Alice ponders the internet of thingsAI-Generated, displayed with permission
Last week in Ignite Enterprise Software Solutions, LLC et al. v. NGData, US Inc. and NGData N.V., C.A. 23-1209 (D. Del. Aug. 2, 2024), Judge Murphy dinged defendants for stale citations, including failing to cite recent Federal Circuit precedent on the level of detail required in patent pleadings.
We flagged the case that this Court called the "most recent and most relevant Federal Circuit authority" back when it came out: Bot M8 LLC v. Sony Corp. of Am., C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021).
Analysis of Every Claim is Not Required in the Complaint
"By careful review of literally just the face of the patent, we have determined that the conception date is no later than the 2/3/2017 filing date. You're welcome."AI-Generated, displayed with permission
I admit, sometimes I write about things because I want to be able to find them next time I need them. This is one of those posts.
As we've discussed before, most patent cases involve an interrogatory to the patentee asking for the date of conception. Patentees often give a low-effort initial response along the lines of "no later than x," where x is the date of filing or some other easy-to-identify date. Then they wait to see whether they need an earlier date, and supplement if so.
This has two benefits for the patentee: (1) it makes it hard for the accused infringer to weigh the relative merits of the prior art, because it has to hit a moving target, and (2) it's super easy, because the patentee doesn't have to review any of the materials. Thus, it's a common response.
The Court has rejected this response in the past, including the idea that "[a patentee] has no obligation to investigate whether the patent-in-suit is entitled to an earlier priority date at least until Defendant has provided its invalidity contentions." The Court in that transcript forced the patentee to actually respond to the interrogatory—making it a handy transcript for accused infringers.
There's a patent trial starting on Monday in Ferring Pharmaceuticals Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH (D. Del.), and filings are flying back and forth across the docket this week. The Court's order on motions in limine included this line, which piqued my interest:
To say that the Court is troubled by the occurrences to date would be an extreme understatement.
What was so troubling? It's tough to decipher exactly what is going on from the docket, which is fragmented and redacted. But it has to do with the parties' actions related to an inventor of certain of the asserted patents.
Behold, our claim chart. Look upon it and despair!AI-Generated, displayed with permission
Parties in patent cases often fight about the sufficiency of infringement and invalidity contentions. Parties may offer broad initial contentions, keeping their options open as the case develops and avoiding the cost of detailed contentions. The opposing party, though, may want detailed contentions to narrow and explain the case and to tie parties to their positions.
Often, one side or the other moves to compel more detailed contentions knowing that, if they lose and if the opposing party refuses to supplement, they will be better positioned to exclude the more detailed contentions inevitably offered later.
The defendant in Almondnet, Inc. v. Viant Technology LLC, C.A. No. …
Sometimes you see a group of patents, and you just know there's a story there. The first patent will be something benign like an "apparatus for getting to stuff stuck in the back of the drawer." Then, a few years later, there's a new patent from the same inventors for "an apparatus for catching the very large spiders that are sometimes also in the back of the drawer." Some time later, their heirs will file a patent for "a system for automatically extinguishing the towering inferno resulting from the SRS (Spider Retention System)."
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This brings us to last week's opinion in Evonik Ops. GmbH v. Air Prods. and Chem., Inc., C.A. No. 22-1543-JPM, D.I. 58 (D. Del. July 24, 2024). The first patent there was an elaborate system for separating gases in a mixture. One of those stages required a specific gas stream to account for less than 60% of the total stream by volume. Then, years later, they were granted a near-identical patent on a system for separating gases where that same stream had to account for more than 60% of the total volume.
The defendants moved to dismiss the direct infringement claims as to one of the patents, arguing that the system, by definition, could only infringe one or the other (i.e., the gas could either be more or less than 60%, not both).
On Friday, visiting Judge Wolson granted summary judgment of non-infringement in PACT XPP Schweiz Ag v. Intel Corp., C.A. No. 19-1006-JDW (D. Del. July 26, 2024), after the patentee shot themselves in the foot while opposing invalidity before the PTO in an ex parte reexamination.
Basically, the patent relates to a connection within a microprocessor. The asserted claims require a "dedicated connection" between two things.
During re-exam (co-pending with the district court case), the PTO rejected the claims based on a prior art reference that could be configured to connect multiple different things on either side. The patentee pushed back, arguing that a "dedicated connection" requires connecting the two things and nothing else …
In The Estate of Edward Bovee v. Corporal Sam Wilks, C.A. No. 23-192-CFC (D. Del.), the parties' agreed-upon scheduling order included Chief Judge Connolly's normal language requiring concise statements:
Any motion for summary judgment shall be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be …
Parties stipulate to drop various claims and defenses all of the time. Sometimes, the parties simply bargain with each other to winnow down the scope of the case for trial. Other times, a defense or claim may be dropped to avoid some especially harsh discovery burden. Sometimes you just hate a patent claim sooo much.
Always there are dangers. For one rule is supreme in the realm of stipulations.
No takebacks.
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Such was the lesson this week in Allergan, Inc. v. Mankind Pharma Ltd., C.A. No. 23-272-JFM, D.I. 126 (D. Del. July 24, 2024). The defendant, Mankind, had stipulated to drop all invalidity defenses as to one patent "because it would streamline the case and would allow them to avoid answering discovery requests" and because "the 504 patent had been unsuccessfully challenged in the past and the invalidity theories that remained were weak." Id. at 4.
A bit later Judge Andrews issued is opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023), which we covered previously on the blog. TL;DR Judge Andrews held (for the first time in the district) that OTDP applied when the first-filed, and first-issued, patent was the one being invalidated.
All of a sudden, the defendant realized that they might have a real humdinger of a defense and so they moved to "vacate" the earlier stipulation in anticipation of the Federal Circuit affirming the decision in MSN.
Visiting Judge Murphy, however, held that this ...
I've seen this come up between parties a couple of times lately. Given that parties almost universally agree that source code is entitled to special protection in protective orders, parties are sometimes extending similar protection to non-source-code items, such as mechanical drawings.
I think it's clear that parties can agree to treat material however they want, and I haven't seen the Court reject an agreed-upon protective order on the basis that it was too burdensome on the parties. But, until now, I hadn't seen how the Court would treat a dispute about this issue.
On Monday, in Wuhan Healthgen Biotechnology Corporation et al v. ExpressTec LLC, C.A. No. 24-318-RGA-SRF (D. Del.), the Court …
A short post today to flag another interesting aspect of Judge Williams' opinion in Upsher-Smith Laboratories, LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW (D. Del. July 18, 2024) which Andrew wrote about last week.
The Plaintiff there moved in limine to preclude the defendants' expert from testifying under rule 403 (and most other rules of evidence). The only problem was that this was a bench trial, where 403 is something of an awkward fit, as noted by Judge Williams in denying the motion:
While Rule 403 permits the Court to exclude relevant evidence if its relevance is outweighed by the potential for "unfair prejudice, confusing the …
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