A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Case Narrowing

Judge Andrews Holds That, Contrary to Prior Case, Claims Dropped Due to Claim Narrowing Should Be Dismissed with Prejudice

Andrew E. Russell, Oct. 30, 2024
Dismissal With Prejudice

AI-generated depiction of Judge Andrews putting down zombie claims for good.
AI-generated depiction of Judge Andrews putting down zombie claims for good. AI-Generated, displayed with permission

Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.

We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.

In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …

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Patent Claims Withdrawn Just Minutes Before Trial Are Gone for Good

Andrew E. Russell, Sept. 26, 2024
JMOL Trial

"Your honor, we'd like to drop most of our claims." "Ok, but you're not picking them back up." AI-Generated, displayed with permission

True D. Del. patent litigators know that, no matter which side you're on, you're going to have to narrow your claims and defenses before trial. It's just unwise and unworkable to go into a five-day trial with 100 claims, or with 30 prior art references and hundreds (or millions) of potential obviousness combinations. There isn't time to cover it all.

That said, sometimes the parties in patent cases delay case narrowing for a long time. And while the Court will often narrowing, it doesn't do that in every case. Instead, judges sometimes take the approach that …

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Court Holds That Good Cause Standard Applies to Late Election of Asserted Prior Art, Rather Than the Forgiving Pennypack Factors

Andrew E. Russell, Sept. 13, 2024
FRCP 16 Pennypack

Narrowing
AI-Generated, displayed with permission

A perennial question in disputes about late disclosures is whether the demanding FRCP 16 "good cause" standard applies, which hinges on diligence, or whether the more forgiving Pennypack factors apply.

When it comes to case narrowing, there seems to be a building trend that the good cause standard applies, not the Pennypack factors. We've seen that multiple times when it comes to a plaintiff's decision to drop claims, and on Wednesday, Judge Burke issued a detailed opinion finding that good cause is likewise required to revise a defendant's election of prior art references.

In State Farm Mutual Automobile v. Amazon.com, Inc., C.A. No. 22-1447-CJB (D. Del.), the Court ordered the defendant to cut …

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Asserting a New Reference Is Not "Narrowing" the Invalidity Contentions, Even If the Overall Number of References Goes Down

Andrew E. Russell, Aug. 12, 2024
Case Narrowing Contentions

For some reason, one of the references stands out...
AI-Generated, displayed with permission

Judge Bryson unsealed a discovery dispute opinion last week in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del.), addressing a motion to supplement infringement contentions after the deadline for final contentions. The patentee argued that it had good cause to supplement because it did so quickly after the accused infringer added a totally new prior art reference in their final invalidity contentions.

There are a couple of interesting things about the opinion, but I wanted to call out one in particular.

The case included a deadlines for final contentions, and then for case narrowing, with the defendant to drop to a list of 10 references. The defendant initially cut …

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Watch What You Agree to! Court Holds Plaintiff to Agreement in Scheduling Order That "Hypothetically Allows Defendant to Propose Millions of [Invalidity] Theories"

Andrew E. Russell, Jan. 19, 2024
Scheduling Order Case Narrowing

Watch out for what may be in that draft scheduling order...
Watch out for what may be in that draft scheduling order... AI Generated, displayed with permission

In International Business Machines Corporation v. Zynga Inc., C.A. No. 22-590-GBW (D. Del.), the parties agreed in the scheduling order to a rather vague set of case narrowing provisions:

On November 30, 2023, Plaintiff shall perform a first narrowing of the number of asserted claims. On December 7, 2023, Defendant shall perform a first narrowing of the number of asserted invalidity references.
. . . On February 28, 2024, Plaintiff shall perform a second narrowing of the number of asserted claims. On March 5, 2024, Defendant shall perform a second narrowing of the number of asserted invalidity …
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Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial Claim Narrowing

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …
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How Do You Drop Claims in a Patent Action, and Are They Withdrawn with Prejudice?

Andrew E. Russell, May 27, 2022
Claim Narrowing Case Narrowing

Drop
Andrew E. Russell, CC BY 2.0

In my experience, parties in patent actions in the District of Delaware (and elsewhere) routinely drop claims in the lead up to trial. "Dropping claims" includes withdrawing asserted claims (e.g. "Claim 1"), whole asserted patents (e.g., "the '123 patent"), infringement contentions (e.g., "direct infringement" or "infringement by product A"), and other claims (including non-patent claims).

Most often, in practice, this is accomplished via an e-mail to the other side or, if the parties want something on the docket, by stipulation. I don't know of a case where the Court here insisted that a plaintiff not drop claims (of course, a defendant may also have counterclaims).

Are the Claims Withdrawn with Prejudice?

But parties rarely …

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Here's What Has Changed in Judge Burke's New Form Scheduling Order

Andrew E. Russell, March 23, 2022
Concise Statement of Facts Case Narrowing

New
Nick Fewings, Unsplash

Yesterday, Magistrate Judge Burke released a new form scheduling order. There are redlines embedded below.

Here is a quick rundown of some of the changes in the patent scheduling order:

  • Added from Judge Andrews' scheduling order:
    • A requirement for plaintiffs to provide licenses and settlement agreements as part of their disclosures
    • A prompt in the scheduling order for the parties to consider a staged reduction of asserted claims and prior art, before and after claim construction (this comes up a lot)
  • Added from Judges Connolly, Noreika, and/or Hall's scheduling orders:
    • A requirement to include chart at the end listing the deadlines all together (convenient!)
    • A Concise Statement of Facts requirement for summary judgment
    • He …
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Judge Stark Declined to Limit a Plaintiff to Fewer than 27 Asserted Claims for a Jury Trial

Andrew E. Russell, Aug. 16, 2021
Claim Narrowing Case Narrowing

Narrows
Karan Chawla, Unsplash

Case narrowing is an issue that eventually comes up in most patent cases—the idea that each party should have to reduce the number of claims and prior art references at points during the case.

How Claim Narrowing Usually Goes in a Patent Action

If parties want to avoid a dispute down the line, they can include case narrowing in the scheduling order. More often, however, it comes up at some point after the plaintiffs makes its initial election of asserted claims, and the parties start to get an understanding of the scope of the case.

Typically the initial narrowing occurs before claim construction, and a second round occurs afterwards, sometimes around the time of final contentions. …

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Claim Narrowing in Patent Cases: Some Data on Limits on Asserted Claims and Prior Art References

Andrew E. Russell, Feb. 15, 2021
Contentions KB

Case narrowing is an issue that comes up in most patent cases at some point, whether in the scheduling order, as a discovery dispute, or at the pretrial conference (or, possibly, all three).

Average amount of prior art references each defendant seeks to assert.
Average amount of prior art references each defendant seeks to assert. Cristina Gottardi, Unsplash

When requested, judges in Delaware typically implement an initial two-stage reduction in asserted claims and prior art references, with the first stage occurring before claim construction, and the second afterward.

Of course, sometimes they will implement other schedules depending on the needs of the case and the requests of the parties. And, for cases that reach a pretrial conference, the Court often imposes an additional limit on the number of claims for …

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