A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Contentions

No Reasserting Dropped Claims Without Good Cause, Says Judge Andrews

Jeff Castellano, Nov. 3, 2020
Claim Narrowing Case Narrowing

In the most recent entry in the case narrowing saga in IPA Techs., Inc. v. Amazon.com, Inc., 16-1266-RGA (previously covered here and here), Judge Andrews addressed defendant Amazon's objection to the reassertion of previously dropped claims.

Earlier this year, Judge Andrews directed IPA to reduce its asserted claims to 30, and it did. Subsequently, nearly half of its asserted claims were invalidated in an IPR. Plaintiff IPA, no longer asserting the invalidated claims, then added (or "reasserted") seven of the previously dropped claims in place of the invalidated claims.

Amazon opposed the addition of the new claims because fact discovery was nearly complete and because it had crafted its invalidity case with the 30 asserted claims in …

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This Is Why People Hate Having to Assert Prior Art Systems as References

Andrew E. Russell, Oct. 26, 2020
Claim Narrowing Contentions

Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:

  1. A U.S. Patent: Simple and easy.
  2. A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
  3. A journal publication: You may have to jump through some hoops, but no big deal.
  4. A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
  5. A book. Now you may be dealing with librarian declarations.
  6. . . . …
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If You Do Not Plead Indirect Infringement, You Cannot Argue It (Without Amending)

Andrew E. Russell, Oct. 14, 2020
FRCP 15 Final Infringement Contentions

Judge Burke granted a motion to strike yesterday where the plaintiff attempted to add indirect infringement allegations in final infringement contentions, but had not pled them in the complaint.

Per Judge Burke:

It is undisputed that Plaintiffs have never pleaded indirect infringement of these patents, (D.I. 170 at 1), and so any portion of their [final contentions] that relate to that subject matter are simply about infringement claims that are not a part of this case.

He also preemptively denied any future request to amend the complaint as coming too late:

Although they have not filed a formal motion seeking to amend their currently operative complaint to include such [indirect infringement] claims, to the extent Plaintiffs suggest they would …
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Excluded, Again

Jeff Castellano, Aug. 25, 2020
Expert Discovery Motion to Strike

Although it requires some reading between the redacted lines, Judge Stark's recent ruling in H. Lundbeck A/S v. Apotex, Inc., C.A. No. 18-88-LPS is worth the effort. It shows that while sometimes exclusion orders leave the door open a crack to introduce the excluded evidence in some other fashion, that is not always the case.

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Court Finds Late Doctrine of Equivalents Theory Prejudicial Because Adding DOE "Creates a New Ballgame"

Andrew E. Russell, July 31, 2020
Expert Discovery Pennypack

Remember these?
Remember these? Tim Gouw, Unsplash

It can be tough to get late-produced theories or evidence excluded in Delaware, because the Court must apply the permissive Pennypack factors that typically favor admission.

The factors include prejudice, ability to cure any prejudice, disruption of trial, and bad faith/willfulness.

But lately, the Court seems to be granting more motions to strike such theories. Today, Judge Andrews granted a motion to strike a late DOE theory offered for the first time in a reply report.

Judge Andrews Isn't Messing Around

He shot down the Pennypack factors in four short and to-the point paragraphs.

As to the first factor, he found prejudice because admission of a late theory requires …

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