With the election and all, its a bit of a slow legal news day so I thought I'd give it an update and see if our second newest judge was keeping his streak alive.
In the 20 months or so since we wrote that article, Judge Williams has resolved a further 10 101 motions, bringing his total to 13. The overall breakdown is:
Its not often I got to throw out a reference to A Critique of Pure Reason, so this one goes out to whatever liberal arts majors find themselves reading the blog for some reason.
I spent a good deal of time trying to find an image for this, and I'm now convinced that no artist actually saw him alive, as the many depictions look nothing alike. I have chosen the one with the best cheekbones as I assume he would have wanted.Friedrich Rosmäsler, 1822, from a painting by Todd Schorr
As the aforementioned liberal artists among you may have gathered, today's post deals with the question of representative claims in the 101 analysis. In particular, to what extent can the few exemplary claims listed in the complaint stand in for the larger, inchoate, collection of claims that may ultimately be asserted when deciding a motion to dismiss.
In Redwood Techs., LLC v. Netgear Inc., C.A. No. 22-1272-GBW, D.I. 27 (Oct. 28, 2024), Judge Williams drew the hardest (most Kantian?) line on the issue that I have seen in recent years.
The operative complaint followed the common tactic of accusing the defendant's products of accusing "one or more claims" of several patents and then describing the alleged infringement of one claim per patent "for example." Id., D.I. 14 (Amended complaint).
Defendant moved to dismiss, discussing only those representative claims. Plaintiff opposed, arguing that the defendant "did not meet its burden of demonstrating representativeness," and noting that it "will be asserting additional claims of infringement." Id., D.I. 21 at 1.
Judge Williams was unpersuaded by this potential assertion of as-yet-unidentified claims and treated each of the claims referenced in the patent as representative:
The Court rejects Redwood's attempt to insert new patent claims through its opposition brief, as Redwood put forward only a skeletal argument and "did not file a motion for leave to amend [its] [Operative] Complaint." Redwood "may not amend [its] claims via [its] opposition to the motion[] to dismiss." "[T]he Court will consider only the claim[s] asserted in [Redwood's] [Operative] Complaint."
Thus, as Redwood fails to specifically identify a single, disputed claim left unaddressed by Netgear's motion, there are no "disputes over representativeness" for this Court to resolve.
Id., D.I. 21 at 5 (internal citations omitted).
Given the "skeletal" (spooky!) nature of the Redwood's briefing on this issue, it's not clear if the representativeness argument was doomed by the failure to specifically seek leave to amend, or if it could have passed muster with some additional detail. As an example, I sometimes see briefs that actually say something like "claim 39, which we definitely will be asserting, is totally different for the purposes of this analysis because it also claims a novel perpetual motion machine."
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
Section 101 Motions are common as dirt, and as likely to be trod under the judicial foot (although the last time we checked they had a decent win rate in Delaware).
You lose at least as often as you win, and even if you win there's a fair chance the patentee will get a chance to amend to add in new facts relevant to the analysis -- particularly as to step two's conventionality/inventiveness inquiry.
This weeks decision from Judge Williams in Dish Techs. LLC v. FuboTV Media Inc., C.A. No. 23-986 (D. Del. May 21, 2024), shows us an intriguing third way.
A most unusual posture . . .AI-Generated, displayed with permission
The complaint listed just a bare handful of claims and the Defendant, Fubo, moved to dismiss under 101. The parties fully briefed the motion, and there was even an oral argument before Judge Williams. Judge Williams is historically a bit more likely than most to grant a 101 motion, so perhaps the plaintiff was feeling the heat after that hearing.
So, rather than wait to see how it all panned out, the plaintiff preemptively moved to amend the complaint both to specify more asserted claims, and to add in some allegations about how inventive and unconventional it all was. Fubo called foul (#sportspun) arguing that the proper time to move to amend was before the parties and the Court went to all this trouble, especially when plaintiffs had all the relevant information beforehand and had previously litigated these patents.
Judge Williams, although noting that the request was late, granted the motion to amend:
[T]he Court finds that Dish delayed in seeking leave to amend to assert new allegations for the subset of allegations that are based on facts that Dish knew, or should have known, as of the filing date of the original complaint.
The Court also finds, however, that Dish's delay in seeking leave to amend its complaint to include those allegations was not "undue." When the Court dismisses without prejudice a party's complaint for pleading deficiencies, that party can attempt to re-plead by adding additional factual allegations. Because "delay alone is generally an insufficient reason to deny leave to amend," that party has some leeway in attempting to re-plead by asserting facts that they knew, or should have known, as of the filing date of the initial complaint.
Id. at 5-6 (internal citations omitted)
The court then addressed futility under the usual Rule 15 standard and allowed the amended pleading. More interestingly, the Court addressed the obvious question of ...
I told you all! I told you we'd hear about this case again! Did you listen? No! I was called a fool, a madman! But who's laughing now! Whhoooo's laughing nowwwwwww!
That's right, we're going spooky this monthAI-Generated, displayed with permission
I speak of course of the Federal Circuit decision in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023). As we discussed last time, when I made my dire warning that you fools failed to heed, the Federal Circuit there reversed the district court judgment invalidating several unasserted claims under 101, noting that the Plaintiff had taken pains to clarify that only 4 specific claims were at issue, …
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 ...
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
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 …
As we discussed earlier this week, Judge Stark's last § 101 day (maybe ever) was a real coup for the patentees, with all 6 patents surviving. This is, of course, the ultimate continuation of a years-long trend in these hearings with § 101 motions facing harsher and harsher odds.
What we at IP/DE have not discussed is how this trend compares to the averages for our other judges. Running the numbers on the 10 most recent rule 12 motions on 101 issues, the results are as follows:
Judge Connolly issued an interesting opinion this week granting summary judgment of invalidity as to the three patents-in-suit under § 101, despite competing expert testimony regarding conventionality.
A 101 Motion Denied
Similar to Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015), the patents at issue in CareDx, Inc. v. Natera, Inc., C.A. No. 19-567 (CFC) (CJB), D.I. 183 (D. Del. Sept. 28, 2021) were directed to detecting a natural phenomenon -- here cfDNA in blood that signified a likely transplant rejection. The dispute between the parties thus largely focused on step two of the Alice framework and whether the method described in the patent was merely the application of well-known …
On Monday, Judge Andrews addressed a plaintiff's attempt to cure a § 101 dismissal by amending its complaint—certainly not something you see every day.
Earlier in the case, Magistrate Judge Fallon issued an R&R concluding that one of the asserted patents was directed to ineligible subject matter. Judge Andrews adopted the R&R and granted dismissal without prejudice.
The plaintiff then filed an amended complaint, which contained "eight new paragraphs with allegations . . . tout[ing] the supposed advantages and improved methods of the" previously dismissed patent.
Judge Andrews found that these allegations were not enough to avoid dismissal, granting partial dismissal of the amended complaint with prejudice:
These allegations do not resolve the issues that the Magistrate Judge …
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