A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Court Refuses to Allow Expert to Evade Adverse Construction Via Doctrine of Equivalents

Andrew E. Russell, July 21, 2021
DOE Daubert

Yesterday, visiting Judge Bataillon excluded a patentee's expert opinion where the expert tried to use the doctrine of equivalents to skirt the Court's construction of a term.

The Court had initially rejected a preliminary injunction motion by the patentee, holding that it had failed to show a likelihood of success on infringement based on its proposed claim construction.

The patentee then proposed the same construction during claim construction before the magistrate judge, who issued an R&R rejecting it.

The patentee then objected to the R&R, but the Court adopted the construction in the R&R and again rejected the patentee's proposed construction.

Specifically, the Court held that the claims required two elements that each have a different thickness and composition: …

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Arbitrability Goes to the Arbitrator, Judge Andrews Rules

Jeff Castellano, July 20, 2021
Arbitration Covenant

When parties seek to dismiss or stay a patent dispute in federal court in favor of arbitration pursuant to an agreement, someone needs to decide whether the parties' dispute falls within the scope of the agreement's arbitration provision (and is thus arbitrable). Whether that question is decided by the court or the arbitrator depends on the language of the agreement. So, in essence, the court must interpret the agreement for the limited purpose of divining the parties' intent (or lack thereof) to shunt arbitrability to the arbitrator.

In a recent order in Nidec Corp. v. Seagate Technology LLC, C.A. No. 21-52-RGA, Judge Andrews found...

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Judge Fallon Pushes Back on Excessive Sealing

David M. Fry, July 16, 2021
Sealing

We've written about the strong presumption of public access in the Third Circuit, which has led the D. Del. judges to push back on sealing requests in recent years. Judges frequently deny requests to seal judicial records (like hearing transcripts and opinions), and some have taken a more active role in monitoring sealed filings on their dockets.

On Tuesday, for example, Magistrate Judge Fallon ordered a party to provide "a factually detailed explanation" for why the exhibits to the redacted version of a sealed letter brief met the Third Circuit standard for sealing:

ORAL ORDER TO SHOW CAUSE re: D.I. 161 : On or before close of business on July 14, 2021, Defendants shall submit a letter …
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Judge Noreika Sanctions Patentee for Mistreating Source Code

Andrew E. Russell, July 13, 2021
Source Code Protective Order

Fire. I couldn't find an image of raining brimstone.
Fire. I couldn't find an image of raining brimstone. Ricardo Gomez Angel, Unsplash

On Monday, Judge Noreika sanctioned a patentee plaintiff for not following the protective order regarding source code.

Here is what the plaintiff did:

Plaintiff violated the Protective Order at least six times over a period of almost one year by: 1) creating an electronic copy of the source code on July 6, 2020; 2) sending that electronic copy to a vendor that had not signed the Acknowledgement and Agreement to Be Bound by Stipulated Protective Order (which actually violated two provisions of the Protective Order); 3) failing to maintain a log of all copies; 4) storing an electronic and apparently unencrypted copy of the source code …
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Some Notable Points from Magistrate Judge Hall's § 101 Denial in RSDI v. Lyft

Andrew E. Russell, July 12, 2021
§ 101 Days 12(b)(6)

Ridesharing
Brecht Denil, Unsplash

Magistrate Judge Hall issued a § 101 R&R today in Rideshare Displays, Inc. v. Lyft, Inc., C.A. No. 20-1629-RGA-JLH (D. Del.), recommending denial of defendant Lyft's motion to dismiss based on § 101.

The Court found that the patent was not directed to an abstract idea—though it noted that it was a close call—and that, regardless, the invention contained an inventive concept under Step 2 of Alice.

We've all read about dozens (or more) of § 101 opinions over the last few years, but here are a few points of interest from Judge Hall's opinion:

  • Judge Hall closely examined the representativeness of the alleged representative claim, and rejected it as unrepresentative. Choose …
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Claim Construction: Quasi-Intrinsic Evidence and Carryover Disclaimers

Jeff Castellano, July 9, 2021
Claim Construction

Judge Stark issued a claim construction ruling in a large multi-district ANDA case last week, touching on interesting questions regarding the nature of intrinsic evidence and the impact of disclaimers on child applications.

The parties to In re Entresto (SacubitriWalsartan) Patent Litigation, C.A. No. 20-2930-LPS presented the Court with just a few issues for resolution.

First, the Court considered whether independent claims of two of the patents-in-suit directed to administration of a "combination" of active ingredients should be limited to administering those ingredients as "two separate components“…

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Daubert Time

Nathan R. Hoeschen, July 8, 2021
Scheduling Daubert

Time
Charles Deluvio, Unsplash

Judge Noreika issued an interesting order last week that allows us to pinpoint precisely how much time she requires to consider Daubert motions.

Naturally, we already had some insight into this issue from the Judge's form scheduling orders. For non-ANDA cases (i.e. cases where the parties may file summary judgment motions), Daubert motions are due at the same time as SJ motions -- at least 4 months before the pretrial conference. See Form Scheduling Order [Patent, Non-ANDA], ¶ 8(f)(iii) (D. Del. Apr. 5, 2021) (Noreika, J.).

The form scheduling order for ANDA cases, on the other hand, gives the parties considerably more leeway, simply requiring that any Daubert motion be brought …

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Chief Judge Connolly Trims Claims and Defenses Before Trial

David M. Fry, July 7, 2021
Trial Claim Narrowing

Scissors
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 …
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Does an Expert Have to Write His Own Report?

Jeff Castellano, July 6, 2021
Expert Reports Daubert

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

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