A Blog About Intellectual Property Litigation and the District of Delaware


GBW
The Honorable Gregory B. Williams

Not this kind of
Not this kind of "virtual" Lucrezia Carnelos, Unsplash

Yesterday, in Datacore Software Corp. v. Scale Computing, Inc., C.A. No. 22-535-GBW (D. Del. June 21, 2024), the Court issued fascinating opinion rejecting an indefiniteness argument for apparatus and method claims that included an "intent" requirement.

The claims at issue relate to allocating drive space on computer disks. The patentee explained in the specification that the system involves defining multiple virtual disks that can, collectively, be larger than the actual physical space available (e.g., in a sense, they overlap):

One advantage of the present invention is that the physical storage devices that are placed into a storage pool do not need to add up to the size of …

"Did . . . did he just end our case with deposition testimony? Ah, I'm sure it will be fine." AI-Generated, displayed with permission

The Court unsealed a memorandum order yesterday in Sensormatic Electronics, LLC v. Genetec (USA) Inc., C.A. No. 20-760-GBW (D. Del. Mar. 27, 2024), where Judge Williams found a patent case exceptional, and awarded fees against the patentee plaintiff.

The Court previously held that one of the asserted patents, the '652 patent, was invalid because it was offered for sale after it was reduced to practice and more than a year before when the inventor applied for a patent.

In this order, the core cause of the exceptional case finding was that, after a …

Still thinking about my plums! It's the season baby!
Still thinking about my plums! It's the season baby! Svitlana, Unsplash

Its easy to forget about prejudgment interest. You only need to address after the trial is over when you're putting together the final judgment, but the seeds of victory or defeat are oft planted in the fertile loam of pretrial submissions and expert reports.

Case in point, Judge Williams' decision this week in Board of Regents, the Univ. of Texas Sys. v. Boston Sci. Corp., C.A. No. 18-392-GBW (D. Del. June 5, 2024) (Mem. Op.). At trial, the plaintiff prevailed on all counts and the Jury awarded a verdict of $42,000,000.

Here's the form:

Court

You'll notice the verdict says nothing about whether the royalty …

The intersection of patent and anti-trust law is tricky. Like, Boston intersection tricky.

"It used to be a cow-path that avoided a snakepit, but now we let cars use it!" Leon Bredella, Unsplash

Judge Williams had an interesting opinion on the issue last week in Jazz Pharms., Inc. v. Avadel CNS Pharms., LLC, C.A. No. 22-941 (D. Del. May 24, 2024), ruling on a motion to dismiss various antitrust counterclaims. In this ANDA case, Jazz sued Avadel for infringing one of its Orange Book patents. Avadel, however, successfully moved the Court to de-list that patent from the Orange Book grounds that it did not claim a method of use (it was instead directed to a risk mitigation …

Defendants are often (but not always) the ones who just happen to want to move a trial back.
Defendants are often (but not always) the ones who just happen to want to move a trial back. AI-Generated

Trial dates in Delaware generally tend to stick, with certain exceptions (e.g., parties moving to extend the schedule, particularly the dispositive motion deadlines).

We saw an example of that this week in International Business Machines Corporation v. Zynga, Inc., C.A. No. 22-590-GWB (D. Del.). There, the defendant tried to delay trial based on schedule issues, an O2 Micro issue, and to permit expert report supplementation based on potential new evidence. The Court didn't go for it:

ORAL ORDER: The Court has reviewed the parties' letters regarding the trial schedule (D.I. 445, 449, 450). Zynga's request to alter the …

Section 101 Motions are common as dirt, and as likely to be trod under the judicial foot (although the last time we checked they had a decent win rate in Delaware).

You lose at least as often as you win, and even if you win there's a fair chance the patentee will get a chance to amend to add in new facts relevant to the analysis -- particularly as to step two's conventionality/inventiveness inquiry.

This weeks decision from Judge Williams in Dish Techs. LLC v. FuboTV Media Inc., C.A. No. 23-986 (D. Del. May 21, 2024), shows us an intriguing third way.

A most unusual posture . . .
A most unusual posture . . . AI-Generated, displayed with permission

The complaint listed just a bare handful of claims and the Defendant, Fubo, moved to dismiss under 101. The parties fully briefed the motion, and there was even an oral argument before Judge Williams. Judge Williams is historically a bit more likely than most to grant a 101 motion, so perhaps the plaintiff was feeling the heat after that hearing.

So, rather than wait to see how it all panned out, the plaintiff preemptively moved to amend the complaint both to specify more asserted claims, and to add in some allegations about how inventive and unconventional it all was. Fubo called foul (#sportspun) arguing that the proper time to move to amend was before the parties and the Court went to all this trouble, especially when plaintiffs had all the relevant information beforehand and had previously litigated these patents.

Judge Williams, although noting that the request was late, granted the motion to amend:

[T]he Court finds that Dish delayed in seeking leave to amend to assert new allegations for the subset of allegations that are based on facts that Dish knew, or should have known, as of the filing date of the original complaint.
The Court also finds, however, that Dish's delay in seeking leave to amend its complaint to include those allegations was not "undue." When the Court dismisses without prejudice a party's complaint for pleading deficiencies, that party can attempt to re-plead by adding additional factual allegations. Because "delay alone is generally an insufficient reason to deny leave to amend," that party has some leeway in attempting to re-plead by asserting facts that they knew, or should have known, as of the filing date of the initial complaint.

Id. at 5-6 (internal citations omitted)

The court then addressed futility under the usual Rule 15 standard and allowed the amended pleading. More interestingly, the Court addressed the obvious question of ...

There are a few words I dread seeing in an order. Some are obvious—"egregious," "sanctions," "nonsensical," "balding," etc. Others I only learned to fear after seeing them used in an opinion—"valiant," "sporting," "leakage" (don't ask).

In an opinion issued over the blog's break, Judge Williams gave new fuel to the pyre of woe that is my subconscious, and added a new word to my list: IRONY

Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly.
Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly. Filip Mroz, Unsplash

Even without the irony, Chervon (HK) Ltd. v. One World Techs., Inc., C.A. No 19-1293-GBW, D.I. 394 (D. Del. Mar. 26, 2024) was an unusually interesting discovery dispute. In that case, the parties agreed to a case narrowing procedure wherein, after final contentions, the defendant was to elect no more than 3 grounds per asserted claim. When the defendant served that election, plaintiff complained that it included grounds that were not charted in the final contentions. In an apparent attempt to moot the issue, the defendant then served (without seeking leave) new contentions that did chart all of the elected grounds. The plaintiff then moved to strike the portions of the election not previously charted and the new contentions in their entirety.

Judge Williams granted that motion, striking most of the elected grounds and all of the new contentions, in particular noting that the defendant had not sought leave to serve them. Unfortunately this left the defendant without any elected grounds for several claims, and so they served a new election of asserted grounds including only grounds which were charted in the original, unstruck contentions (with a bit of a fudge factor). Shortly after service they moved for leave to submit the new contentions, and plaintiff cross-moved to strike them.

Which is where we get to the IRONY of it all ...

Scanning a Network Printer
AI-Generated, displayed with permission

In some ways, the title says it all—but here is a bit more detail. In Throughtek Co., Ltx v. Reolink Innovation Inc., C.A. No. 23-218-GBW-SRF, D.I. 60 (D. Del. Apr. 19, 2024), the patent at issue claimed a system for identifying a networked device in order to establish a connection to it, by scanning a bar code or other image patter on the device.

The defendant moved to dismiss under § 101, arguing that the patent was directed to an abstract idea.

Judge Fallon issued an R&R holding that using the bar code for the connection information solved a problem necessarily rooted in computer technology, and was a specific improvement to computer …

I love a 1782 Application. It's like watching a foreign film -- you get to learn all these neat little tidbits about other countries and ponder what it might be like to live and die as a Moldovan Lawyer.

Huh, everyone wears hats here
Huh, everyone wears hats here AI-Generated, displayed with permission

Judge Williams decided one such application related to a suit in that most exotic of locations - Germany.

The applicant in In Re Ex Parte Application of Nokia Techs., C.A. No. 23-1395-GBW (D. Del. Apr. 18, 2024) (Mem. Order) was seeking source code and other docs from a little mom and pop shop called Amazon, for use in pending and contemplated German infringement proceedings.

The Court denied the request …

Goodbye, inconvenient 30(b)(6) testimony
Goodbye, inconvenient 30(b)(6) testimony AI-Generated, displayed with permission

FRCP 30(b)(6) allows a party to notice the deposition of a corporation or other organization on a list of topics. That organization then presents one or more designees to testify on its behalf at deposition. The designee's testimony is treated as that of the corporation.

At trial, it's not unusual for a party to want to play the 30(b)(6) deposition testimony of an opposing party, even if the designee who gave the testimony also happens to be testifying as a fact witness.

Why? Because, often times, the party got exactly what they wanted out of the 30(b)(6) witness on some topic, and if they play the video they can be assured that …