A Blog About Intellectual Property Litigation and the District of Delaware


GBW
The Honorable Gregory B. Williams

Court Awards Fees after Patentee Has No Validity Defenses in Competitor Case

Andrew E. Russell, Oct. 7, 2024
Fees Fee Awards

One of these guys forgot to come armed.
One of these guys forgot to come armed. AI-Generated, displayed with permission

Attorneys spend a lot of time threatening fee awards when dealing with an NPE, even though they can be challenging to get. So I always think it's interesting to see what kinds of behavior will support a fee award.

Last week, Judge Williams issued a memorandum order granting fees in Extremity Medical, LLC v. Nextremity Solutions, LLC, C.A. No. 22-239-GBW (D. Del.). The Court listed three bases for its fee award. First, the patentee made zero showing of any pre-suit investigation of invalidity:

[T]here is no dispute that Defendants notified Plaintiff of [prior art references] Marcus and Chandran several years prior to the date …
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Court Denies Production of Corporate-Level Financials

Andrew E. Russell, Sept. 9, 2024
Discovery Dispute Discovery

"Yes, we need to know their financials for our permanent injunction. It totally won't help us in settlement negotiations or anything." AI-Generated, displayed with permission

This is another one where I saw a potentially useful order about an issue that comes up from time to time, and thought "I should write a blog post about that, so I can find it later." I hope this will be helpful for others as well.

Last week in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), the Court addressed the question of whether a plaintiff in a "competitor-competitor" patent case could compel production of the defendant's corporate-level financials. It held that no, it could not, …

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Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
O2 Micro Waiver

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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Court Holds That Using Prior Art That Was Considered in Post-Grant Proceedings "Opens the Door" for Patentee to Put Evidence of Those Proceedings Before the Jury

Andrew E. Russell, Sept. 4, 2024
Trial Procedure Motion in Limine

When the Court says
When the Court says "unless they open the door," typically you'd want to stay far away from that door. AI-Generated, displayed with permission

There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.

Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …

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Court Awards Fees After Patentee Asserts Invalid Claims, Flubs § 101 Briefing

Andrew E. Russell, Aug. 21, 2024
Exceptional Case Finding § 285

Money—Exactly the thing that this accused infringer may not actually wind up collecting
Money—Exactly the thing that this accused infringer may not actually wind up collecting Giorgio Trovato, Unsplash

We're back! During our brief intermission, the Court issued an exceptional case finding in Wireless Discovery LLC v. eHarmony, Inc., C.A. No. 22-480-GBW (D. Del.), and awarded fees.

I always like reading these opinions both (1) as a guide on what not to do and (2) to figure out how to better threaten NPEs with the risk of fee awards. I'm not sure this one is going to be particularly helpful in those regards, because there were some exceptional facts.

First, the patentee filed a patent that asserted previously invalidated claims. Worse, after the accused infringer called them …

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There's No 403 In Bench-Trial-Ball!

Nathan R. Hoeschen, July 23, 2024
Bench Trial 403

A short post today to flag another interesting aspect of Judge Williams' opinion in Upsher-Smith Laboratories, LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW (D. Del. July 18, 2024) which Andrew wrote about last week.

Pictured: me, stealing Andrew's leftovers
Pictured: me, stealing Andrew's leftovers Oskar Holm, Unsplash

The Plaintiff there moved in limine to preclude the defendants' expert from testifying under rule 403 (and most other rules of evidence). The only problem was that this was a bench trial, where 403 is something of an awkward fit, as noted by Judge Williams in denying the motion:

While Rule 403 permits the Court to exclude relevant evidence if its relevance is outweighed by the potential for "unfair prejudice, confusing the …
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"You Can't Use Privilege as a Sword and a Shield" Is No Joke

Andrew E. Russell, July 19, 2024
Privilege Sword and Shield

An AI rendering of an object that is both a sword and a shield. I can't argue with it.
An AI rendering of an object that is both a sword and a shield. I can't argue with it. AI-Generated, displayed with permission

There are certain exclusion arguments that stand out as tending to work more often than others—things like a Rule 702 motion for failure to apportion, a motion to exclude a Doctrine of Equivalents argument offered for the first time in a reply expert report, or a motion to exclude an exhibit not on the exhibit list. It's not that they win every single time, but parties often seem to have an uphill battle against them.

Another argument on that list is "using privilege as a sword and a shield." It's not uncommon for a party to get …

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Court OK's Intent Requirement in Apparatus Claim; Holds that Intent Means the Designer's Intent, Not the User's

Andrew E. Russell, June 22, 2024
Indefiniteness Claim Construction

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 …
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Court Finds Case Exceptional, Awards Fees Against Plaintiff

Andrew E. Russell, June 10, 2024
Exceptional Case Finding § 285

"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 …

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Zone Of Interest

Nathan R. Hoeschen, June 6, 2024
Prejudgment Interest

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 …

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