A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: MTD

Competitor Cannot Escape DJ Action, Even Absent Specific Allegation of Infringement

Andrew E. Russell, Sept. 4, 2023
MTD Motion to Dismiss

It's clear who was the faster draw.
It's clear who was the faster draw. AI-Generated

In Candid Care Co., v. SmileDirectClub, LLC, C.A. No. 21-1180-CFC (D. Del.), SmileDirectClub sued Candid Care—its competitor—for patent infringement of a single patent. Chief Judge Connolly dismissed the case, holding that the patent was patent ineligible under § 101.

The next day, SmileDirectClub sued Candid Care on a second patent in the same family, this time in the Western District of Texas.

But the Western District of Texas transferred the case back to Delaware—and, because it is related to the previous case, it was assigned to Chief Judge Connolly again. Shortly thereafter (perhaps to avoid its second patent suffering a similar fate under § 101), SmileDirectClub granted …

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Judge Kennelly Weighs In on Whether Complaint Can Establish Notice for Willfulness

Andrew E. Russell, Sept. 21, 2022
FRCP 12(b)(6) Post-Filing Willfulness

An AI-generated (!!) scene of a split courthouse
AI-Generated, displayed with permission

We've written a lot about how there is a split in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.

Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:

A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
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Impossible-to-Reconcile Federal Circuit Precedent Results in Denial of § 101 Motion

Andrew E. Russell, Aug. 20, 2022
Motion for Judgment on the Pleadings FRCP 12(b)(6)

Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2?
Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2? Charl Folscher, Unsplash

We talked a couple of days ago about how, in Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), Chief Judge Connolly stayed the action after raising plaintiff's inadequate disclosures at a § 101 hearing.

But, at the same hearing, plaintiff actually prevailed on the § 101 motion—and Chief Judge Connolly made some notable comments about how the Federal Circuit has responded to his previous § 101 decisions, and what that means for cases going forward.

Case 1, Universal Secure: Affirmed

The first case, Universal Secure Registry LLC v. Apple Inc., …

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Judge Bibas Notes Delaware Split Regarding Unclean Hands Counterclaims in Patent Cases

Andrew E. Russell, Aug. 16, 2022
MTD Motion to Dismiss

Hand Washing
Tim Mossholder, Unsplash

In an opinion on Friday, visiting Judge Stephanos Bibas of the Third Circuit pointed out a split in District of Delaware cases regarding whether a party can bring unclean hands counterclaims in patent cases:

Nor does TexasLDPC persuade me this declaratory-judgment counterclaim fails as a matter of law. True, courts disagree whether “unclean hands” can support a declaration that a patent is unenforceable. Compare In re Gabapentin Patent Litig., 649 F. Supp. 2d 340, 348 (D.N.J. 2009) (concluding it cannot), and Kimberly-Clark Worldwide, Inc. v. Cardinal Health 200, LLC, 2012 U.S. Dist. LEXIS 104983, at *2–3 (D. Del. Jul. 27, 2012) (same),[ ]with The Meds. Co. v. Teva Parenteral Meds., Inc., 2011 WL 13141923, at *1 n.2 (D. Del. Oct. 6, 2011) (denying motion to dismiss or strike unclean hands counterclaim).

Judge Bibas sided with the cases holding that "unclean hands" is a proper counterclaim in a patent action:

Still, I will not stop Defendants from demanding a declaratory judgment about the unclean-hands doctrine. In my view, I may grant such relief. See Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1025–26 (Fed. Cir. 2008) (“[A] district court ...
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Judge Noreika Denies Some Voluminous § 101 Motions to Dismiss Without Reaching Merits, Citing Efficiency Concerns

Andrew E. Russell, May 11, 2022
MTD § 101

"The white one in the middle is representative..." Andrew E. Russell, CC BY 2.0

This week, Judge Noreika denied a § 101 motion because it challenged more than 60 claims, and because the parties disagreed as to whether any claims were representative:

WHEREAS, Plaintiff’s [§ 101] motion does not precisely specify which claims’ eligibility it is challenging . . . , but in any event details challenges to more than sixty claims’ eligibility . . . without any agreement about representativeness . . . ;
WHEREAS, should this case proceed to trial, the asserted claims will be narrowed through the parties’ disclosures and discovery and, as such, most of the claims subject to the Plaintiff’s § 101 motion will not …
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Defendant's Own Importation Cannot Serve as the Basis for an Inducement Claim

Andrew E. Russell, April 22, 2022
Importation Motion to Amend

Monkey inducing itself to infringe
Andre Mouton, Unsplash

In rejecting a motion to amend a complaint almost two weeks ago (while we were indisposed), Judge Andrews held that a defendant's own importation under 35 USC 271(g) cannot serve as a basis for induced infringement:

Defendant argues Plaintiffs’ proposed amendment to assert induced infringement is futile, because Plaintiffs do not plausibly allege any of the three elements required for a claim of induced infringement – direct infringement, knowledge, and specific intent. . . . I find that because Plaintiffs have not alleged any acts of direct infringement by a third party in the United States, Plaintiffs have not stated a claim of induced infringement under § 271(b). . . . Plaintiffs’ argument that their …
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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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How Much Is Enough to Convey Standing?

Jeff Castellano, Feb. 15, 2022
Standing MTD

A patent licensee must hold "all substantial rights" in the licensed patents in order to maintain a patent infringement suit on its own. What constitutes "all substantial rights" is often the subject of dispute in cases brought by licensees without their licensors. Courts faced with these disputes will often examine the nature and scope of the rights transferred by the license, including the right to use the patent, the right to sublicense, and the right to sue.

Judge Andrews recently resolved a standing dispute in favor of the licensee, finding that the license in question...

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Original Complaint Supports Post-Suit Inducement and Willful Infringement, Finds Judge Burke

Jeff Castellano, Feb. 9, 2022
Willfulness MTD

It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.

In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...

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Is Receipt of a Letter Listing Only the Patent and Accused Product Enough to State a Claim for Willfulness?

Andrew E. Russell, Jan. 5, 2022
Willfulness MTD

Envelope with Letter
Brando Makes Branding, Unsplash

That is the question Judge Andrews addressed yesterday. He found that yes, a letter listing a patent and accused product is enough to state a claim in a complaint for pre-suit willfulness—the letter need not include things like claim charts or specific descriptions of product features:

I find that the notice letter sufficiently pleads knowledge for the eight patents-in-suit listed in the letter. The letter lists many LG products and states, " These products, and others made, used, sold, offered for sale, or imported into the United States by LG, infringe many of the patents in [Bench Walk's] portfolio." (D.I. 25-1 at 1-2). The letter then enumerates eleven patents, including eight of the ten …
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