Where a patentee asserts indirect and/or willful infringement claims in its complaint, but does not allege facts showing pre-suit knowledge or intent with respect to the asserted patent(s), the following question arises: Can the original complaint provide knowledge of the patents-in-suit sufficient to support claims for post-suit indirect/willful infringement? It turns out the answer to that question is both yes and no, as Judge Burke explained in a September 22 Report and Recommendation in ZapFraud, Inc. v. Barracuda Networks, Inc., 19-1687-CFC-CJB.
[UPDATE: Apparently not! This opinion was reversed on a motion for reconsideration; further update below]
Judge Connolly today struck portions of an expert report where the expert opined that the accused product did not infringe because it included extra components in addition to what was claimed in a means-plus-function claim element.
According to the Court, this is contrary to the well-established principle that additional structure does not preclude infringement of an MPF claim element, if the required structure is also there.
[UPDATE: As the Court recognized on reconsideration, that was not what was happening here. Instead, the expert was pointing out that the opposing party's expert had failed to identify the a structure that performed the function, not that the …
Judge Bryon issued an interesting stay opinion last Friday.
The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.
The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.
Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:
- What a turnaround! Defendant first indicated it intended to request a stay …
Judge Noreika had a rare holding estopping a plaintiff from asserting the lone patent-in-suit patent due to collateral estoppel after trial.
The Court held a five-day bench trial in Biogen Int'l GmbH v. Amneal Pharms. LLC, C.A. No 17-823-MN in December 2019, dealing with a host on invalidity issues, including obviousness, enablement, and written description. The parties completed post-trial briefing in March 2020, and and a final opinion was thus expected in the not-too-distant future.
Unfortunately for Biogen, they also sued a different defendant, Mylan, in the Northern District of West Virginia on the same patent. That case went to trial in February 2020, on the sole …
Judge Andrews yesterday issued his opinion denying all post-trial motions in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA (D. Del.). The jury had returned a verdict of infringement and no invalidity after a trial in January 2020.
One part of the opinion stands out—Judge Andrews discusses his decision to preclude the defendant from discussing the full prosecution history of the patent before the jury as prejudicial under FRE 403:
I ruled that 2Wire could elicit testimony about what prior art was in front of the patent examiner, but that testimony about a “lengthy history of cancelling claims, adding claims, rejecting claims, [and] rejecting new claims” was inadmissible under Federal Rule of Evidence 403 because …
Despite a recent spate of postponements of jury trials, the District Court today officially entered Phase 2 of its reopening plan (District Court Details Re-Opening Plan), permitting jury trials to go forward on a limited and heavily regulated basis.
If these public Zoom links become more common, I'll likely stop posting about them (especially now that jury trials are set to resume). But for now, here is the Zoom link for today's trial in Xcoal, which restarted at 9 am this morning:
ORAL ORDER: The bench trial is available to the public by telephone, using dial in: 1-703-552-8058 and Conference Code: 944408, or by video, using the following link: https://trialgraphix.zoom.us/j/99196614906: Meeting ID: 991 9661 4906 Password: 166996. Audio or video reproduction of the proceeding is strictly prohibited. ORDERED by Judge Leonard P. Stark on 9/14/20. (ntl) (Entered: 09/14/2020)
As a reminder, this is the trial that was derailed immediately after opening statements by the receipt of an …
In the holding below, Judge Burke found that, under Pennypack, producing documents just over two months before trial was sufficient to provide time for "Defendants to be able to appropriately respond to Plaintiffs' expert's related position."
This is a shorter timeline than typically comes up. For example, Judge Burke has previously struck late-produced material where there were six months remaining before trial, although in that case the other Pennypack factors also played a role.
The facts here were not terrible for defendants. The documents had been produced by individual defendants in a set of related cases. According to the plaintiff, the expert reports at issue used the documents from various defendants to respond to arguments from those defendants, although …
Looks like Judge Fallon is trying out a new way of doing public hearings, with a YouTube mirror of a private Zoom teleconference at 10:00am ET on Tuesday 9/15:
ORAL ORDER- The Markman Hearing on 9/15/2020 will be a public hearing. The YouTube link for interested members of the public to observe the live Zoom session is https://www.youtube.com/watch?v=w-9WpLOvaLk&feature=youtu.be.
NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA-SRF (D. Del.).
The hearing is scheduled to last 3 hours and cover 6 terms.
To my knowledge, this is the first D. Del. hearing to post a public YouTube (rather than Zoom) link, at least in the IP space.
Honestly this sounds like a good way …
The District of Delaware's current coronavirus-related standing order banning jury trials expires Tuesday, 9/15.
When it expires, the Court will allow jury trials under its Phase 2 guidelines, starting with only a single jury at a time, and prioritizing criminal cases.
So far there has been no indication that the Court will extend the ban, although the previous extension occurred on day the last order expired.
Upcoming trials were rescheduled in a total of five cases this week, but it looks like those were rescheduled at the parties' request (four of those cases were related to last weeks' delay in the Sprint action).
The most recent information I've seen from …
