A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

Mel Poole
Mel Poole, Unsplash

Judge Burke issued an oral order earlier this week with some interesting language criticizing the party's attempt at an amended complaint.

In Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del.), the plaintiff accused a very large number of entities—More than 50, it looks like—with infringement of a number of patents, all in a single combined action.

Earlier this year, it moved to amend its complaint to add additional defendants it alleged were parent companies of defendants who were as acting as the parent companies' "alter egos and agents." Judge Burke granted this request as to one party, for which the complaint included more detailed factual allegations, …

Television
Ajeet Mestry, Unsplash

Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:

Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.

He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:

The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.

He also rejected the ...

This case is not about pizza, but I am writing this post while hungry
shaian ramesht, Unsplash

Engineers move all of the time. They start at one company that makes pizza oven accessories and related widgets. They bring that company to the delicious heights of excellence, authoring patent after patent in their pursuit of the perfect crust. Then, having achieved all anyone could hope for, they move on to a competing pizza oven accessory conglomerate, to do it all over again.

That being the case, its surprising we don't see more disputes like the one in Signode Industrial Group LLC v. Polychem, LLC, C.A. No 22-519-VAC-CJB, D.I. 94 (D. Del. Aug. 10, 2022). Like our metaphorical Pizzaneer, Flavio Finzo worked for Signode for many years and was a named inventor on a couple patents in suit. After retiring he started a consulting firm that worked with Polychem to develop their competing product (something to do with straps, totally no pizza involved, I am just hungry).

Signode then moved for a protective order to prohibit the defendant from "eliciting or receiving" any confidential or privileged information from Mr. Finzo, alleging that several facts referenced in the answer could only have come from his confidential and/or privileged knowledge. Defendant agreed that they had not and would not elicit any privileged information, and agreed to treat any confidential information pursuant to the existing protective order. Judge Burke held that these concessions were ...

View from a fisheye lens
View from a fisheye lens Kevin Grieve, Unsplash

Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.

Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.

As a result, defendants' early-case strategy often …

Legos make for good representative claim analogies.
Hello I'm Nik, Unsplash

We've talk before about how accused infringers so often give short shrift to the representative claims issue in § 101 briefing, and how it deserves a lot of attention if you want to prevail on a § 101 motion to dismiss.

Judge Burke issued an R&R yesterday, following his recent § 101 day, invalidating one claim of an asserted patent—but declining to hold 27 other claims valid, citing the accused infringer's poor representative claims argument:

I will note that I [have] been reviewing Section 101 motions like these for most of my entire 11 years as a judge[;] during that time, I have resolved many, many such motions. But I cannot recall ever having seen …

andy-kogl-rs4s5-gWWy8-unsplash.jpg
Burn for something, that enlight and warm others. Passion., Andy Kogl, Unsplash

The 101 day has been the highlight of the Delaware patent law hearing calendar for many years now. It's an all-day no-holds-barred marathon where questions can come to any party at any time. And the best part is, you can look forward to a decision at the end of the day. It is our Super Bowl and our debutante ball all in one, where Delaware's brightest stars go to see, and be seen.

Naturally, I always attend.

I had been a bit worried that the practice would not survive Judge Stark's departure. Although other Judges have adopted the practice to some extent, Judge Stark (the progenitor of the practice) had always been the most reliable host for the event.

Judge Burke Revives the Practice with his own Flair

But my fears were laid to rest last week when ...

The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial...
The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial... Federal Judicial Center

Every once in a while, parties will offer a "patent law expert" with opinions about patent office proceedings, such as patent prosecution. Often, smart opposing counsel will move to exclude that testimony, and it's not unusual for the Court to grant those motions.

A decision last week reminded of this issue. Late last week, Judge Burke granted a motion to preclude some expert testimony about patent prosecution, and excluded expert testimony regarding the patent examiner and plaintiffs' state of mind:

ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion …

Copyright Symbol
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., …