We've written a lot about how there is asplit in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.
Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:
A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
At a hearing today, Judge Kennelly set forth his preferences on how parties files documents in CM/ECF. He explained that he deals with all filings electronically, and large exhibits as permitted by the Delaware CM/ECF system interfere with his work flow.
He threatened to deny motions going forward (at least in that case) if parties combine exhibits in that way, specifically pointing to the following docket item:
As you can see in the highlight, the party combined multiple exhibits into sub-filings, which makes it difficult and slow to download, and impossible to download individual exhibits.
Judge Kennelly prefers that parties do it this way:
Visiting Judge Wolson has expressed similar concerns for similar reasons, and his procedures go a step …
In an opinion today, visiting Judge Kennelly (N.D. Ill.) rejected the idea that an accused infringer could bring an IPR, receive a claim construction in that IPR, and then argue that that construction is "intrinsic evidence" that, by itself, merits adopting the construction in the district court case.
In XMTT, Inc. v. Intel Corp., C.A. No. 18-1810-MFK, D.I. 293 (D. Del. July 22, 2022), the PTAB had proposed and applied its own constructions for the claims, and accused infringer Intel ultimately lost the IPR. Intel then appealed, and the Federal Circuit affirmed without reaching the merits of the claim constructions.
While the IPR was pending, Intel argued that the …
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. …
Here's a fun fact for you—in the 7 years since the Supreme Court's decision in Halo, the use of the word "pirate" in Federal Court opinions has increased by 23%. This can probably be attributed to the following passage which shifted the focus of the enhanced damages inquiry from "willfulness" to something a bit looser and more . . . arrrggguable:
The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate . . . .
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103-04 (2016)
There are worse legacies. But I digress.
The oft-cited loosy-goosy standard above has lead to an interesting split in decisions about how the enhanced damages provision, 35 U.S.C. 284 (which does not specifically reference willfulness), interacts with Section 298 (the only section of the patent act to actually refer to willfulness):
The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent . . .
The question is, once a jury has found willful infringement, can the Court then consider the failure to obtain advice of counsel in determining whether to enhance damages?
Last week, Judge Kennelly held that 298 did not prevent the Court from considering the failure to obtain advice of counsel, and awarded ...
The Doctrine of Equivalents can sometimes be an irritating aspect of patent law. Patent applicants tend to draft broad claims to begin with, and modern claim construction law likewise tends towards broad constructions. Once you add DOE on top, it can start to feel like the patent covers anything and everything.
But there is a boundary. Under the doctrine of "vitiation," courts have held that DOE can't be used to extend a claim to the oppose of what was claimed.
We got a good example of that this week from visiting judge Kennelly, who granted a motion for summary judgement of non-infringement after a seemingly fully-articulated DOE claim (DOE claims are often not-so-well articulated).
Canada is a hard land. The weather is brutal. The moose, especially fierce. This isn't even touching on the whole hockey thing.
But the harshest part—worse than the indefatigable Mounties or the endless karaoke versions of You Oughta Know—is service.
Serving a Canadian is a real pain in the poutine.
AI-Generated, displayed with permission
Or so I thought.
Those with the misfortune of having to serve a foreign defendant will no doubt be aware of Rule Rule 4(f)(2)(C)(ii) which provides that a foreign individual may be served by "using any form of mail that the clerk addresses and sends to the individual and that requires a signed receipt." This rule applies to foreign corporations by way of Rule 4(h).
The issue I had always seen with service in this manner is that it's trivially easy for the defendant to simply ignore the registered mail. No signature, no return receipt, no service. It seems I was wrong about this.
The patentee in MG FreeSites Ltd. v. Scorpcast, LLC d/b/a HaulStars, C.A. No. 20-1012-MFK -- the "Haulstars"—indisputably had the clerk send the summonses to the foreign defendants (at this point I must admit that most of the defendants were actually Cypriot, but I know more about Canada so that's what I went with) via the ...
"Yes, your honor, it literally meets the claim elements of an 'animal' in a 'structure' with a 'gable roof.' But under the reverse doctrine of equivalents . . ."Go to Tomas Tuma's profile Tomas Tuma, Unsplash
The reverse doctrine of equivalents and ensnarement are great for accused infringers, but for whatever reason they often seem to get set by the wayside.
Reverse doctrine of equivalents has a terrible name. It's really just the argument that even if the accused product meets the literal elements of the claim, it does not infringe because it is performs the claimed function in a substantially different way than the claimed invention.
This report, produced by the Court, is available on the Court's website. I’d encourage our readers to peruse the full report, but we highlight a few interesting statistics and announcements below.
IP Cases Continue to Dominate the Docket
In 2022, there was an increase in jury trials to 19 in the District of Delaware. Patent/IP cases accounted for 44% of all civil filings in the last 7 years and 43% in 2022 alone.
Nationally, patent filings decreased from 4,037 filings to 3,854. In the District of Delaware in 2022, 685 patent cases were filed, a 23.04 percent decrease from the previous year of 890. Delaware is second in the nation, after …
Over the last couple weeks, I've been tasked with going through the pile of resumes the firm received for various OCI's. Presented with a spreadsheet and 3,000 page pdf of resumes and related ephemera, I diligently set to work ranking the applicants with helpful notes for a second round of review.
At the start of the day, this usually looked something like:
Tier 1, obviously read Plain English For Lawyers and had good grasp of more difficult bluebooking rules, vacationed in Rehoboth as a youth, Likes crabs.
Inevitably, though, as the day wore on, my blood sugar would slowly sink until they looked more like:
Tier 1000, name rhymes with fart, hard pass
This was usually my cue to stop and revise my last couple entries the next day.
A Tale of Rising Spirits
During law school my wife and I would frequently kill a couple hours on a weekend going to tastings at the 100 or so wineries around Ithaca that ranged from "pretty good" to "proof that karma is real and that you were a mosquito in a past life."
One of the rules of a tasting trip is to spend your money fast and early. The farther into the trip you get, the looser the standards. We forgot this rule one summer—returning for a visit after several years—and set out for a 10 winery tour with high spirits.
At the 8th winery, I smelled my glass, thought for a moment, and passed it to my wife.
"what does this smell like to you?"
She sniffed and grimaced, responding, "cat pee?"
"Exactly," I said. "It's not bad otherwise though."
We bought a case, which sits in my basement to this day "aging."
I bring this up not (only) to pad the post, but instead to ask if either phenomena can be observed in the Court. To put a finer point on it—is there some correlation between how many times a given judge has decided a motion, and how likely they are to grant it?
I don't ask this question in a vacuum. The Court's recent round of referrals to visiting judges have caused litigants to consider whether they might be better off with a judge sitting in one of the busiest patent courts in the nation, or a visiting judge with a less extensive track record in patent matters (generally speaking, as you'll see below several of the visiting judges have a huge number of prior patent cases). Naturally, there is some value in having more data points on a judge regardless of any substantive effect, but one wonders: am I better off posing my motion to a judge who's seen the like 1,000 times, or 10?
The methodology here was simple. Pick a fairly common issue (I chose 101 motions) and chart ...
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