A Blog About Intellectual Property Litigation and the District of Delaware


A Protective Order Loophole

Nathan R. Hoeschen, Feb. 16, 2023
Protective Order

I was always disappointed when I became a lawyer that my day-to-day work did not involve more loopholes. You watch any TV show -- Law & Order (original or extra crispy (that's SVU)), The Good Wife, Matlock, all you hear is loophole this and loophole that. But every day I come into the office and its just the regular old law. It just seemed less clever than a loophole.

I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet
I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet AI-Generated, displayed with permission

I was thus borderline ecstatic to see Judge Burke deciding a discovery dispute over what seems to be a genuine loophole in a protective order.

The prosecution bar in FedEx Corporate Services, Inc. v. Roambee Corp., C.A. No. 21-175-CFC-CJB (D. Del. Feb. 13, 2023) had three distinct parts.

The first was a basic prosecution bar:

[P]ersons . . . who have received access to Designated Material, shall not be engaged . . . in prosecution of patent applications on behalf of the Receiving Party . . . claiming tracking devices used in systems that monitor shipments, without prior approval to do so from the Producing Party.

The second allowed persons otherwise covered by the bar to advise on subjects other than the drafting crafting or amending of claims before the ...

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Whence Defenses?

Nathan R. Hoeschen, Feb. 15, 2023
Motion to Dismiss

Even the dullest 1L can tell you that rule 12(b) sets the timing for motions to dismiss:

A motion asserting any of [the 12(b)] defenses must be made before pleading if a responsive pleading is allowed.

However, pursuant to 12(h), the defenses listed in 12(b)(2)-12(b)(5) are not actually waived as long as you include them as an affirmative defense in your answer (12(b)(1) and (b)(6) have separate rules).

A party waives any defense listed in Rule 12(b)(2)–(5) by . . failing to either:(i) make it by motion under this rule; or include it in a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course

So then, if these defenses aren't waived, when can you …

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What Items and Documents Should You Bring to a Hearing as an Attorney? Here's a Checklist.

Andrew E. Russell, Feb. 14, 2023
Trial Practice KB

Pictured: The poor associate, who writes the briefs, carts the boxes, and dutifully passes polite notes up as the partner mangles the argument
Pictured: The poor associate, who writes the briefs, carts the boxes, and dutifully passes polite notes up as the partner mangles the argument AI-Generated

One question I've seen from time to time is "what should we bring to the hearing?" Not "how should we prepare," but what physical stuff should litigators bring on the day of a hearing or oral argument?

I thought it would be useful to post a checklist—both for you, our readers, and so that I can send it around in response to future questions.

The checklist below should be considered ideas for what to bring. Practiced litigators undoubtedly already have their own systems, and every hearing is different. You should not bring everything below to every hearing. This list is instead meant as a last-minute, "I'm about to head out the door, is there anything else I should bring?" checklist to spark ideas.

Note that this is geared towards oral argument in patent cases in the District of Delaware, but much of it is applicable to other kinds of hearings ...

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Chief Judge Connolly Borrows from Patent Law to Permit Consideration of Non-Infringing Alternatives in Copyright Case

Emily S. DiBenedetto, Feb. 13, 2023
Patent Non-Infringing Alternatives

AI-generated
AI-Generated

Our recent post on copyright claims concerning AI-generated images reminded me of another interesting copyright opinion from last month. In it, Judge Connolly applied a patent law damages principle to a copyright infringement case involving a computer program.

In patent cases, defendants may use evidence of non-infringing alternatives to attempt to reduce the damages calculation if their product is shown to infringe a valid patent. For example, plaintiffs may argue that they are due lost profit damages under the Panduit factors:

  1. Demand for the patented product,
  2. Absence of acceptable non-infringing substitutes,
  3. The plaintiff possesses manufacturing and marketing capability to exploit the demand, and
  4. The amount of profit plaintiff would have made.

Therefore, a defendant can lower a plaintiff’s …

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Contention Amendment Denied Because Good Cause Is Measured from the Outset of the Litigation

Andrew E. Russell, Feb. 13, 2023
Good Cause FRCP 16

Early case:
Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?" Eric Rothermel, Unsplash

Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.

Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).

Good cause requires diligence, and in practice parties often frame the diligence discussion …

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These Lawyers Clearly Don't Read IP/DE: Odd Brief Prompts Guidance on Claim Construction Proposals

Andrew E. Russell, Feb. 10, 2023
Plain Meaning Claim Construction

No Construction
Andrew E. Russell

In Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC (D. Del.), the parties filed a 60-page joint claim construction brief that included disputes on a number of terms where one party or the other proposed "plain and ordinary meaning" or "no construction necessary" while the other side proposed a specific definition for the terms.

By my count, for every single one of the parties' 15 disputed terms, one side or the other proposed "plain and ordinary meaning" or "no construction necessary" with no alternative construction—before Chief Judge Connolly, no less. These counsel clearly don't read this blog.

In some instances, the parties just briefed the terms in an odd way. …

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Judge Fallon: The Court Is Split on IPR Estoppel

Andrew E. Russell, Feb. 9, 2023
IPR Estoppel Split

Split Cup
Tania Melnyczuk, Unsplash

Judge Fallon issued an order yesterday recognizing the split in the district court on how the judges handle IPR estoppel—specifically the question of whether IPR estoppel may apply to prior art products that are cumulative of patents or publications that could have been raised in the IPR:

ORAL ORDER . . . IT IS ORDERED that Plaintiff's motion to strike Defendant's amended invalidity contentions based on IPR estoppel is DENIED without prejudice. The parties dispute whether IPR estoppel should apply to Defendant's invalidity theories based on prior art systems, products, and/or knowledge. Under 35 U.S.C. § 315(e)(2), Defendant is barred from asserting an invalidity defense based on "any ground that [Defendant] raised or reasonably could …
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Getty Images Files Action Against Stability AI for Copyright Infringement—and for Falsely Marking AI-Generated Images with Getty Watermarks

Andrew E. Russell, Feb. 8, 2023
Trademark Litigation Copyright

I put
I put "getty images" into Stability AI, and it spat this image right out, complete with mangled Getty Images watermark. AI Generated

There was a big complaint filed on Friday in the District of Delaware—Getty Images, a the very-well-known provider of stock images, filed suit against Stability AI over its use of Getty Images stock photos to train its image generation algorithm, which it calls Stable Diffusion.

Stable Diffusion is one of the incredible AI-based image generators making news recently (along with others like Dall-E 2 and Midjourney). These AI models can accept a text prompt and generate a corresponding image. For example, prompted with "an elephant in roller skates," Stable Diffusion generated the following:

Elephant in Roller Skates
AI-Generated

So Why Is Getty Coming After Them?

Broadly speaking—and as alleged in Getty Images' complaint—Stability AI created Stable Diffusion by training a machine learning model to generate output by ...

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Judge Williams Is Now 3 for 3 on 101 Motions

Nathan R. Hoeschen, Feb. 7, 2023
101

A while back I wrote a post about the relative success rates of 101 motions before the different Delaware Judges. To prove once and for all that I sometimes ramble, that entire post can be distilled to the chart below:

  • Chief Judge Connolly - 70% of § 101 motions granted
  • Judge Andrews - 60% of § 101 motions granted
  • Judge Stark - 20% of § 101 motions granted
  • Judge Noreika - 0% of § 101 motions granted

But that was then, dear reader, before we had a new hotshot on the bench who is batting 1.000. If I knew how to use this site better, I would put Judge Williams at the top of this chart in flashing lights with …

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Court Grants SJ of Invalidity Where Claims Failed to Include Key Limitation from Spec

Andrew E. Russell, Feb. 5, 2023
SJ Summary Judgment

Here is something you don't see everyday.

On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.

In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:

The hydrofoil at issue, from U.S. Pat. No. 9,586,659
The hydrofoil at issue, from U.S. Pat. No. 9,586,659 U.S. Pat. No. 9,586,659

As the Court describes, the whole patent is focused on the board's stability feature:

The specification of the '659 Patent only, and repeatedly, describes the …
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