We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.
But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.
Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.
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 …
Earlier this year Judge Hall bifurcated the upcoming patent trial in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.), keeping Apple's patent claims, the related invalidity and unenforceability defenses, and a portion of a Walker Process anti-trust counterclaim—but moving other claims to a later trial:
ORAL ORDER: Having held a case management conference on March 20, 2024, . . . IT IS HEREBY ORDERED that a 5-day jury trial is scheduled beginning October 21, 2024, with a pretrial conference scheduled for October 4, 2024 at 11:00 AM in courtroom 6D. The remaining claims and defenses in C.A. No. 22-1377 and C.A. No. 22-1378 shall be joined and/or bifurcated for trial such …
Visiting Judge Murphy decided a stay motion in a patent action yesterday, and included language that could be helpful to any patent plaintiffs who are opposing an early stay.
In Ignite Enterprise Software Solutions, LLC v. NGData, US Inc., C.A. No. 23-1209 (D. Del.), the defendant moved for a 30-day stay after its lead counsel suffered a head injury in a car accident.
The Court moved shockingly fast (for a busy Court), requesting that the plaintiff respond within two days, and then ruling on the motion the same day the plaintiff responded—just two days after the initial paper.
The Court denied the stay due to prejudice to the patentee:
"Your honor, we'd like to drop most of our claims." "Ok, but you're not picking them back up."AI-Generated, displayed with permission
True D. Del. patent litigators know that, no matter which side you're on, you're going to have to narrow your claims and defenses before trial. It's just unwise and unworkable to go into a five-day trial with 100 claims, or with 30 prior art references and hundreds (or millions) of potential obviousness combinations. There isn't time to cover it all.
That said, sometimes the parties in patent cases delay case narrowing for a long time. And while the Court will often narrowing, it doesn't do that in every case. Instead, judges sometimes take the approach that …
AI refuses to draw a judge without an old-school judicial wig. This is the best I could do.AI-Generated, displayed with permission
Chief Judge Connolly held a second Mavexar-related hearing yesterday, this time in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del.). This was after the one in the Backertop action that we just posted about.
Chief Judge Connolly questioned both the out-of-town attorney who represented Swirlate as lead counsel in the action, and the sole member of the Swirlate NPE
The Court addressed several topics with the attorney, including:
Gaps and redactions in the court-ordered document production, which was supposed to include communications with his client.
"A POSITA would be motivated to combine cocktail sauce and raspberry jam, as both are red-colored foodstuffs safe for human consumption that come in glass containers with metal, screw-on lids."AI-Generated, displayed with permission
Judge Andrews issued a lengthy summary judgment and Daubert opinion on Thurday in Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA (D. Del.). The opinion hits multiple interesting issues, and we may have a couple of posts on it this week.
But the one ruling that jumped out to me was the Court's rejection of the fairly typical, low-effort motivation-to-combine language that many experts rely on in their obviousness opinions.
Motivation to combine is often an afterthought. I've seen many initial contentions that address it only in a short paragraph that basically just lists characteristics of each reference (same field, same problem, etc.). Expert reports sometimes uncritically adopt paragraphs like that no elaboration.
If you've ever been involved in reading or writing invalidity contentions, you've probably seen motivation-to-combine paragraphs just like this one, from Thursday's opinion:
As those charts show, [the first reference] ATT Maxemchuk builds upon [the second reference] ’882 Maxemchuk and informs a POSITA of additional details related to ’882 Maxemchuk’s grid-based mesh network. A POSITA would be motivated to combine these references for several reasons. Both references are in the network architecture field and are directed to improving mesh networks. Both teach the simplification of routing of data that arises from the grid-based mesh network. And both disclose the same grid-based mesh network. In addition, ATT Maxemchuk includes additional implementation details for the grid-based mesh network that ’882 Maxemchuk describes.
The paragraph gives just four one-sentence reasons for its statement that a person of skill in the art would combine the references. Three of the reasons are about general similarities between the references.
The fourth sentence is a bit more helpful, and says that the first reference provides "additional implementation details" for part of the second reference.
The Court found that this paragraph—which the parties agreed was representative—simply could not provide support for a motivation to combine the references. The Court granted summary judgment of no obviousness:
Mr. Greene “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” . . . His opinion does nothing more than explain why the prior art references are analogous to each other and to the claimed invention. . . . Plaintiff’s “assertions that the references were analogous art, . . . without more, is an insufficient articulation for motivation to combine.” . . .
As Defendant’s invalidity contentions rely on Mr. Greene’s testimony, Mr. Greene’s failure to opine on a POSA’s motivation to combine the asserted prior art references proves fatal to Defendant’s obviousness theory. I grant summary judgment of nonobviousness as to all asserted obviousness defenses.
Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA, at 37-38 (D. Del. Sept. 12, 2024).
A perennial question in disputes about late disclosures is whether the demandingFRCP 16 "good cause" standard applies, which hinges on diligence, or whether the more forgivingPennypack factors apply.
When it comes to case narrowing, there seems to be a building trend that the good cause standard applies, not the Pennypack factors. We've seen that multipletimes when it comes to a plaintiff's decision to drop claims, and on Wednesday, Judge Burke issued a detailed opinion finding that good cause is likewise required to revise a defendant's election of prior art references.
In State Farm Mutual Automobile v. Amazon.com, Inc., C.A. No. 22-1447-CJB (D. Del.), the Court ordered the defendant to cut …
"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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