A Blog About Intellectual Property Litigation and the District of Delaware

United States Court of Appeals for the Federal Circuit

Speaking of clever procedural manuevers, here's the
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for one Andrew E. Russell, displayed with permission

Judge Bryson issued an opinion today in Michael R. Cahill, Trustee of the Hunt Irrevocable Trust v. Air Medical Group Holdings, Inc., C.A. No. 21-679-WCB (D. Del. Oct. 16, 2023). In it, he describes a clever procedural maneuver that failed, but resulted in a positive outcome anyway.

The case involves an breach of contract claim affirmative claim and counter-claim. The Court granted summary judgment for the plaintiff on their affirmative claim, holding that it was time-barred under a provision of the contract that set out a time for bringing claims.

The defendant …

Full Scope
Patrick Hendry, Unsplash

Judge Bryson recently unsealed his opinion in Janssen Pharmaceuticals Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Sept. 8, 2023), in which he grants summary judgment of no anticipation by a reference under (Pre-AIA) § 102(a).

As a reminder, pre-AIA § 102(a) covers prior art that was available "before the invention" of the patent.

Here, the plaintiff argued that it had reduced the invention to practice before the date of the prior art. The defendant responded that, sure, they reduced an embodiment to practice before the prior art, but they didn't conceive of the invention's full scope:

Tolmar does not appear to dispute that the June 2007 clinical trials practiced …

Lawyers, especially patent lawyers, are artists in the medium of obfuscation. Much of the job is finding the fuzzy areas at the edges of seemingly straightforward language and tugging at them to suit your needs. At best, it leads to moments of mad brilliance that Van Gogh might envy.

So it was in the case (fast becoming one of my favorites in the district) of a Markman dispute in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del. Aug. 15, 2023).

Person, cow, not cow, camera, tv
Person, cow, not cow, camera, tv AI-Generated, displayed with permission

The term in question was "non-animal."

As you probably gathered from the caption, the patent covered various fake meats (Facon, Soysauge, Ham-pty promises) with "non-animal" ingredients.

Being naturally averse to spoilers, I read the opinion until I got to the disputed term, and then stopped to ask myself "what could the dispute possibly be?" before peaking into the parties' arguments. I sat there a full 10 minutes before shaking my head and giving up.

As it happens, it was more reasonable than it looks at first blush. Impossible argued for the definition I'd immediately jumped to—not from an animal (or in the parlance of lawyers "derived from a non-animal source"). Motif's position, however was that the particular ingredients had to be chemicals (here, proteins) that were "not naturally present in animals" as opposed to merely not harvested from animals in this instance.

Judge Bryson ultimately sided with Impossible for boring science and law reasons. But game recognizes game, so I felt obliged to call out this impressive little dispute. I hope you readers are as inspired as I was.

You don't get to pick your jobs in the P.I. biz. A good gumshoe takes what walks in the door, and the only questions he asks are "how much?" and "permanently?" The only answer he'll take is a raised eyebrow and and that money gesture when you rub your thumb against two fingers.

Hamburglar was of the old school. 40 years ago he had a reputation that could make a clown go back into his little car with all his friends and drive off without so much as a honk. When the doc said his arteries were starting to look looked like string cheese, he put that all behind him - hung up his shingle and started trying to solve …

We try to keep it light here at IP/DE, but sometimes I actually learn something and I feel sort of obliged to pass it on. You know, some real dark arts stuff that I wouldn't have known if I didn't have to read absolutely everything written in the district for this blog.

Why does he have six fingers? Why on only one hand?
AI-Generated, displayed with permission

Today's bit of lore today is about damages, and a split amongst district courts that visiting Judge Bryson has taken a stand on. Can a corporate parent can claim lost profits that would have initially accrued to its subsidiary?

The trite answer to this is "no." The Federal Circuit has squarely held that "a patentee may not claim, as its own damages, the lost profits of a related company." Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 1375 (Fed. Cir. 2015). However, as Judge Bryson pointed out in his opinion in Kaneka Corp v. Designs For Health, Inc., C.A. No. 21-209 (D. Del. Mar. 3, 2023) (Mem. Op. & Order), several courts have held that lost profits of a subsidiary can still be claimed if they flow "inexorably" from the subsidiary to the parent.

Judge Bryson agreed, stating

To be sure, the Federal Circuit has not expressly recognized that lost profits can be awarded when those profits flow inexorably from a subsidiary to the patentee . . . I find the weight of district court authority on that point to be ...

OK Nate, you win. Mavexar is a crab now.
OK Nate, you win. Mavexar is a crab now. AI-Generated, displayed with permission

We posted last month about two more mandamus petitions regarding Chief Judge Connolly's recent efforts to enforce his standing orders regarding disclosure requirements in his cases.

The Mavexar saga is getting a bit complicated, so here is a quick recap of the mandamus petitions:

  • Chief Judge Connolly scheduled hearings in several cases regarding various plaintiffs' compliance with his standing orders
  • In two of the hearings, the plaintiffs explained that an entity called Mavexar recruited the plaintiffs and took up to 95% of their proceeds
  • The Court ordered some of the Mavexar entities to produce a broad range of communications among the plaintiffs, Mavexar, and their attorneys
  • One …

A Creek View
AI-Generated, displayed with permission

We've posted a lot about the Mavexar hearings. Earlier this month, two of the plaintiffs in cases that had hearings scheduled, Creekview IP LLC and Waverly Licensing LLC, filed nearly-identical petitions for mandamus.

The petitions are linked below. In each, the petitioner seeks to reverse Chief Judge Connolly's order scheduling an evidentiary hearing to investigate compliance with the Court's standing orders:

Petitioner respectfully requests that the Court issue a writ of mandamus reversing the Memorandum Order and ending the judicial inquisition of Petitioner.

The petitions argue that the Court lacked Article III standing, because the cases had been dismissed, that Chief Judge Connolly abuse his discretion in issuing the standing order, and that Congress has …

Hasnain Sikora, Unsplash

The Federal Circuit made its second foray into the Mavexar (I think) saga on Friday when it ruled on a new petition for Mandamus is In re: Swirlate IP LLC.

The plaintiff in Swirlate filed a petition for mandamus on November 30, seeking to stop a scheduled December 6 hearing.

I should note at the outset the while the Swirlate case seems to mimic the M.O. of a Mavexar entity—a Texas LLC with a single managing partner with no apparent connection to the patent—the Court has not yet held a hearing on the issue, so we can't say conclusively that the matter is related. It was, however, scheduled for a hearing in December that that sole …

Artist's depiction of amicus attorneys standing guard outside of the District of Delaware
Artist's depiction of amicus attorneys standing guard outside of the District of Delaware AI-Generated, displayed with permission

There has been so much activity in the Mavexar cases this week that it's hard to keep up. Over the last two days, various parties have requested leave to file a total of six amicus briefs in response to the Mavexar petition for a writ of mandamus in the Nimitz case, and the respondent filed their brief as well.

All of the briefs were great, and many repeat some of the same arguments. I thought it might be worthwhile to take a spin through them and mention a few notable or unique points in each.

(If you need an overview, check out our …

Dollar Bills
Sharon McCutcheon, Unsplash

Judge Bryson resolved a large pile of motions in limine this month in IOEngine, LLC v. Paypal Holdings, Inc., C.A. No. 18-452-WCB (D. Del. June 15, 2022). What's a large pile, you say? About nineteen motions in limine total if I'm counting correctly.

The opinion hits a number of the old stand-by MILs, including that the accused infringer cannot call the patentee names like "patent troll" (we've discussed that before), that PTAB and IPR proceedings do not come in and the parties cannot talk about inequitable conduct (common results), and that general evidence about the parties' size/net worth is precluded (also not uncommon).

There were a number of interesting motions, though, …