A Blog About Intellectual Property Litigation and the District of Delaware


Judge Andrews Rejects Attempt to Fix § 101 Issues via Amended Complaint (with Prejudice)

Andrew E. Russell, Aug. 15, 2022
Amended Complaint Motion to Dismiss

Apples at which the patentee will not be getting a third bite.
Apples at which the patentee will not be getting a third bite. Pierpaolo Riondato, Unsplash

Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).

He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:

Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.

Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)

Id. at 19.

Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:

The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...
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Court Denies Request for In-Person Deposition, Citing COVID-19 Pandemic

Andrew E. Russell, Aug. 12, 2022
Depositions COVID-19

The view as you take off on the redeye after a one-hour deposition of a non-critical witness
The view as you take off on the redeye after a one-hour deposition of a non-critical witness Saman Tsang, Unsplash

At this point, the vast majority of the impact of COVID-19 on the District of Delaware seems to have passed. The Court has entered Phase 4, full return to normal operations. It's becoming uncommon, at this point, to see counsel or Court personnel wearing masks at the courthouse.

The COVID-19 pandemic was obviously a horrible tragedy, but one positive response to it has been the widespread adoption of remote depositions, which are far (far!) more efficient for certain circumstances. If you've ever flown cross-country for a deposition, then boarded the red-eye back immediately after the deposition, you may agree.

But sometimes the other side won't agree to a remote deposition. That's why I found this order from Judge Stark (who it seems is still working hard in Delaware) to be interesting:

ORAL ORDER: Having reviewed the parties' letters regarding a discovery dispute (see D.I. 543, 544), IT IS HEREBY ORDERED that Plaintiffs' request that MSN and Sandoz be required to produce Dr. Reus for an in-person deposition is DENIED. Virtual depositions have been permitted for fact discovery in this case due to the ongoing global health crisis. (See, e.g., D.I. 34 at 13-14) Defendants represent that their expert is at some greater-than-average risk of adverse health consequences were he to contract Covid and Plaintiffs fail to identify any meaningful prejudice that would ...
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A Dispute Less Common

Nathan R. Hoeschen, Aug. 11, 2022
Inventor

This case is not about pizza, but I am writing this post while hungry
shaian ramesht, Unsplash

Engineers move all of the time. They start at one company that makes pizza oven accessories and related widgets. They bring that company to the delicious heights of excellence, authoring patent after patent in their pursuit of the perfect crust. Then, having achieved all anyone could hope for, they move on to a competing pizza oven accessory conglomerate, to do it all over again.

That being the case, its surprising we don't see more disputes like the one in Signode Industrial Group LLC v. Polychem, LLC, C.A. No 22-519-VAC-CJB, D.I. 94 (D. Del. Aug. 10, 2022). Like our metaphorical Pizzaneer, Flavio Finzo worked for Signode for many years and was a named inventor on a couple patents in suit. After retiring he started a consulting firm that worked with Polychem to develop their competing product (something to do with straps, totally no pizza involved, I am just hungry).

Signode then moved for a protective order to prohibit the defendant from "eliciting or receiving" any confidential or privileged information from Mr. Finzo, alleging that several facts referenced in the answer could only have come from his confidential and/or privileged knowledge. Defendant agreed that they had not and would not elicit any privileged information, and agreed to treat any confidential information pursuant to the existing protective order. Judge Burke held that these concessions were ...

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Court Grants Daubert Motion Based on One-Sentence Argument in Footnote

Andrew E. Russell, Aug. 10, 2022
Pennypack Daubert

Football
Dave Adamson, Unsplash

It happens all of the time: You've got arguments A, B, and C that you want to fit in your brief, but you don't have the space to address them all.

What to do? Cut the weaker arguments?

For most attorneys, the answer is: of course not! They move the lesser argument to a footnote in a hail-mary attempt to win if the better arguments fail.

Does it work? Not usually. Here in D. Del., judges have suggested that parties waive arguments when they present them only in cursory footnotes, and Judge Noreika recently noted that "courts traditionally do not consider arguments presented entirely in footnotes." Nw. Univ. v. Universal Robots A/S, C.A. No. …

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Judge Noreika Shares Her Own Preferences On The Form and Content of Jury Instructions

Nathan R. Hoeschen, Aug. 9, 2022
Jury Instructions

Gary Chan, Unsplash

Hot on the heels of yesterday's post about Chief Judge Connolly's preferred style of Jury instructions, Judge Noreika just issued an Oral Order outlining her own preferences for the format and content of final jury instructions.

The parties in Aqua Connect, Inc. et al v. TeamViewer US, LLC, C.A. No. 18-1572-MN submitted their proposed final jury instructions to the Court about 2 weeks ago, which included several disputes. Yesterday Judge Noreika issued the Oral Order below requiring them to resubmit the proposal with several modifications:

The Court has reviewed the proposed final jury instructions and finds that submission does not conform with the Courts practices. Moreover, it appears as though the parties have not made …
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Phased Trial Results in Verdict for Plaintiff on All Counts; Some Comments by Chief Judge Connolly on Phased Trials and Jury Instructions

Andrew E. Russell, Aug. 8, 2022
Jury Selection Jury Trials

Phases
Phases Mason Kimbarovsky, Unsplash

We've previously talked about how Chief Judge Connolly's new form orders split patent trials into phases, with willful infringement and damages tried only if there is a finding of infringement. We noted at the time that the new form order doesn't say in which phase invalidity goes—with infringement, or afterwards?

It looked like we got an answer late last month, when Chief Judge Connolly held a phased jury trial in Magnolia Medical Technologies, Inc. v. Kurin, Inc., C.A. No. 19-97-CFC-CJB (D. Del.). There, the Court split the trial into two phases, with infringement by itself and then invalidity and damages together.

In Magnolia, the jury found infringement, so …

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Can Defendants Move to Stay Vacant Judgship Cases After All?

Andrew E. Russell, Aug. 5, 2022
Congestion Vacant Judgeship

Defendants lining up to file their motions to stay
Defendants lining up to file their motions to stay Rob Curran, Unsplash

When the Court instituted its vacant judgeship procedures following Judge Stark's elevation to the Federal Circuit, the implementing order included procedures to keep cases moving if the parties do not consent to a magistrate judge to hear the case.

For example, the order directs parties to hold a Rule 26(f) conference within seven days of notifying the Court that the parties would not consent to a magistrate judge:

The parties shall cooperate in good faith to move the case forward. To that end, within seven days of filing the notice that the parties would not consent to a Magistrate Judge, the parties shall hold a Rule 26(f) …
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An Interesting Wrinkle In Safe Harbor Law

Nathan R. Hoeschen, Aug. 4, 2022
Safe Harbor

wind-ira-NWr0IHXHTZo-unsplash
Wind Ira, Unsplash

We've discussed before how difficult it is to successfully invoke the safe harbor provision of 271 at the motion to dismiss stage. This is especially so since a plaintiff generally need not look very hard to find statements from the Defendant that they are, like, totally about to sell eleventy-billion-dollars worth of the drug in question. How then, can a defendant—with all inferences taken against them—show that the otherwise infringing product is "solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products?"

The defendant in Allergan, Inc. v. Revance Therapeutics, Inc., No. 21-1411-RGA, 2022 U.S. Dist. …

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Defendant Succeeds in Limiting Claims Based on the Specification

Andrew E. Russell, Aug. 3, 2022
Claim Construction

View from a fisheye lens
View from a fisheye lens Kevin Grieve, Unsplash

Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.

Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.

As a result, defendants' early-case strategy often …

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The Double Waiver Maneuver

Nathan R. Hoeschen, Aug. 2, 2022
Waiver

daniel-jensen-UDleHDOhBZ8-unsplash
Last summer, Daniel Jensen, Unsplash

We've all spotted a waiver in the other side's papers—some issue that would have been raised earlier or more clearly by a noble opponent in a just world. Normally the issue doesn't merit more than a finger-shaking footnote, but its galling nonetheless.

Forget it Jake, it's Delaware.

An Issue Ignored

This brings us to the convoluted saga of San Rocco Therapeutics, LLC v. Bluebird Bio, Inc. The plaintiff had a license to the patents-in-suit and the parties disputed whether it was sufficient to grant standing. Because that license had an arbitration provision, the defendant moved to stay the case and compel arbitration.

In their opening brief, however, Defendants did not address the threshold …

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