A Blog About Intellectual Property Litigation and the District of Delaware


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Intellectual Property

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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Judge Andrews: Claim Not Indefinite, Despite Possible Drafting Error

Andrew E. Russell, March 15, 2021
Indefiniteness Claim Construction

A nautilus. It's nice when significant cases have memorable names.
A nautilus. It's nice when significant cases have memorable names. Shawn Low, Unsplash

Claim construction opinions tend to be highly fact-specific, so even though they can be critically important to the parties in a case, we don't always post about them on this blog.

Judge Andrews issued an interesting claim construction opinion today, however, which addressed indefiniteness due to a potential drafting error in a claim.

The opinion involved claim language for a mechanical device:

. . . wherein the . . . assembly comprises a housing comprising the syringe and the stirring motor . . .

Defendants argued indefiniteness in light of the dual use of "comprising," because a person of skill in the art cannot determine a …

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Initial Contentions in Delaware Patent Cases: A Primer

Jeff Castellano, Feb. 23, 2021
Default Standard KB

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.

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Chief Judge Stark Suggests Requirement for Copyright Infringement Contentions, Similar to Patent Infringement Contentions

Andrew E. Russell, Feb. 12, 2021
Infringement Contentions Copyright

Books
Alfons Morales, Unsplash

In May 2020, West Publishing and Thomson Reuters filed a copyright action against ROSS Intelligence LLC, alleging that ROSS (through a third party) scraped content from WestLaw to start its own Artificial-Intelligence-based legal research platform. (ROSS has since ceased operations but persists solely to litigate this case.)

Down the line, I imagine the case may raise some interesting questions about AI and copyright. For example, what are the copyright implications of ROSS's use of Westlaw's copyrighted compilation of otherwise public domain materials to train an AI? Isn't that fair use (talk about transformative!)? If not, what are the damages? And so on.

For now, ROSS has moved to dismiss on the ground that West failed to …

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Another Day, Another Doctrine of Equivalents Argument Excluded

Andrew E. Russell, Feb. 1, 2021
Contentions Expert Discovery

Even when plaintiffs know of the potential weak spots in their infringement cases, they sometimes fail to address DOE until too late, or they offer a DOE analysis so weak that it gets excluded or wiped out by summary judgment.

That's what happened last week, when Chief Judge Stark struck a DOE opinion after a plaintiff tried to squeak by on the idea that its late DOE argument should be permitted because it never affirmatively disclaimed DOE:

Arendi's passing reference to DOE in its complaints followed by its lack of affirmative disclaimer of DOE theories (see, e.g., C.A. No. 12−1595 D.I. 238 at 5) ("Arendi has never asserted that its claims were limited to literal infringement") does …
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District of Delaware Issues New Guidance on "Highly Sensitive Information"; Should Not Impact Typical IP Cases

Andrew E. Russell, Jan. 29, 2021
Sealing Standing Orders

Lock Boxes
Tim Evans, Unsplash

The District of Delaware today issued guidance on the submission of "highly sensitive documents" today, following the recent breaches of government computer systems by malicious intruders. Similar orders have been issued across the country.

The procedures indicate that parties must file a motion for a document to be treated as including highly sensitive information, and the motion must be granted before the procedures are used. Once granted, the documents must be submitted in paper or via a secure drive.

Luckily, these new procedures address only a sub-category of sealed information, and do not impact current procedures other than for documents with highly sensitive information. Highly sensitive information is defined as follows:

HSI generally refers …
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Judge Stark Resolves Pretrial Disputes About Courtroom Sealing, Cross Exhibits

Jeff Castellano, Jan. 26, 2021
ANDA Trial Procedure

Somewhere between the filing of the pretrial order and the pretrial conference, Judge Stark typically issues an order resolving pretrial disputes and allocating trial time. These orders - while usually short - provide a wealth of insight into his trial practices and preferences, and (often) his views on substantive evidentiary issues. They also serve to remind litigants of longstanding trial management practices (including those codified in his form pretrial order).

On Friday, Judge Stark issued a 3-page pretrial memorandum order in a set of consolidated Hatch-Waxman ("ANDA") actions, Silvergate Pharmaceuticals, Inc. v. Bionpharma, Inc. et al., C.A. Nos. 18-1962, 19-1067, 19-678. The order contained decisions on sealing the courtroom during the bench trial, obviousness proofs, disclosure of exhibits to be used on cross examination, and others.

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Judge Andrews Strikes Two-Reference Anticipation Opinion

Andrew E. Russell, Jan. 22, 2021
Anticipation Litigation

When one prior art reference incorporates another, parties often prefer to argue that they form a single reference under an anticipation analysis, rather than asserting them as an obviousness combination. After all, who wants to deal with motivation to combine and secondary considerations of non-obviousness if they don't have to?

But there is a risk. The primary reference truly has to incorporate—not just cite—the secondary reference, which not the most common situation. If the first reference merely cites the second, the court will likely find that they cannot be treated as a single reference.

Judge Andrews addressed that situation this week, when faced with a Daubert motion to strike an expert opinion that treated two references as one in its …

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Judge Connolly Rejects Attempt to Use "Emergency Motion" to Bypass Discovery Dispute Procedures

Andrew E. Russell, Jan. 18, 2021
Emergency Motion Discovery Dispute

The Boy Who Cried Wolf
The Boy Who Cried Wolf Francis Barlow

Most Delaware attorneys tend to hesitate before filing an "emergency" motion, because they know how busy the Court is. The Court takes emergency motions seriously. It may defer work on other pressing issues to assist the parties with a true emergency.

I don't think anyone would want be standing before the judge (or on a conference call, or a video conference) explaining why they unnecessarily disturbed the Court's management of its docket.

Last week, Judge Connolly issued an opinion showing what may happen when a party files an unwarranted "emergency" motion.

In FinancialApps, LLC v. Envestnet, Inc., C.A. No. 19-1337-CFC-CJB (D. Del.), a trade secret and contract action, the Court …

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