A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Infringement Contentions

Shades of Coffee

Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?

Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):

(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.

In an order last week, Judge Fallon denied ...

Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.

Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.

That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates...

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …

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 …

Books
Alfons Morales, Unsplash

In May 2020, West Publishing and Thomson Reuters filed a copyright action against ROSS Intelligence LLC, alleging that ROSS (through a third party) scraped content from WestLaw to start its own Artificial-Intelligence-based legal research platform. (ROSS has since ceased operations but persists solely to litigate this case.)

Down the line, I imagine the case may raise some interesting questions about AI and copyright. For example, what are the copyright implications of ROSS's use of Westlaw's copyrighted compilation of otherwise public domain materials to train an AI? Isn't that fair use (talk about transformative!)? If not, what are the damages? And so on.

For now, ROSS has moved to dismiss on the ground that West failed to …