A Blog About Intellectual Property Litigation and the District of Delaware


Court Denies § 101 Motion, Holding That "address[ing] § 101 issues in . . . seriatim . . . is not a good use of the Court's time"

Andrew E. Russell, Oct. 25, 2023
Motion to Dismiss Congestion

Terracotta Warriors
Aaron Greenwood, Unsplash

Along the lines of on Friday's post, Judge Noreika issued an order in a different case this week denying a § 101 motion because it addressed only a subset of claims, and suggested that more claims may be asserted:

ORAL ORDER re (10 in 1:23-cv-00174-MN) (9 in 1:23-cv-00220-MN) MOTION to Dismiss - Defendants have filed motions to dismiss for failure to state a claim, arguing that claim 1 in two of the four asserted patents is directed to ineligible subject matter under 35 U.S.C. § 101. . . . Defendants state in a footnote that they are not addressing other claims, but that very same footnote suggests that the Court may face additional § 101 arguments in the future should Plaintiff add further asserted claims from the two patents at issue in the motion and that the Court may also later have to address § 101 with respect to the remaining two patents not subject to the present motion. (C.A. No. 23-220, D.I. 10 at 2 n.2). Given that Defendants' § 101 motions suggest that the Court will be forced to address § 101 issues in this case seriatim and because doing so is not a good use of the Court's time, IT IS HEREBY ORDERED that Defendants' motions to dismiss are DENIED without prejudice to renew as appropriate during summary judgment. ORDERED by Judge Maryellen Noreika on 10/23/2023.

AlmondNet, Inc. v. Freewheel Media, Inc., C.A. No. 23-220 (D. Del. Oct. 23, 2023).

What was in the footnote? An admission that the motion doesn't resolve all of the claims:

This motion is directed to only two claims—claim 1 of the ’307 patent and claim 1 of the ’249 patent—because they are the only claims of those patents that the Complaint alleges Defendants infringe. . . . While Plaintiffs could conceivably assert other claims of the ’307 and ’249 patents if the Court grants this motion, they would do so at their peril because those other claims add only incidental limitations to the two at issue here. Thus, resolution of this motion will likely dispose of two of the four asserted patents in this case. Moreover, because Plaintiffs’ patents are all similar—and all face similar obstacles under Section 101—Defendants believe that deciding this motion now will streamline and promote resolution of this entire case, and possibly of other AlmondNet cases as well, since they involve similar or overlapping patents. . . . Accordingly, Defendants believe that deciding this motion now, at the Rule 12 stage, will be an efficient use of the Court’s resources.

Id., D.I. 10 at 2 n.2.

This outcome is not unusual, but it's definitely something to keep in mind when evaluating ...

View

Das Suit

Nathan R. Hoeschen, Oct. 24, 2023
Hague Service

Like all right-thinking people, I hate the Hague.

Not the city, which is probably a nice place with a rich tradition of tulips and sausages, but the convention on international service of process which is a nightmare for those of us used to the stereotypically fast and loose system that reigns on this side of the pond.

Can you believe that out of 6 tries this was the best drawing of a tulip eating a sausage? I think we'll hold off SKYNET for another few months
Can you believe that out of 6 tries this was the best drawing of a tulip eating a sausage? I think we'll hold off SKYNET for another few months AI-Generated, displayed with permission

The rules are labyrinthine, the requirements that can be figured out are onerous, and it frequently takes months for the central authority to determine that you've done something wrong and need to start the whole process over again. If, however, you somehow manage to get the central authority's stamp of approval, you've effectively insulated yourself from later attacks on the method of service.

That was the lesson of Judge Williams recent opinion in Tigo Energy Inc. v. SMA Solar Tech. Am. LLS, C.A. No. 22-915-GBW (D. Del. Oct. 23, 2023) (Mem. Op.). The plaintiff there had sued a german company and its american subsidiary for patent infringement. Service on the U.S. entity was easy enough, but the German parent refused to waive service, forcing the Plaintiff to go through the Hague. After a rejection, the central authority accepted the application and effected service on the German parent. The German parent then moved to dismiss for ineffective service, alleging that the documents failed to comply with the Hague convention, and that the German central authority accidentally served an unrelated company.

Judge Williams found these arguments ...

View

Court Dismisses All Claims with Prejudice After IPR—Even Though Some Were Not Invalidated

Andrew E. Russell, Oct. 23, 2023
Voluntary Dismissal MTD

Dart in Target
Silvan Arnet, Unsplash

Both parties in Wrinkl, Inc. v. Meta Platforms Inc., C.A. No. 20-1345-RGA (D. Del.) agreed that the case should be dismissed after the PTAB invalidated 50 of the 54 asserted claims, but disagreed about whether the remaining 4 claims should be dismissed with prejudice.

The plaintiff claimed that it did not intend to assert the remaining claims, but that it should retain the right to, and that it is unaware of caselaw holding that the Court cannot dismiss some claims with prejudice and some without.

The defendant argued that the Court cannot split up the claims, and must dismiss all or nothing with prejudice:

Defendants contend there is no legal support or precedent …
View

In Response to § 101 Motion, Judge Noreika Orders Plaintiff to Identify Asserted Claims (a Prelude to Denial?)

Andrew E. Russell, Oct. 22, 2023
MTD Motion to Dismiss

"How many more claims will we assert? I'm glad you asked..." Klim Musalimov, Unsplash

We noted last year how Judge Noreika has sometimes denied § 101 motions to dismiss that challenge large numbers of claims, holding that it is more efficient to deal with such motions at the SJ stage (where, presumably, the case would be narrowed).

This week, the Court addressed a § 101 motion in Global Tel*Link Corporation v. JACS Solutions, Inc., C.A. No. 23-500-MN (D. Del.). The motion seeks a § 101 ineligibility finding for 5 claims across 5 asserted patents—i.e., one claim per patent. That's all the plaintiff asserted in the complaint. Id., D.I. 20.

In response, the plaintiff (wisely) argued …

View

1-D Chess

Nathan R. Hoeschen, Oct. 19, 2023
Stay Pending IPR

In the last few years, its become increasingly easy to win a motion to stay pending IPR. Nowadays, if a good number of asserted claims are subject to the IPR, you can expect a good long stay.

Come on in, stay a while
Come on in, stay a while AI-Generated, displayed with permission

This naturally suggests a strategy for avoiding stays that I have been surprised not to see more of—splitting your suit into multiple different cases, each asserting just a few claims. This seems to be what occurred in ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484-CJB (D. Del. Oct 17, 2023) (Oral Order).

In that case, Immervision filed two separate suits at around the same time (but not actually on the same day) asserting different claims of the same patent. The PTAB issued an IPR that covered all of the claims asserted in one of the cases, but none of those asserted in the other. Apple moved to stay both cases (which had been consolidated for pretrial purposes), and Immervision opposed, just as to the case not covered by the IPR.

Unfortunately for the Plaintiff, Judge Burke found that it would make little sense to split these consolidated cases apart and granted to the motion to stay as to both cases:

Additionally, absent a stay in this scenario, two rounds of summary judgment and Daubert briefing/hearings would need to be held (one in this action and one in the 1733 action) -- as opposed to one combined summary judgment/Daubert process. Plus, since the PTAB's Final Written Decision in the 990 patent IPR is due in late summer 2024 (prior to the October 2024 trial scheduled in this case), if the PTAB upheld the claims at issue in that IPR, then no doubt ...
View

Judge Hall Confirmed to the District of Delaware!

Andrew E. Russell, Oct. 18, 2023
Nomination Congestion

District Court Seal

Seems like it was just yesterday that we heard that Magistrate Judge Hall had been nominated to take Judge Andrews' seat when he takes senior status.

But it was actually yesterday that we heard that the Senate confirmed Judge Hall as a District Judge in the District of Delaware. According to Law.com, she was confirmed by a vote of 67 to 29, a wider margin than any other federal district court judge this year. Congratulations, Judge Hall!!!

Judge Hall will fill Judge Andrews' spot, after he takes senior status at the end of December. The Court has said that Judge Andrews expects to continue with a full caseload, leaving us with essentially five sitting district court judges. That's great …

View

Hantz [Not] Solo

Nathan R. Hoeschen, Oct. 17, 2023
101 Hantz

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 month
That's right, we're going spooky this month AI-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, …

View

Clever Procedural Maneuver Fails—But Reverses SJ Loss

Andrew E. Russell, Oct. 16, 2023
FRCP 12(c)

Speaking of clever procedural manuevers, here's the
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for one Andrew 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.

The defendant …

View

Slick § 101 Scenario Illustrates the Difference Between Abstract and Not-Abstract

Andrew E. Russell, Oct. 13, 2023

Somehow I feel like this inventor ought to have two dogs, one named
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.

Both patents' specification involve …

View

Court Holds It's All of Nothing When It Comes to Patentee Lexicography

Andrew E. Russell, Oct. 12, 2023
Lexicographer Claim Construction

Corn
Katherine Volkovski, Unsplash

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 ...

View
Newer
Older

Archive