A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

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Andrew E. Russell

We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.

Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.

On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …

The Greatest of Funnels
John Matychuk, Unsplash

More and More, case narrowing has become a fact of life in Delaware. What was once an ad-hoc process recorded in a handful of unpublished orders has become more formal, and the various by-laws and codicils that govern it are congealing into something knowable, citable, and inevitable.

But we're not there yet, and even I can still be surprised by a novel ruling on the intricacies of the process. Such was the case in Tonal Systems, Inc. v. iFIT Inc., C.A. No. 20-1197-VAC-CJB, D.I. 100 (D. Del. May 16, 2022). Following an earlier dispute on the schedule for narrowing, The parties there were set to narrow of both claims and prior art, following the disclosure of initial infringement and invalidity contentions. So far, normal.

The wrinkle was that the narrowing schedule left more than 30 days between the service of Defendant's initial invalidity contentions and the deadline by which they had to narrow their prior art. They thus took the clever step of serving a rog requesting plaintiffs validity contentions -- a response to which would have been due before Defendant had to pick their prior art arguments. Plaintiffs objected, stating "[t]he Court ordered [Defendant] to narrow its Section 102/103 invalidity case to no more than 50 prior art references

Illustration of the stone wall plaintiff will face when they actually depose this person.
Illustration of the stone wall plaintiff will face when they actually depose this person. eberhard grossgasteiger, Unsplash

In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103-MN (D. Del.), plaintiff moved to compel defendant to produce a 30(b)(6) witness on various topics, including on "[a]ll bases" for certain statements by defendant's CEO, including statements about a decision not to challenge the validity of certain patents.

As to two of those topics, the defendant argued in its responsive letter that the CEO's statements were "based entirely on communications and memoranda prepared by Gilead’s in-house counsel and outside counsel," which are privileged. The Court generally agreed:

[T]he Court definitely acknowledges Defendants' point[, ]i.e., …

Upturned Nose
Zayn Shah, Unsplash

As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.

However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.

Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.

The Court found that the Initial Invalidity Contentions were sufficient in most respects:

In general, they provide real detail, including significant specificity as to ...

New
Nick Fewings, Unsplash

Yesterday, Magistrate Judge Burke released a new form scheduling order. There are redlines embedded below.

Here is a quick rundown of some of the changes in the patent scheduling order:

  • Added from Judge Andrews' scheduling order:
    • A requirement for plaintiffs to provide licenses and settlement agreements as part of their disclosures
    • A prompt in the scheduling order for the parties to consider a staged reduction of asserted claims and prior art, before and after claim construction (this comes up a lot)
  • Added from Judges Connolly, Noreika, and/or Hall's scheduling orders:
    • A requirement to include chart at the end listing the deadlines all together (convenient!)
    • A Concise Statement of Facts requirement for summary judgment
    • He …

These dandelions are popping up like SJ motions!
These dandelions are popping up like SJ motions! Jonne Huotari, Unsplash

Today, in Personal Audio v. Google, C.A. No. 17-1751-CFC-CJB (D. Del.), Judge Burke addressed an apparent request for the Court to find non-infringement based on a claim construction issue, which came up for the first time in the context of a Daubert motion to exclude expert testimony.

The Court expressed some initial sympathy for the non-infringement argument, suggesting it may have had some merit:

[T]he Court notes more generally that the issue underlying Defendant’s Motion is Defendant’s assertion that the claim construction for “sequencing file,” . . . requires that “you can’t use a copy of the sequencing file to control playback and respon[d] to …

Stay!
Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPR is instituted.

An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:

ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly ...

Clock
Tristan Colangelo, Unsplash

The District of Delaware sometimes requires the parties to file joint status reports, usually either at dates set in the scheduling order (e.g. an "interim status report") or following developments in the case that require more information, like a stipulated stay that has expired, or after a communication from the parties regarding a development in the case.

Typically, by convention, plaintiff handles the initial draft of these reports—but not always. Either way, one side will send a draft, and the other side will prove its position, sometimes reflexively opposing whatever is in the initial draft. The final report will often be split, with "Plaintiff's position" and "Defendant's position," although sometimes the parties will agree to a …

It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.

In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...

Bitcoin
Dmitry Demidko, Unsplash

Judge Burke issued an R&R today on two things we don't see very often: a successful motion for judgment on the pleadings, and preemption of state law claims by federal patent law.

The case, Bear Box LLC v. Lancium LLC, C.A. No. 21-534-MN-CJB (D. Del.), involves a patent on more-energy-efficient cryptocurrency mining systems. One of the plaintiffs claims to have met one of the defendants at a conference and, later, confidentially disclosed his ideas for improved cryptocurrency mining. Then, he says, the defendants patented his ideas.

According to the Court, plaintiffs brought two correction-of-inventorship claims, plus three state law claims:

  • Conversion ("theft of inventions")
  • Unjust enrichment (claiming inventorship of plaintiff's invention) …