A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Colm F. Connolly

Chief Judge Connolly issued an interesting opinion on Friday, denying a motion to dismiss a DJ complaint in favor of an earlier-filed infringement action in the Western District of Texas.

The DJ case is the second Delaware action between these parties. After Judge Connolly found the claims in the first case invalid under § 101, the patentee brought an infringement action in Texas on a "virtually identical" continuation patent.

Although the Texas case was filed first, Judge Connolly declined to apply the first-to-file rule. He based his decision not only on judicial economy (i.e., he had already devoted substantive attention to the earlier, "virtually identical" patent), but also on the patentee's "litigation gamesmanship":

Second, SmileDirectClub' …

March of the Trolls
Paulo O, CC BY 2.0

Continuing our theme, another subject that often comes up in defending NPE complaints is whether the NPE's often-lackluster complaint may be vulnerable to an FRCP 12(b)(6) motion to dismiss (and whether that motion can be brought economically).

Judge Connolly today dismissed a complaint by Swirlate IP, an (alleged) IP Edge entity, because the complaint mostly parroted the language of the claims and offered an unspecific website URL.

Here is an example of a typical paragraph from the complaint, which mirrors the claim language but also offers slightly more:

21. Upon information and belief, the Accused Instrumentality performs the step of performing the second transmission by transmitting the second data symbols over a …

In a short ruling issued in Deere & Co. v. AGCO Corp., 18-827-CFC, Judge Connolly rejected the defendants' motion for additional claim construction after IPR. The defendants had asked the Court to conduct further claim construction proceedings on three groups of terms, to account for allegedly inconsistent positions taken by the plaintiff during IPR proceedings on 8 of the 11 asserted patents. Judge Connolly explained that he entertained the motion for more claim construction "based on Defendants' repeated and emphatic representations that Plaintiff Deere & Company maintained . . . positions on claim construction [during IPR] that were 'diametrically opposed' to and 'fundamentally inconsistent' with positions Deere took during claim construction before me."

Judge Connolly, however, did not agree . . .

Markus Winkler, Unsplash

A few months ago, we wrote about claim narrowing in patent cases, noting that Delaware judges will often set additional limits when a case reaches trial. Because this typically comes up during the pretrial conference, there is often no written record on the docket.

Last Thursday, however, Chief Judge Connolly issued a rare, written order requiring the parties to narrow their claims and defenses before trial:

ORAL ORDER: Per today's call, it is HEREBY ORDERED that the pretrial conference will be held on July 27, 2021, and the trial will be held on August 2, 2021. Plaintiff shall identify for Defendant no later than 5:00 p.m. on July 7, 2021 no more than two patents and …

We've written in the past about the ongoing struggle to reduce disputed claim terms. Judge Connolly's form scheduling order requires parties to meet and confer to try to reduce disputes before the Markman hearing, and Judge Noreika frequently imposes a similar requirement after briefing is complete.

Some parties treat this process as a formality, believing that they can comply with a short, perfunctory phone call and a letter stating that the parties couldn't agree. This is a dangerous approach to claim construction meet-and-confers, and it doesn't comply with the letter (or the spirit) of the judges' orders.

Judge Connolly drove this point home in a recent oral order, issued the day before a Markman hearing:

Having reviewed the claim construction …

Stop Sign
Luke van Zyl, Unsplash

Back in March, we noted Judge Connolly's adoption of a bright-line rule regarding reliance on post-complaint knowledge for indirect and willful infringement allegations:

[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that complaint or a prior version of the complaint filed in the same lawsuit. And I conclude that the operative complaint in a lawsuit fails to state a claim for willfulness-based enhanced damages under § 284 where the …

New Tricks?
New Tricks? Go to Charles Deluvio's profile Charles Deluvio, Unsplash

The Delaware Default Standard for Discovery, which has been around in its present form for about a decade now, applies to some extent in every Delaware patent case. Given how frequently discovery issues are litigated in Delaware, I was somewhat surprised to see a new ruling from Judges Connolly and Hall clarifying a bit of the Default Standard that I don't believe has ever come up before.

In addition to describing the initial exchange of contentions and the format for ESI production, the Default Standard also sets a presumptive limit on the time period for discovery:

Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.

Default Standard Section 4(e)

The question that arose this month in LEO Pharma A/S et al v. Glenmark Pharmaceuticals Ltd., C.A No. 20-1359-CFC-JLH, D.I. 60 (D. Del. May 25, 2021), was what is "follow-up discovery"? ...

Last month, we took a look at how the different judges handle indefiniteness at Markman, a question that comes up a lot.

We reported that every judge will hear argument about indefiniteness issues at Markman. But in the Judge Connolly specific section, we noted that he has never held a term indefinite in a Markman opinion, and has instead deferred ruling on the issue until summary judgment (citing two examples). See the full post for details.

Yesterday, at a hearing, Judge Connolly mentioned a blog post and stated that the post was incorrect in suggesting that he considers indefiniteness at Markman. He clarified that he does not permit indefiniteness argument at Markman. Instead, he might entertain early …

In a recent Daubert ruling in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662-CFC-CJB, Judge Connolly excluded the opinion of the plaintiff's expert regarding "corrective advertising damages," in part because it was based on "vague, undocumented, and back-of-the-envelope . . . estimates" by the plaintiff's CEO. The Judge granted the defendant's motion to exclude the expert's testimony under both Rule 702 and Rule 403, indicating that not only did the expert's opinion fail to satisfy the Daubert hallmarks for admissible expert testimony, it would also confuse the jury and be prejudicial because it "would essentially place the imprimatur of an expert on [the CEO] Maag's undocumented and dubious damages calculation."

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …