A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Split

Split Cup
Tania Melnyczuk, Unsplash

Judge Fallon issued an order yesterday recognizing the split in the district court on how the judges handle IPR estoppel—specifically the question of whether IPR estoppel may apply to prior art products that are cumulative of patents or publications that could have been raised in the IPR:

ORAL ORDER . . . IT IS ORDERED that Plaintiff's motion to strike Defendant's amended invalidity contentions based on IPR estoppel is DENIED without prejudice. The parties dispute whether IPR estoppel should apply to Defendant's invalidity theories based on prior art systems, products, and/or knowledge. Under 35 U.S.C. § 315(e)(2), Defendant is barred from asserting an invalidity defense based on "any ground that [Defendant] raised or reasonably could …

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 …