A Blog About Intellectual Property Litigation and the District of Delaware


IP
Intellectual Property

Expert's On-the-Stand Admission That He Changed Opinion after Speaking to Attorneys, Resulting in $444,000+ in Fees, Insufficient to Render Case Exceptional

Andrew E. Russell, July 26, 2021
§ 285 Trial

"Oh god. What did our expert just say?" Jamie Haughton, Unsplash

More and more NPE cases have moved to Delaware over the last few years, following TC Heartland. Defendants often try to deal with NPE cases by threatening fees under 35 U.S.C. § 285, with varying degrees of success.

A § 285 fees opinion today by Judge Stark offers an interesting data point as to what kind of conduct is not sufficient to render a case as a whole exceptional under § 285, as well as a lesson on how to best to pursue a fees motion.

In Intellectual Ventures I LLC v. Trend Micro Inc., C.A. No. 12-1581-LPS (D. Del.), the patentee's …

View

Court Refuses to Allow Expert to Evade Adverse Construction Via Doctrine of Equivalents

Andrew E. Russell, July 21, 2021
DOE Daubert

Yesterday, visiting Judge Bataillon excluded a patentee's expert opinion where the expert tried to use the doctrine of equivalents to skirt the Court's construction of a term.

The Court had initially rejected a preliminary injunction motion by the patentee, holding that it had failed to show a likelihood of success on infringement based on its proposed claim construction.

The patentee then proposed the same construction during claim construction before the magistrate judge, who issued an R&R rejecting it.

The patentee then objected to the R&R, but the Court adopted the construction in the R&R and again rejected the patentee's proposed construction.

Specifically, the Court held that the claims required two elements that each have a different thickness and composition: …

View

Judge Noreika Sanctions Patentee for Mistreating Source Code

Andrew E. Russell, July 13, 2021
Source Code Protective Order

Fire. I couldn't find an image of raining brimstone.
Fire. I couldn't find an image of raining brimstone. Ricardo Gomez Angel, Unsplash

On Monday, Judge Noreika sanctioned a patentee plaintiff for not following the protective order regarding source code.

Here is what the plaintiff did:

Plaintiff violated the Protective Order at least six times over a period of almost one year by: 1) creating an electronic copy of the source code on July 6, 2020; 2) sending that electronic copy to a vendor that had not signed the Acknowledgement and Agreement to Be Bound by Stipulated Protective Order (which actually violated two provisions of the Protective Order); 3) failing to maintain a log of all copies; 4) storing an electronic and apparently unencrypted copy of the source code …
View

Some Notable Points from Magistrate Judge Hall's § 101 Denial in RSDI v. Lyft

Andrew E. Russell, July 12, 2021
§ 101 Days 12(b)(6)

Ridesharing
Brecht Denil, Unsplash

Magistrate Judge Hall issued a § 101 R&R today in Rideshare Displays, Inc. v. Lyft, Inc., C.A. No. 20-1629-RGA-JLH (D. Del.), recommending denial of defendant Lyft's motion to dismiss based on § 101.

The Court found that the patent was not directed to an abstract idea—though it noted that it was a close call—and that, regardless, the invention contained an inventive concept under Step 2 of Alice.

We've all read about dozens (or more) of § 101 opinions over the last few years, but here are a few points of interest from Judge Hall's opinion:

  • Judge Hall closely examined the representativeness of the alleged representative claim, and rejected it as unrepresentative. Choose …
View

Chief Judge Stark Delivers Update on D. Del., Passes Chief Judgship to Judge Connolly

Andrew E. Russell, June 29, 2021
FBA Court Announcement

Annual Report 2021
District of Delaware

The Delaware FBA held its annual meeting virtually today. It included really wonderful speeches by the judges, passing along the Chief Judge gavel in both the district court and the bankruptcy court.

The FBA also did a great job presenting the event via Zoom (did anyone else clap while sitting alone in their offices, or was it just me?!).

I won’t try to summarize everything that was said, consistent with our ongoing attempts—and failures—to keep our posts short. But here are some quick highlights that may be particularly relevant to IP/DE readers:

  • Chief Judge Stark passed the gavel of Chief Judge to Judge Connolly, who will be new Chief Judge following the end of Judge Stark’s term …
View

Can a Party Redact "Irrelevant" Information from Relevant Documents in Discovery, on the Basis That It Is a Trade Secret?

Andrew E. Russell, June 28, 2021
Protective Order LR 26.2

Secret
"SECRET" stamp, RestrictedData, CC BY 2.0

The parties in Progressive Sterilization, LLC v. Turbett Surgical LLC, C.A. No. 19-637 (D. Del.) brought a dispute about "excessive" redactions to certain production in their patent action.

The defendant sought information from third parties who were under contract with the plaintiff, including various consultants and a former business partner.

Plaintiff apparently has confidentiality agreements with these people, and tried to filter their document production in the case, redacting information it thought should not be produced to the defendant. According to defendant's letter brief:

[Plaintiff] insisted on reviewing [the] third-party subpoena recipients’ responsive documents and redacting certain non-privileged content . . . prior to their production to Defendants

According …

View

Judge Hall Denies Attorneys' Fees, Rejects Argument That ANDA Suit Triggering 30-Month Stay Was Unreasonable

Andrew E. Russell, June 23, 2021
ANDA 30-Month Stay

Pills
HalGatewood.com, Unsplash

Judge Hall today issued an R&R on attorneys fees in In Re Kerydin (Tavaborole) Topical Solution 5% Patent Litigation, MDL No. 19-md-2884-RGA (D. Del. June 23, 2021), an ANDA case.

There, the plaintiff filed suit on four patents even though the PTAB had previously found an earlier patent in the family invalid in an IPR, and even though IPRs were pending on each of the four patents-in-suit.

Filing suit triggered the 30-month stay of FDA approval. Shortly after the suit was filed, one of the defendants moved to stay; plaintiff did not oppose, and actually filed a cross-motion to stay its own action against the other defendants (who opposed).

The Court granted the …

View

Update on Judge Andrews' Order to File Settlement Agreements to Determine Damages After Default

Andrew E. Russell, June 22, 2021
Damages Settlement Agreements

Last month we wrote about Judge Andrews' order that a plaintiff who won a default judgment against Aston Martin, LLC must file any settlement agreements from seven other patent suits, in order to help the Court determine the proper damages award.

Plaintiff has now responded.

We wondered in our last post whether the Court would permit plaintiff to file under seal. The answer is yes: the Court found the following short paragraph from the briefing to be sufficient to permit filing the settlement agreements and settlement amounts under seal:

Good cause exists to seal these Settlement and License Agreements. The Agreements contain confidentiality clauses such that if the documents were not filed under seal, Plaintiff might be in breach …
View

Can a Defendant's Own Patents Support an Allegation of Infringement of a Plaintiff's Patent? Yes, per Judge Bibas.

Andrew E. Russell, June 21, 2021
FRCP 12 MTD

I wonder how many actual schoolbooks use the
I wonder how many actual schoolbooks use the "Century Schoolbook" font? Hope House Press - Leather Diary Studio, Unsplash

As we mentioned in our last post, Judge Bibas of the Third Circuit has taken two D. Del. patent cases by designation, along with a number of other cases.

I've seen a number of his opinions in other cases come through over the course of the year. They are easy to identify, as his writing style differs from any other judge we've had, in a way that is interesting to see.

One particularly notable opinion of his issued back in March, and apparently slipped our notice at the time. In it, he denies an FRCP 12(b)(6) motion, holding that a defendant's own patents can serve as circumstantial evidence that its products practice the claims, if those patents describe an infringing configuration. ...

View

Court Declines to Hold Defendant to Claim Construction Position Taken in Uninstituted IPR Petition Absent Bad Faith

Andrew E. Russell, May 21, 2021
Judicial Estoppel IPR

Yesterday, Chief Judge Stark addressed whether "judicial estoppel" prevents a defendant from taking one position in an uninstituted IPR petition and asserting a contradictory position during claim construction in the district court:

[Plaintiff] Sequoia contends that [defendant] Red Hat is judicially estopped from arguing for a narrower construction than it proposed during the IPR . . . . Judicial estoppel is only appropriate when: (1) the party to be estopped is asserting a position that is irreconcilably inconsistent with one she previously asserted; (2) the party changed her position in bad faith, i.e., with an intent to play fast and loose with the court, and (3) the use of judicial estoppel is tailored to address the affront to the …
View
Newer
Older

Archive