To give the reader a bit of a peak behind the curtain, it can sometimes be taxing to write 5 blog posts in a week. This is especially true on a week, like this one, where the Court issues fewer decisions than average. All of us at IP/DE have our own strategies for dealing with this -- my preferred method is to dig up some stats that I had always wondered about, but never bothered to figure out.
This week, my focus was on invalidity challenges in ANDA cases. In particular, what are the relative odds of invalidating a composition patent, vs. a method of treatment patent, vs. a formulation patent?
Judge Noreika just addressed an issue that rarely comes up in D. Del.: whether a patent should be delisted from the Orange Book for non-compliance with the Hatch-Waxman listing requirements. Although the issue itself is uncommon, the decision highlights the difficulty of winning a Rule 12 motion that hinges on early-stage claim construction.
The plaintiff sued "for infringement of five patents, only one of which . . . is listed in the Orange Book." The defendants counterclaimed that the Orange Book patent "must be delisted because it claims a 'system,' not a drug product, or method of using a drug, as required by" the Hatch-Waxman Act. The defendants then moved for judgment on the pleadings on their delisting …
Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.
Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:
Preliminary injunction motions are—in most cases—filed before substantial discovery has occurred. Nonetheless, a plaintiff seeking a preliminary injunction must support its motion (including both its assertion that it is likely to succeed on the merits an its assertion that it will be irreparably harmed absent an injunction) with evidence.
In Vertigo Media, Inc. v. Earbuds Inc., C.A. No. 21-120-MN, a patent case involving mobile phone apps that permit users "to send music that is simultaneously synchronized with the audience’s individual music streaming platform (Spotify, Apple Music, etc.) and played from audience members’ devices," Judge Noreika recently denied a preliminary injunction motion because plaintiffs had provided "scant" evidence of irreparable harm, and had likewise failed to substantiate their patent infringement arguments.
The Judge first rejected plaintiffs' argument that they had shown irreparable harm as a result of price erosion:
Plaintiffs have offered no concrete evidence of price erosion, let alone evidence that damage caused by any such price erosion could not be quantified. Instead, Plaintiffs allege “complete price erosion” because Defendant markets its products for free. But Plaintiffs do not offer any evidence suggesting that they were planning to offer their product as a paid service or that the price has eroded at all.
Plaintiffs did present evidence that they had unsuccessfully contacted competitors with offers to license rights to their technology, but ...
Last week, Judge Noreika issued an interesting oral order regarding a claim construction dispute that was briefed—haphazardly, apparently—in the parties' summary judgment papers.
She criticized the briefing, ordered the parties to meet-and-confer and file ordinary claim construction briefing, and threatened sanctions if the parties don't try hard enough to reach agreement:
ORAL ORDER − In their summary judgment papers, the parties include arguments that either three or four additional claim terms must be construed by the Court. The parties' arguments are disjointed, do not focus on the intrinsic evidence and do not demonstrate any real understanding of what that other side's construction is. Thus, IT IS HEREBY ORDERED that, on or before 5:00 PM on …
We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.
Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."
He ultimately concluded that:
"[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
"In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
We have written about the ways in which a party can, despite its intention to object to a portion of a Magistrate Judge's Report and Recommendation, waive or otherwise fail to properly assert its objections.
However, an even more fundamental issue is whether a party is permitted to object in the first instance (or more specifically, whether a party is entitled to have a Judge rule on the merits of its objections). In a recent decision, Judge Andrews could not find "any reason to consider the merits of Plaintiffs' objections" to an R&Rin which the plaintiffs prevailed.
Judge Andrews' decision evokes the general rule that a party cannot appeal from a judgment in its favor. Although Fed. R. Civ. P. 72(b)(2) and 28 U.S.C. § 636(b)(1)(C) - which set out the basic framework for objections to R&Rs on dispositive motions - do not themselves preclude objections by a prevailing party (both discuss objections to the proposed findings and recommendations by "any party"), Judge Andrews suggested that where a party prevails on the substance of the issues before the Magistrate Judge, that party's objections may be "moot."
We've been following the district court cases holding that a complaint itself cannotestablishknowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.
On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:
As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …
In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.
This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.
A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …
Pop quiz: What's the easiest way to get prior licenses tossed from your reasonable royalty analysis?
Judge Andrews gave the answer today in a lengthy post-trial opinion in a case involving car seat technology. After determining that the asserted patents were valid and not infringed, he turned to damages.
Both parties relied on prior licenses that "deal generally with childcare products" to support their reasonable royalty analyses, including one "related to folding strollers" and one that "involves embedded chips that can alert a parent as a child safety feature[.]"
Judge Andrews disregarded both licenses because there was no evidence of technological comparability:
Neither party has made clear why the folded stroller in Scotty or the chip-based child safety feature of …
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