patents and the Court's Markman Order including "sequence reads" and "combining."
Defendant thus moved to ...
Delaware's Local Rule 7.1.1 requires, in cases that don't involve pro se parties, that the parties must have a verbal meet-and-confer before either party files a non-dispositive motion:
Except for civil cases involving pro se parties or motions brought by nonparties, every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. …
