A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: summary-judgment

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …

Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …

Most summary judgment motions in patent cases are denied. That's one reason Judge Connolly issued a standing order earlier this year requiring that parties rank their summary judgment motions and explaining that in most cases he will not consider a party's summary judgment motion if he has previously denied a summary judgment motion by that party.

Judge Connolly noted that "the complexity, voluminous record, competing expert testimony, and scorched-earth lawyering in the typical patent case make it almost inevitable that a disputed material fact will preclude summary judgment." Nonetheless, he expressed hope "that an effectively managed summary judgment practice can bring about efficiencies and cost savings."

A few days ago, in Chromadex, Inc. v. Elysium Health, Inc., C.A. No. 18-1434-CFC, Judge Connolly granted a motion for summary judgment of invalidity under 35 U.S.C. § 101, just weeks before trial...

Industry standards can be helpful for a patentee tasked with proving infringement of standard-compliant products. Standards often lay out mandatory features, such that a patentee may be able to use infringement of the standard itself as a shortcut to establish infringement of a standard-compliant product (although there are limits on that type of proof, including that the patent must cover all possible implementations of the standard).

The question of whether infringement by a standard can be used to shortcut infringement proofs for a product recently came up before Judge Andrews on a summary judgment motion by the plaintiff in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA.

The defendant's products in TQ Delta were accused of implementing an infringing functionality . . .

Trailer presumably carrying material facts
Nathan Dumlao, Unsplash

As we've previously noted, Judges Connolly, Noreika and Hall all require parties to submit statements of material facts with any summary judgment motions. We've also noted the dangers of listing unnecessary "material facts." A new decision from Judge Connolly, however, suggests that a barebones statement of facts can be just as dangerous.

Motion for Summary Judgment Denied For Discussing Material Fact Not Included In Concise Statement

The defendants in Amgen Inc. vs. Hospira, Inc., C.A. No. 18-1064-CFC, moved for summary judgment of non-infringement, and submitted an accompanying statement facts as required by Judge Connolly. See id., D.I. 205, 207. The thrust of their argument was that the process for making their product included an "intervening …

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 …

Jamie Street, Unsplash

Pop quiz: What's the easiest way to get your SJ motion denied in a single page? Answer: Tell the judge that a disputed fact is material to your motion.

Several of the D. Del. judges require parties to include a concise statement of material facts with their summary judgment motions. This is exactly what it sounds like: a statement of each fact that the moving party contends is (a) essential to resolve the motion and (b) undisputed.

Judge Noreika, Judge Connolly, and Magistrate Judge Hall each require a concise statement to be filed with the opening brief, as well as a responsive statement with the answering brief. Judge Noreika and Magistrate Judge Hall also require …

The nailgun at issue.
The nailgun at issue. US Pat. No. 7,156,012

Judge Connolly granted summary judgment of invalidity this week, finding three claims indefinite due to their physical impossibility.

The patent relates to a faster air-powered nail gun, which uses a trigger to control the gun by providing "fluid communication"—i.e., air flow—between air valves.

All of the patent's claims involve triggers and "fluid communication" of various sorts, but defendants picked up on some weird phrasing in one independent claim:

a trigger valve exterior frame to which the main valve control channel is fluidly connected;

Defendants argued that the "exterior frame" is solid and can't be "fluidly connected" to the trigger.

Plaintiffs disagreed, arguing that a person of skill in the art would …

Kenneth Schipper Vera, Unsplash

Judge Andrews recently rejected the requests of several defendants in a Hatch-Waxman (or "ANDA") case to file an early motion for summary judgment, calling the request a "pig in a poke."

Judge Andrews, like most judges in this District, does not as a matter of course permit dispositive motions in ANDA cases or early dispositive motions in general. Nonetheless, two defendants in Astrazeneca AB v. Alembic Pharms. Ltd., C.A. No. 20-202-RGA, sought leave to file an early motion for summary judgment of no infringement under the doctrine of equivalents (plaintiff's only infringement theory).

Judge Andrews made short work of the request, first noting that the

defendants do not make a …