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Four+ Page Long Notice of Subsequent Authority Proves Effective

Andrew E. Russell, May 20, 2021
LR 7.1.2 Supplemental Pleading

In Delaware, Local Rule 7.1.2(b) sets deadlines for responding to motions, and states that

Except for the citation of subsequent authorities, no additional papers [other than the opening, answering, and reply briefs] shall be filed absent Court approval.

Based on this rule, parties file "notices of subsequent authorities" to present after-arising citations (and sometimes other content) to the Court.

But some attorneys disagree about just how much argument can accompany the "citation[s]" a notice of subsequent authority. The authority is mixed.

In some cases, the Court has declined to consider notices containing argument that are filed without leave. See, e.g., Forest Labs., Inc. v. Amneal Pharm. LLC, C.A. No. 14-508-LPS, 2015 U.S. Dist. LEXIS 23215, at *51 …

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Judge Noreika Points Out Nuance in O2 Micro, Declines to Construe Term

Andrew E. Russell, May 17, 2021
Plain Meaning Claim Construction

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …
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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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Judge Noreika's Construction Limits, Revisited

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

danist-8Gg2Ne_uTcM-unsplash.jpg
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 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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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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Prior Expert Testimony from IPR Inadmissible in District Court Action

Andrew E. Russell, April 19, 2021
Trial Motion in Limine

Arrows on Sign
Adrià Tormo, Unsplash

In another ruling from the In Re ChanBond litigation as it approaches trial, Judge Andrews today issued an in-depth opinion granting a motion in limine to exclude reference to prior expert testimony from a related IPR proceeding, on the grounds that the testimony is hearsay.

Plaintiff sought to admit the material as former testimony under FRE 804(b)(1), because it is helpful to its infringement case. The rule requires, however, that the former testimony was offered against the parties' predecessor who had "an opportunity and similar motive to develop it."

Here, Judge Andrews found that an IPR petitioner's motive in developing expert testimony to show invalidity is different from a defendant's motive developing its non-infringement position:

I …
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D. Del. Permits FRAND Antitrust Claim to Proceed

Andrew E. Russell, March 26, 2021
MTD FRAND

A different kind of Sherman
A different kind of Sherman Sherman Tank at Clervaux Castle, Luxembourg, R Boed, CC BY 2.0

This week, Chief Judge Stark ruled on a motion to dismiss a FRAND-related antitrust claim brought by Lenovo against InterDigital relating to 3G/4G phone standards.

According to the Court, InterDigital contracted with the European Telecommunications Standards Institute (ETSI) to license its patents at FRAND rates, and its patents were incorporated into the 3G/4G standards. The ETSI requires patentees to license their patents at FRAND rates to avoid anti-trust concerns.

Lenovo's antitrust claims allege that InterDigital, by demanding higher-than-FRAND rates, has obtained an unlawful monopoly power over the 3G/4G standards. Lenovo also alleges that InterDigital defrauded ETSI during the standards development process:

Lenovo allege[s] …
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Final Score Card for the March 12th § 101 Day Hearing

Andrew E. Russell, March 22, 2021
§ 101 Days § 101

On Friday, Chief Judge Stark released his opinion summarizing his bench rulings from his most recent Section 101 day. This is how the patents fared:

Content Square v. Quantum Metric, Inc., C.A. No. 20-832-LPS (D. Del.)

In the first case, Content Square, the Court invalidated the claims of 2 of the 5 asserted patents.

Not this kind of web crawling.
Not this kind of web crawling. Michael Anfang, Unsplash

The invalidated patents related to "heat map patents," which relate to displaying heat maps of web browsing data. These include U.S. Patent Nos. 10,063,645 and 10,079,737.

The third patent, which was not invalidated, related to "creating multiple versions of a website to determine users' preferences." Interestingly, the Court held …

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