Markman briefing is often especially dense and time-consuming to absorb, and so traditionally each of the judges has had their own special procedures for Markman briefing set forth in their respective form scheduling orders.
With the additions of Judge Connolly and Noreika to the Delaware bench, however, a consensus formed around Judge Andrews' procedures—with four rounds of briefs that are served but not filed and then incorporated into a joint brief for the Court's review. Judge Stark is now the lone outcast, with his preference for 2 rounds of simultaneous briefing filed with the Court, a procedure that has been enshrined …
Conservatively, 134,000,000% of 12(b)(6) motions request dismissal with prejudice. After all, no one wants to win a motion only to start a similar, but slightly harder round of briefing, when the plaintiff inevitably does file a modestly improved complaint. However, it tends to be a pretty big life to actually secure a dismissal with prejudice when the plaintiff has not already tried and fail to fix the complaint's problems.
It's occurred to me in the past that it would be nice to have a middle ground between a dismissal with and without prejudice. Something for claims that haven't already proven themselves beyond repair with serial amendments, but that are marginal enough that they are unlikely to be cured.
I always find it interesting to see what kinds of facts that can succeed in a motion to strike. As I've mentioned, motions to strike in the Third Circuit are governed by the Pennypack factors, which can be tricky to meet and often favor lesser remedies (although the Court doesstrikethings).
Here is what it took to warrant striking portions of an opening infringement report Arendi S.A.R.L. v. LG Electronics, C.A. No. 12-1595-LPS (D. Del.):
Disclosing infringement contentions against five new products for the first time;
Relying on previously undisclosed evidence;
Doing so in the 8th year of a case (albeit one currently without a trial date); …
All six challenged patents survived Judge Stark's most recent § 101 Day, held on November 22, 2021. The six patents were spread across three cases. Continuing his usual practice, Judge Stark ruled from the bench after hearing argument in all three cases, and then issued a written order (see below) incorporating the transcript of his bench ruling and the formal orders on the pending motions.
In the first case, considering Step One of the Alice framework, Judge Stark found that the challenged patent was not directed to the abstract idea posited by the defendant ("an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set") and instead "enables the identification of mutations with positional accuracy in a computationally tractable manner," solving a prior art problem - notably, that sequence assembly providing for accurate detection of variants was often computationally intractable for high-throughput analysis.
Judge Stark denied the motion to dismiss based on the Step One analysis.
In the second case, Judge Stark took the somewhat unusual path of deciding Step Two of the Alice test before Step One. He explained:
The Federal Circuit has employed a similar approach and resolved 101 issues at Step Two in several of its cases, ...
As we've mentioned, Judge Stark has been nominated to the Federal Circuit. He had his nomination hearing before the Senate Judiciary Committee last week. The full video is available on the Judiciary Committee web site: Link to Video.
In the video, Judge Stark's introduction by Delaware Senators Carper and Coons starts at 49:27, and Judge Stark himself appears at 1:04:42. The introductions are about 7 minutes long, and the questions run for about 30 minutes.
Some highlights about Judge Stark, mostly from the introductions:
14 years on the bench
6000 civil and criminal cases
2400 patent cases
93 trials (63 patent trials)
2100 written opinions
Only 2% of his opinions reversed or affirmed with criticism
Late last week, Judge Stark granted defendant's request for litigation fees under 35 U.S.C. § 285 in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, following an award of summary judgment of non-infringement to the defendant and a summary affirmance at the Federal Circuit.
Plaintiff PDIC's patents are directed to virtual reality programs controlled by music or control tracks created from music. Defendant Ubisoft asserted that the accused games manually synchronized the video, soundtrack, and other effects on a timeline, and were not controlled by music or a control track created from music.
During claim construction, Judge Burke found that plaintiff had disclaimed certain subject matter during IPR proceedings...
According to the Federal Circuit's website on Thursday, Judge Stark has been officially sworn in to the United States Court of Appeals for the Federal Circuit. According to their post, he was sworn in on the Lincoln Bible, held by his wife Beth Stark. Congratulations again to Judge Stark!
As we discussed on Thursday, the Court is still in the process of re-assigning Judge Stark's cases, with the majority so far going to other D. Del. Article III judges. Judge Stark still has a number of cases, including for example C.A. No. 19-01938-LPS, where he issued an order on Monday asking for briefing following a status report from the …
During the claim construction process, parties identify and offer constructions for claim terms. It is not uncommon for parties to dispute the meaning of words within those constructions but which do not appear in the claims themselves, leading to further refinement of positions during subsequent claim construction exchanges and briefing. Parties may be tempted to ask the Court to separately resolve these "construction within a construction" disputes. Judge Stark recently addressed such a request.
Judge Stark today dismissed an ANDA claim after the defendant converted their ANDA in such a way that it simply did not infringe, and plaintiff was left with no claim and no remedy.
ANDA cases make up a fair portion of the Court's docket. If you're not already familiar, ANDA cases are brought by patent holders after a drug manufacturer files an ANDA seeking approval to manufacture a generic version of a drug.
As part of the ANDA, if there are unexpired patents listed with the FDA as covering the drug, the manufacturer may certify either that the patents are invalid, unenforceable, or won't be infringed (paragraph IV), or …
We've written several times about the Pennypack factors—the Third Circuit standard for determining whether to exclude late-disclosed evidence. Although the standard itself is fairly lenient (focusing on prejudice and whether it can be cured), the D. Del. judges have shown an increasing willingness to exclude evidence under Pennypack in recent years.
Earlier today, for example, Judge Stark applied Pennypackto preclude four witnesses from testifying at an upcoming jury trial (two from each side). The witnesses were disclosed months after the close of fact discovery, and Judge Stark refused to force the parties to use their limited trial prep time for clean-up discovery: "there is not sufficient time in the 12 remaining days before trial …
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