A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: JMOL

Judge Connolly Grants Written Description JMOL

Nathan R. Hoeschen, Feb. 25, 2025
JMOL Written Description

You can tell that I (and pretty much every other lawyer) learned JMOL in a specific and nerdy context.

Pretty much every other collection of letters are pronounced as either an acronym—NASA, SONAR, LOL (this one's a matter of preference)—or an initialism like LMAO, CIA, PB&J.

JMOL, stands proudly atop the divide, too unwieldy to pronounce in either regime.

AI-Generated, displayed with permission

None of this is legally relevant (yet!), but it leads neatly into yesterday's decision in Natera, Inc. v. CareDx, Inc., C.A. No. 20-38-CFC-CJB (D. Del. Feb. 24, 2025). The defendant there made the bold decision of moving for J-MALL that both of the asserted patents were invalid for lack of written description, which the plaintiff naturally opposed.

In support of the motion, defendant pointed to the testimony of its expert to the effect that the specifications failed to disclose all of the various elements of the claimed method being performed together, "as an integrated whole." The plaintiff in response, pointed to the testimony of their expert, but notably ...

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Ruling on Post-Trial Motions Shows What Not to Do

Andrew E. Russell, Jan. 6, 2025
Trial Trial Practice

Snow day!
Snow day! Hide Obara, Unsplash

We're back! Just in time to be snowed in—the Court is closed today due to inclement weather.

While we were out last week, Chief Judge Connolly issued an interesting opinion on post-trial motions in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38-CJB (D. Del.).

That case went to trial in January 2024, with plaintiff Natera winning a $96 million verdict on the first of two patents, but receiving a verdict of no infringement of the second patent. The Court's opinion addresses their motion for JMOL of infringement on the second patent.

Did a Poorly Phrased Question Doom JMOL of Infringement?

The arguments turned on a single claim limitation. The Court found …

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A Verdict Divided Cannot Stand

Nathan R. Hoeschen, Oct. 3, 2024
JMOL General Verdict

I find all of my best posts in footnotes.

They are the home seemingly idle musings about the scope of the law and arguments that might have been made in a better world.

There is a freedom in the foot.

AI-Generated, displayed with permission

Judge Wolson had a particularly striking footnote in his post-trial opinion in Med-El Elektromedizinisch Gerate GES.M.B.H. v. Adv. Bionics, LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 2, 2024), which dealt with an important issue that I had not seen before in the district.

The plaintiff had gone to trial on both literal infringement and infringement under the doctrine of equivalents and for both induced and contributory infringement. The verdict form, however, did not …

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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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The Hazards of Proving Infringement of Means + Function Claims

Nathan R. Hoeschen, July 18, 2024
Means-Plus-Function JMOL

Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.

She's so lonely
She's so lonely Dima Solomin, Unsplash

Judge Andrews issued an interesting decision yesterday that illustrates the unique difficulties of proving infringement of a means + function claim.

In ViaTech Techs., Inc. v. Adobe Inc., C.A. No. 20-538-RGA (D. Del. July 17, 2024), the Court construed a means + term as having two functions:

  1. communicating with a dynamic license database, and
  2. monitoring use of the digital content by a user to determine (yadda, yadda, not …
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A Trial Too Confusing For This World

Nathan R. Hoeschen, May 21, 2024
JMOL New Trial

Sometimes I wonder what it might have been like to be on a patent jury in 1840. The claim at issue is 12 words, something like "a machine for curing drunkenness through violent shaking, operated by a crank."

(Eds. note - is that a haiku?)

A be-wigged and mustachioed defense lawyer argues that it was really more of a swivel than a crank, and anyways it was well known in the prior art that drunkenness could be cured by shaking the inebriated patient manually, and thus no patent should have issued.

Pictured: Sobriety
Pictured: Sobriety Tadeusz Lakota, Unsplash

The jury nods in agreement at these self-evident truths, and then goes on to deliver a verdict after a brief luncheon of organ meat pies. Justice, like lunch, is served.

Those halcyon days are, of course, long gone as evidenced by Judge Andrews' opinion in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del. May 17, 2024) (Mem. Op.), which dealt with a claim (one of many) that was 424 words long.

The opinion on the various post-trial motion goes into great detail about the difficulties of presenting a coherent trial on such complicated software claims:

Much of the trial testimony on infringement can only be understood, if at all, with great effort. The claims are very long and complicated. For example, claim 1 of the '287 patent is 424 words long. At trial, Express Mobile divided the claims into four parts, which it color-coded as red, green, gold, and blue. The testimony of Plaintiffs technical expert about how Shopify's system worked was intermingled with references to its meeting, e.g., the "red group of limitations." The testimony at times lacked the usual one-to-one correspondence with the specific limitations in the claims, and that combined with the color-coding means that trying to figure out whether there was sufficient evidence to show infringement is difficult.

Id. at 9 (internal citations omitted).

Given that description, I was surprised to see that the patentee had actually prevailed at trial to the tune of $40,000,000. Judge Andrews apparently agreed because he ...

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"[T]he briefing is so lacking that it borders on comical . . . The Court is truly dumbfounded at Plaintiffs’ failure to cite any portion of the trial record . . . ."

Andrew E. Russell, Oct. 2, 2023
Contributory Infringement Judgment as a Matter of Law

Artist's illustration of one of the parties' briefs.
Artist's illustration of one of the parties' briefs. Carl Tronders, Unsplash

I wanted to call out the interesting quote in the title, which comes from an opinion Judge Noreika issued on Friday granting-in-part post-trial motions in a patent case.

The quote is in the context of a motion for JMOL of no post-suit indirect infringement because the accused infringer didn't encourage users to infringe. The Court was very disappointed in the parties' briefing:

[T]he Court must still address Defendants’ remaining complaint as to indirect infringement. Defendants argue that there was no evidence at trial to suggest that they encourage others to infringe the ’502 and ’386 Patents, which is required for a finding of inducement liability. On this point, …
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The Stuff of Nightmares: Plaintiff Makes Insufficient JMOL Motion During Trial, Waiving Its Post-Trial JMOL Motion Entirely

Andrew E. Russell, March 29, 2023
JMOL Waiver

Bye bye, JMOL motion
Bye bye, JMOL motion Ioana Cristiana, Unsplash

In most patent cases that make it through trial, the losing party files a post-trial motion seeking judgment as a matter of law (JMOL), asking the judge to override the jury and find for them instead. It seems fairly uncommon to see a case that went to trial and did not settle that doesn't involve a post-trial JMOL motion from one side or the other.

Under the federal rules, to file a post-trial JMOL motion under FRCP 50(b), you must first file a JMOL motion during trial under FRCP 50(a). That motion must be made before the case is is submitted to the jury, and must "specify the …

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Word Salad Tastes as Bad as it Sounds

Nathan R. Hoeschen, May 12, 2022
JMOL

The good (well, better) kind of salad
The good (well, better) kind of salad Go to Ryan Concepcion's profile Ryan Concepcion, Unsplash

JNOV's (JMOL's after a jury verdict for lawyers of a newer vintage) are always longshots. To prevail on such a motion "a party must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied by the jury’s verdict cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (cleaned up). It's always noteworthy (or so we bloggers tell ourselves) when one succeeds.

This is especially true in NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA, D.I. 371 ( …

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Judge Fallon: No New § 101 Theories After Ineligibility Determination Reversed by Federal Circuit

Andrew E. Russell, March 1, 2022
JMOL FRCP 50(a)

Disappointment Ice Cream
Sarah Kilian, Unsplash

Back in 2019, the parties in C.R. Bard, Inc. v. AngioDynamics, Inc., C.A. 15-218-JFB-SRF (D. Del.) went to trial on infringement claims for a patent involving a "means of identification" of certain medical devices.

During trial, at the close of plaintiffs' case, visiting Judge Bataillon granted an oral FRCP 50(a) motion for JMOL for the defendant (wow!), finding that the patent was ineligible as directed to an abstract idea involving labeling and printed matter.

The Federal Circuit later reversed, holding that the claims were patent eligible. Defendant then sought rehearing en banc, arguing that the panel's determination that the claims were patent eligible would cut off its ability to present other ineligibility arguments …

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