A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Judge Burke Gives His Views on the State of § 101 Motions After Berkheimer

Andrew E. Russell, Sept. 27, 2021
§ 101

We dug up a transcript.
We dug up a transcript. Jon Butterworth, Unsplash

Last week, in deciding a renewed motion to stay pending a § 101 motion to dismiss, Judge Burke commented on the likelihood of success of such motions:

The Court, having reviewed the parties' letters relating to Defendant's request to renew its motion to stay, . . . hereby ORDERS that the request is DENIED. . . . [I]n light of the circumstances here (including the statistical unlikelihood of prevailing on a Section 101 motion to dismiss as to each of the four separate patents−in−suit), the Court concludes a stay is not warranted.

Defendant had renewed the motion to stay after Judge Burke denied it in late April. That transcript was …

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Judge Stark Denies PI Motion on the Papers

David M. Fry, Sept. 24, 2021
Preliminary Injunction Oral Argument

Oral argument is never guaranteed in D. Del. This means you need to be careful in paring back your briefs—anything that ends up on the cutting room floor might never see the light of day.

Case in point: On Friday, Judge Stark issued an order denying a motion for a preliminary injunction in a competitor case (seeking to require the defendant to withdraw several pending IPR petitions). Both sides requested oral argument, and the plaintiff requested an expedited hearing.

Instead of holding argument, Judge Stark summarily denied the motion on the papers. In a single paragraph, he held that the plaintiff "failed to persuade the Court" on any of the preliminary injunction factors, and noted that a full …

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Anticipation and Obviousness Are Different, Apparently

Nathan R. Hoeschen, Sept. 23, 2021
Anticipation

possessed-photography-miWGZ02CLKI-unsplash.jpg
The Eccentric, Possessed Photography, Unsplash

Anticipation and obviousness naturally have quite a bit in common. You frequently see the defenses listed in the alternative like, "the Velma reference anticipates the '666 Patent, or, in the alternative, The Velma reference in combination with the Daphne, Fred, and Shaggy references renders the '666 patent obvious." Indeed, you see this so commonly, that you might wonder if it's even necessary to specifically include the anticipation argument in your contentions/ expert reports/ pretrial order/ etc., since more or less all of it will be included in the obviousness case.

The answer is yes, you do have to include it. It is, in fact, very bad if you don't.

The defendant in BioDelivery Scis. …

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Some Helpful Rulings on 30(b)(6) Objections

Andrew E. Russell, Sept. 22, 2021
Discovery Dispute Discovery

Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:

He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":

The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.

He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the …

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Judge Andrews Rejects 50/50 Starting Point for Hypothetical Negotiation

Jeff Castellano, Sept. 21, 2021
Daubert

Damages experts in patent infringement cases typically rely upon the Georgia-Pacific factors to guide their reasonable royalty analysis. Those factors are designed to predict the result of a hypothetical (and thus, fictional) negotiation between the parties, had the parties been willing participants in such a negotiation. But it is important to remember that the starting point for the application of the Georgia-Pacific factors must be tied to the facts of the case, like the factors themselves.

Late last week, Judge Andrews excluded a plaintiff's damages expert for his use of a 50/50 starting point for the hypothetical negotiation that was not sufficiently linked to the facts, as required by Federal Rule of Evidence 702.

The issue came to Judge Andrews...

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Chief Judge Connolly Confirms Again that Willfulness Requires Pre-Suit Activity, Grants Summary Judgment

Andrew E. Russell, Sept. 20, 2021
Willfulness Summary Judgment

Nope
Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …
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Defendant Gets Summary Judgment Win on Eve of Trial

Jeff Castellano, Sept. 16, 2021
Summary Judgment Section 101

Most summary judgment motions in patent cases are denied. That's one reason Judge Connolly issued a standing order earlier this year requiring that parties rank their summary judgment motions and explaining that in most cases he will not consider a party's summary judgment motion if he has previously denied a summary judgment motion by that party.

Judge Connolly noted that "the complexity, voluminous record, competing expert testimony, and scorched-earth lawyering in the typical patent case make it almost inevitable that a disputed material fact will preclude summary judgment." Nonetheless, he expressed hope "that an effectively managed summary judgment practice can bring about efficiencies and cost savings."

A few days ago, in Chromadex, Inc. v. Elysium Health, Inc., C.A. No. 18-1434-CFC, Judge Connolly granted a motion for summary judgment of invalidity under 35 U.S.C. § 101, just weeks before trial...

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Disappointing Rule 36 Affirmance of Exclusion of Japanese Patent Office Publication - A Missed Opportunity for a Federal Circuit Opinion

Andrew E. Russell, Sept. 13, 2021
§ 102 FRE

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

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Court Construes Claims as Means-Plus-Function, Holds Them Indefinite for Lack of Structure

Andrew E. Russell, Sept. 10, 2021
Claim Construction

A peloton?
Jonathan Petit, Unsplash

Before § 101 got big in the early-to-mid 2010's, I recall there being a lot more discussion about construing claims—particularly software claims—to be means-plus-function claims, and then trying to get them invalidated under § 112 ¶ 6 for lack of corresponding structure.

Lately that issue seems to be litigated less frequently, but an order from Judge Andrews today shows that it hasn't faded away completely.

He looked at two claim elements:

a [] translator device adapted to translate data between the exercise communication protocol and the computer communication protocol.

and

translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative …
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Take What You Want and Pay for It

Nathan R. Hoeschen, Sept. 9, 2021
Fees

alexander-mils-lCPhGxs7pww-unsplash.jpg
Girl holding American Dollar Bills, Alexander Mils, Unsplash

Those with a habit of perusing these posts (thank you, persons of class and distinction) may recall the interesting case of Almirall, LLC v. Torrent Pharmaceuticals Ltd., C.A No. 20-1373-LPS, D.I. 50 (D. Del. July 13, 2021) where Judge Stark granted a 12(c) motion after ruling that the plaintiff had waived various arguments by failing to raise them until oral argument.

I, for one, expected that to be the last we heard of that case for some time. Last Friday, however, Judge Stark granted Almirall's motion to amend the complaint to reassert these same claims, based on new allegations similar to those the Court previously found waived. Judge …

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