A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: SJ

Judge Wolson Implements New Summary Judgment Policy Requiring Parties to Serve Statement of Facts 28 Days in Advance

Andrew E. Russell, March 1, 2023
Summary Judgment SJ

A visiting judge
AI-Generated

Judge Wolson is a visiting judge with a number of patent cases here in Delaware. His procedures tend to differ a fair bit from Delaware judges in some areas (particularly those involving redactions sealing).

In February, he implemented an interesting new procedure for summary judgment motions. His new procedure requires parties to serve—but not file—their statement of fact in support of the motion 28 days in advance, so that the opposing party can respond on a fact-by-fact basis. The party serving the motion can then respond to that response. The resulting combined statement of facts is then filed with the brief.

This process is intended to result in a single statement of facts that includes the parties' opening, answering, and reply positions as to each fact, in that order and in one document for easy readability:

The result of this process will be a single, consolidated statement of facts that permits Judge Wolson to see each party’s position on each factual assertion in one place. For example, ...
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Court Grants SJ of Invalidity Where Claims Failed to Include Key Limitation from Spec

Andrew E. Russell, Feb. 5, 2023
SJ Summary Judgment

Here is something you don't see everyday.

On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.

In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:

The hydrofoil at issue, from U.S. Pat. No. 9,586,659
The hydrofoil at issue, from U.S. Pat. No. 9,586,659 U.S. Pat. No. 9,586,659

As the Court describes, the whole patent is focused on the board's stability feature:

The specification of the '659 Patent only, and repeatedly, describes the …
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Summary Judgement Granted Because Trade Secret Plaintiff Alleged New Misappropriation Theory But Failed to Amend Complaint

Andrew E. Russell, Oct. 14, 2022
Trade Secret Misappropriation SJ

Secret Plan
AI-Generated, displayed with permission

New Judge Williams is on a roll lately, releasing seven new opinions on Wednesday alone. Sadly we can't post about them all—I'd be doing nothing but writing blog posts. But I wanted to take the opportunity to point out an opinion from a rare (in D. Del., at least) trade secret action.

In Zoppas Industries de Mexico, S.A. v. Backer EHP Inc., C.A. No. 18-1693-GBW (D. Del.), the plaintiff accused the defendant of misappropriating its trade secret information about heating elements for appliances.

According to the complaint, plaintiff disclosed its literal secret plan—the "Zoppas Plan"—to appliance manufacturer Whirlpool. The complaint also alleges that the defendant here, Backer, then acquired that secret plan …

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Court Declines to Adopt Report & Recommendation, Grants Early Summary Judgment of Non-Infringement

Andrew E. Russell, Feb. 1, 2022
SJ Summary Judgment

Clients and co-counsel often ask whether it makes sense to object to an R&R issued by a Magistrate Judge. The answer depends on many factors. For example, why was motion denied? What are the chances it will be reversed? What is the client's commitment level to the case? What is the impact of the motion on the case? Etc.

Sometimes, though, what people really want to know is "would the district judge ever decline to adopt an R&R?" The answer to that is that yes, the court will sometimes declines to adopt an R&R, but it is definitely the less common outcome.

Yesterday, Judge Andrews did just that: he declined to adopt an R&R on a motion …

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Lack of Expert Testimony Causes Defendant to Narrowly Lose Summary Judgment of Indefiniteness

Andrew E. Russell, Jan. 10, 2022
SJ Indefiniteness

Last Thursday, Judge Burke issued an R&R on SJ in a patent action. The patent involved software for playing back audio, and the claims included means-plus-function claim elements where an action is triggered either by a single "Back" command or by two consecutive "Back" commands.

Defendant argued that the patent failed to disclose corresponding structure showing how to calculate whether the two button presses were "consecutive"—i.e., how to measure the time between clicks. Judge Burke agreed that the patent failed to disclose such a structure:

As an initial matter, the Court disagrees with Plaintiff that these limitations "do not recite any functional requirement to measure time[.]" . . . As Defendant notes, . . . in order to be able …
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Judge Connolly Institutes New Summary Judgment Procedures to Deter Meritless Motions

Andrew E. Russell, April 30, 2021
SJ Litigation

In a new standing order today, Judge Connolly announced a new procedure for SJ motions in patent cases. Going forward, he will require parties in all patent cases (current and future) to rank their summary judgment motions, and if any motion is denied, he will generally deny all lower-ranked motions as well:

1. A party that files more than one summary judgment motion shall number each motion to make clear the order the party wishes the Court to consider the motions in question. The first motion the party wishes the Court to consider shall be designated #1, the second motion shall be designated #2, and so on.
2. The Court will review the party’s summary judgment motions in the …
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Filed Under: Things That Make You Say "Huh."

Andrew E. Russell, Dec. 9, 2020
SJ MIL

Lightbulb
Person Catching Light Bulb, Júnior Ferreira, Unsplash

This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.

Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").

So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:

I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …
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Summary Judgment Granted Where Doctrine of Equivalents Analysis Merely "Repackaged" Literal Infringement Analysis

Andrew E. Russell, Oct. 30, 2020
DOE SJ

Chief Judge Stark this week granted a motion of non-infringement under the doctrine of equivalents due to the slim DOE analysis relied on by the patentee's expert.

Interestingly, the expert had offered some testimony framed in terms of the usual function-way-result DOE test:

[T]he Accused Products perform substantially the same function (producing densitometry/densitometric models for use in assessing bone density), in substantially the same way (determining linear attenuation coefficients of an object in several tomographic scans and combining this information using the Feldkamp algorithm to determine the grayscale values of voxels and the corresponding HU units thereof of a 3D CBCT volume of the object), to achieve substantially the same result (3D volumes that include information for depicting quantitative differences …
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