A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Does Filing an Amended Complaint Moot Your Preliminary Injunction Motion?

Andrew E. Russell, May 14, 2021
Motion to Stay Preliminary Injunction

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David Clode, Unsplash

In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.

Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.

Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.

After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …

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Correction: Judge Connolly Does NOT Permit Formal Argument on Indefiniteness at Markman

Andrew E. Russell, May 13, 2021
Corrections IPDE

Last month, we took a look at how the different judges handle indefiniteness at Markman, a question that comes up a lot.

We reported that every judge will hear argument about indefiniteness issues at Markman. But in the Judge Connolly specific section, we noted that he has never held a term indefinite in a Markman opinion, and has instead deferred ruling on the issue until summary judgment (citing two examples). See the full post for details.

Yesterday, at a hearing, Judge Connolly mentioned a blog post and stated that the post was incorrect in suggesting that he considers indefiniteness at Markman. He clarified that he does not permit indefiniteness argument at Markman. Instead, he might entertain early …

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Can You Depose Claim Construction Experts in Delaware?

David M. Fry, May 12, 2021
Claim Construction

By and large, the view from the bench is that expert testimony provides little value in the claim construction process. It's litigation-driven extrinsic evidence, and it often plays no role in the court's final analysis. But if you choose to rely on an expert during claim construction, will you have to make them available for deposition?

Judge Stark answered this question on Friday with a resounding yes. After reiterating the general view that "[e]xpert opinions and declarations constitute extrinsic evidence . . . and are at times unhelpful," he confirmed that:

a party asking the Court to rely on such extrinsic evidence should expect to make its expert(s) available for deposition prior to a claim construction hearing, should …
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Judge Connolly Tosses Damages Opinion Based on CEO's Testimony

Jeff Castellano, May 11, 2021
Damages Lanham Act

In a recent Daubert ruling in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662-CFC-CJB, Judge Connolly excluded the opinion of the plaintiff's expert regarding "corrective advertising damages," in part because it was based on "vague, undocumented, and back-of-the-envelope . . . estimates" by the plaintiff's CEO. The Judge granted the defendant's motion to exclude the expert's testimony under both Rule 702 and Rule 403, indicating that not only did the expert's opinion fail to satisfy the Daubert hallmarks for admissible expert testimony, it would also confuse the jury and be prejudicial because it "would essentially place the imprimatur of an expert on [the CEO] Maag's undocumented and dubious damages calculation."

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Judge Andrews Rejects Theory that Prior Expert Testimony Was a Party Admission

Andrew E. Russell, May 10, 2021
Motion in Limine MIL

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …
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Judge Noreika's Construction Limits, Revisited

Nathan R. Hoeschen, May 6, 2021
Markman Briefing 10 Terms

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Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

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Judge Andrews Again Rejects Stealth Bid for Interlocutory Appeal

Jeff Castellano, May 4, 2021
Final Judgment Interlocutory Appeal

We wrote previously about Judge Andrews' rejection of a proposed stipulation "that dismisses three patents without prejudice so the other two can be appealed," which he said was "just allowing for what is essentially an interlocutory appeal." At that time, he asked the parties to "submit something, jointly or separately, . . . explaining why I should approve the stipulation as is, or, if the other three patents are just fluff, why the three shouldn’t be dismissed with prejudice."

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC, C.A. No. 19-2157-RGA took Judge Andrews up on his invitation: Both sides submitted letters in support of their stipulation and proposed judgment, but yesterday Judge Andrews confirmed his earlier view that the proposed judgment was an impermissible bid for an interlocutory appeal, and he declined to enter it.

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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.

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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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