A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Judge Connolly Offers an Insight on Sufficiency of Contentions

Andrew E. Russell, May 3, 2021
Infringement Contentions Contentions

As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § …
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Yes, Parties Can Object to Non-Dispositive Magistrate Judge Decisions

Andrew E. Russell, May 3, 2021
FRCP 72 Objections to R&Rs

It doesn't happen all that often, but remember that under FRCP 72, a party can object to a non-dispositive order by a magistrate judge:

(a) NONDISPOSITIVE MATTERS. . . . A party may serve and file objections to the order within 14 days after being served with a copy. . . . The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

Parties sometimes seem to forget this, because unlike with Report and Recommendations on dispositive matters, the magistrate judges do not typically flag the 14-day objections period in their orders.

Fallen ice cream
Sarah Kilian, Unsplash

And, sometimes, it works out. In 2019, for example, Judge Noreika sustained an objection to one of the magistrate judge's common interest doctrine determinations, reversing an order to compel certain common interest materials. See AgroFresh Inc. v. Essentiv LLC, No. 16-662 (MN), 2019 U.S. Dist. LEXIS 172423, at *13 (D. Del. Oct. 4, 2019).

All of that said, other times, it does not work out well. Today Judge Connolly denied such an objection before the other side had even filed a responsive brief ...

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Indefiniteness Dooms Computer Bag Claims

Andrew E. Russell, May 3, 2021
Markman Briefing Indefiniteness

Judge Andrews today released a claim construction regarding several computer bag claims. Six of the claims at issue included elements regarding orientation of the opening in a computer bag:

“[pouch] opening[s] [is/are] . . . oriented in a direction substantially parallel to the planar surface”

U.S. Pat. No. 8,567,578
U.S. Pat. No. 8,567,578 U.S. Pat. No. 8,567,578

He found the claims indefinite because a POSITA would not understand the "orientation" of a bag opening, and the specification and prosecution history offered no hints:

At oral argument, [defendant] Victorinox contended that it is impossible to choose between two plausible views as to how to identify the orientation of the pouch opening; the “planar view” articulated by Victorinox and the direction pointing out of the pouch …
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Judge Connolly Institutes New Summary Judgment Procedures to Deter Meritless Motions

Andrew E. Russell, April 30, 2021
SJ Litigation

In a new standing order today, Judge Connolly announced a new procedure for SJ motions in patent cases. Going forward, he will require parties in all patent cases (current and future) to rank their summary judgment motions, and if any motion is denied, he will generally deny all lower-ranked motions as well:

1. A party that files more than one summary judgment motion shall number each motion to make clear the order the party wishes the Court to consider the motions in question. The first motion the party wishes the Court to consider shall be designated #1, the second motion shall be designated #2, and so on.
2. The Court will review the party’s summary judgment motions in the …
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Who in Delaware is Deciding Indefiniteness at Markman?

Nathan R. Hoeschen, April 29, 2021
Indefiniteness KB

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Being a notorious font of local wisdom, I am often asked whether Judge X or Y will entertain indefiniteness at Markman. Well here you have it faithful readers—everything you need to know about raising indefiniteness at Markman in Delaware

Most Delaware District Judges Will Allow Briefing and Argument on Indefiniteness at Markman

Judge Sleet rather famously did not entertain indefiniteness arguments at Markman, considering it “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003). He frequently referred to this prohibition …

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Jury Trials: They're Back!

David M. Fry, April 28, 2021
COVID-19 Trial Calendar

Gavel
Gavel, Bill Oxford, Unsplash

Last week, we asked whether jury trials in Delaware had finally arrived. After a long period of fits and starts, the answer is yes!

Judge Andrews successfully held a jury trial in a criminal case this week, culminating in a "not guilty" verdict today. Everything seems to have gone off without a hitch, with jury selection, preliminary instructions, opening statements, and multiple witness examinations taking place in a single day.

There's a huge backlog of jury trials in D. Del., and the court is still only equipped to hold one jury trial at a time (with a separate courtroom serving as the public observation area). But this is a big step …

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Judge Connolly Rejects Reconsideration Based on "New Evidence" the Movant Helped Create

Jeff Castellano, April 27, 2021
Reconsideration

Late last year, we posted about a decision from Judge Connolly dismissing an action by Chromadex because Chromadex had licensed the patent to another party along with the right to sublicense, making the licensee a required party, but had failed to join that party in the complaint.

To remedy the situation, Chromadex apparently executed a new license agreement to provide Chromadex with standing to bring a complaint alone. The licensee was dissolved.

Chromadex then moved for reconsideration. Judge Connolly denied the motion. He pointed out that a plaintiff cannot rely on evidence arising after the original decision to support a motion for reconsideration:

"newly discovered evidence" within the purview of Rule 60(b )(2) . . . refers to evidence of …
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Court Reaffirms Denial of Litigation Funding Discovery, But Permits In Camera Review of Litigation Funding Agreement

Andrew E. Russell, April 26, 2021
Litigation Funding Discovery Dispute

Dollar Bills
Sharon McCutcheon, Unsplash

It seems like litigation funding is becoming a more active area for discovery disputes lately—a trend that is likely to continue after Judge Connolly granted a dismissal based on a litigation funding agreement late last year. See Uniloc USA, Inc. v. Motorola Mobility, LLC, C.A. No. 17-1658-CFC, 2020 U.S. Dist. LEXIS 244512, at *25 (D. Del. Dec. 30, 2020).

Last week, Judge Burke confirmed a previous denial of litigation funding discovery, offering some additional thoughts:

ORAL ORDER: The Court, having now reviewed the parties' supplemental letter briefs . . . in which Defendants ask the Court to reconsider its March 2, 2021 Order . . . , hereby notes as follows: . . …
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Delaware Jury Trials: Have They Finally Arrived?

David M. Fry, April 23, 2021
COVID-19 Trial Calendar

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Since our last update, one of the jury trials set for May has been postponed indefinitely (Johnson-Krumm v. City of Seaford), and it appears from the public docket that trial never went forward in JHL Pharmaceuticals, LLC v. PuraCap Laboratories, LLC.

But there is light at the end of the tunnel, as two cases in front of Judge Andrews appear to be headed for jury trials in the next month.

The first, USA v. Blue, is set to begin on Monday morning. As we've written before, the court is currently equipped to hold only one jury trial at a time, and Judge Andrews has designated …

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Indefiniteness Is in the Eye of the Beholder

Jeff Castellano, April 20, 2021
Indefiniteness Claim Construction

In a summary judgment opinion issued on April 20, Judge Connolly found claims of two patents indefinite because they included a limitation directed to applying a composition "in an amount effective to enhance the condition of the skin." Judge Connolly reasoned that whether he applied the plain meaning of the term or the meaning ascribed to the term by the specification, "the determination of whether a person's skin is enhanced provides a paradigmatic example of indefiniteness." As he pointed out, "Beauty . . . is 'in the eyes of the beholder.'"

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