A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Invalidity Contentions

Judge Williams: Failure to Disclose Indefiniteness Argument in Invalidity Contentions Is No Bar to Arguing Indefiniteness During Claim Construction

Andrew E. Russell, Feb. 22, 2023
Invalidity Contentions Indefiniteness

Milwaukee
Mark Rohan, Unsplash

Yesterday, Judge Williams issued a claim construction opinion in Persawvere, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 21-400-GBW (D. Del. Feb. 21, 2023).

In the joint claim construction brief, plaintiff asserted that defendant had waived its indefiniteness arguments because it did not include them in its invalidity contentions:

Given that Defendant failed to raise an indefiniteness argument in its Invalidity Contentions concerning terms 3 and 4, see Ex. 8, Defendant has waived this defense.

D.I. 47 at 30. In the case, the scheduling order required both initial and final invalidity contentions; defendant did not mention indefiniteness in its initial contentions, and the deadline for final contentions had not yet passed.

The defendant …

View

Contention Amendment Denied Because Good Cause Is Measured from the Outset of the Litigation

Andrew E. Russell, Feb. 13, 2023
Good Cause FRCP 16

Early case:
Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?" Eric Rothermel, Unsplash

Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.

Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).

Good cause requires diligence, and in practice parties often frame the diligence discussion …

View

System Prior Art Strikes Again

Andrew E. Russell, May 24, 2022
Expert Discovery Pennypack

Copyright Symbol
Andrew E. Russell

We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.

Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.

On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …

View

Judge Connolly Offers an Insight on Sufficiency of Contentions

Andrew E. Russell, May 3, 2021
Infringement Contentions Contentions

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. § …
View

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 …

View

Chief Judge Stark Suggests Requirement for Copyright Infringement Contentions, Similar to Patent Infringement Contentions

Andrew E. Russell, Feb. 12, 2021
Infringement Contentions Copyright

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 …

View

Another Day, Another Doctrine of Equivalents Argument Excluded

Andrew E. Russell, Feb. 1, 2021
Contentions Expert Discovery

Even when plaintiffs know of the potential weak spots in their infringement cases, they sometimes fail to address DOE until too late, or they offer a DOE analysis so weak that it gets excluded or wiped out by summary judgment.

That's what happened last week, when Chief Judge Stark struck a DOE opinion after a plaintiff tried to squeak by on the idea that its late DOE argument should be permitted because it never affirmatively disclaimed DOE:

Arendi's passing reference to DOE in its complaints followed by its lack of affirmative disclaimer of DOE theories (see, e.g., C.A. No. 12−1595 D.I. 238 at 5) ("Arendi has never asserted that its claims were limited to literal infringement") does …
View

Court Attributes Expert's Knowledge to Party Itself, Strikes Invalidity Arguments

Andrew E. Russell, Dec. 14, 2020
Motion to Strike Pennypack

Stop Sign
Luke van Zyl, Unsplash

In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
View

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. . . . …
View

Archive