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No New Trial After Both Sides Cited Coronavirus Benefits of Invention in March Trial

Andrew E. Russell, Aug. 17, 2020
Post-trial Motions COVID-19

On Friday, Chief Judge Stark issued his opinion on post-trial motions in Pacific Biosciences of California, Inc. v. Oxfore Nanopore Tech., Inc., C.A. No. 17-275-LPS-CJB (D. Del.).

You may remember it as the case which made news at the time due in part to the mention of coronavirus in the opening statements.

The trial took place March 9-18, just as the first COVID-19 lock downs were ramping up.

Incredibly, both parties touted coronavirus-related effects of their products in their opening statements at trial. Plaintiff suggested that its product could "help develop a vaccine" for the coronavirus. Defendant went even further:

[Defendant made] a product that is changing lives as we speak. Whether it is helping people …
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Judge Connolly Dismisses "Confusing and Contradictory" Direct Infringement Claims

Andrew E. Russell, Aug. 10, 2020
MTD

Judge Connolly has previously denied a motion to dismiss direct infringement claims where the plaintiff at least recited the claim elements and accused a product of meeting them. Last week, though, he granted a motion to dismiss where the plaintiff did not even go that far.

Even though the patent included only method claims, plaintiff accused only products of infringing, without identifying any accused process or alleging how it is performed by those products.

Even as to those products, plaintiff contradicted itself, identifying smartphones as accused, but also discussing servers, software, and "other devices and technology." Judge Connolly called these allegations "confusing and contradictory."

Judge Connolly did grant leave to amend, and gave them a month to fix their …

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Judge Andrews Construes "Comprising" as "Consisting Essentially of" Based On Disclaimer

Andrew E. Russell, Aug. 9, 2020
Claim Construction

Pill Bottle
Sharon McCutcheon, Unsplash

Judge Andrews on Friday accepted a defendant's argument that, during prosecution, the applicant had so clearly and unambiguously disclaimed the prior art that it warranted construing "comprising" as used in a claim element to mean "consisting essentially of"—a major narrowing of claim scope.

The claim involved an oral tablet that delivered multiple drugs, with a "barrier layer" between them. The barrier layer claim element included the word "comprising":

a barrier layer comprising hydroxyl propyl methyl cellulose 2910, polyoxyethylene glycol 400, polysorbate 80, and titanium dioxide . . .

The portion after "comprising" in the claim element matches the composition of a commercially-available barrier layer called "Opadry ®White (YS-1-7003)."

The Court found disclaimer based on …

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Federal Circuit Rejects Argument that Court, Not Jury, Must Determine Whether Patent is Standards Essential

Andrew E. Russell, Aug. 4, 2020
Standards Essential Jury

In an appeal from a Judge Battalion case in the District of Delaware, the Federal Circuit today held that—unsurprisingly—a jury may answer the fact question of whether a patent is standards essential.

It held that the argument to the contrary, that the Court must determine whether a patent is standards-essential during claim construction, was based on a misreading of precedent.

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Federal Circuit Reissues Illumina v. Ariosa, Rephrases "Bucket"-Based § 101 Analysis

Andrew E. Russell, Aug. 3, 2020
Alice Step One Natural Phenomenon

Buckets
Carolyn V, Unsplash

The Federal Circuit today reissued its March 2020 opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc., which held a "method of preparation" claim relating to a natural phenomenon was patent eligible.

The reissue follows a petition for rehearing.

The patents involve a method for preparing a fetal DNA sample using a blood sample from a pregnant mother, by sorting the DNA fragments and removing the smaller ones using a size threshold.

The Original Bucket-Based Analysis

The Court originally described how it has consistently rejected "natural phenomenon"-related claims that fall into a "diagnostic" bucket, but has permitted method of treatment claims:

This is not a diagnostic case. And it is not a method of …
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What Is a Computer?

Jeff Castellano, July 28, 2020
Means-Plus-Function Claim Construction

In both common usage and patent drafting, "computer" has become shorthand for an incredibly broad range of hardware and software, across almost every possible technological space. The breadth of meaning attributable to that single word can be a challenge for litigants and courts working through issues of claim construction or other issues (e.g., Section 101 motions, in which references to concrete computer components can lift a patent out of abstractness, and references to generic components can doom it). On the one hand, "computer" is readily understood by almost everyone in a general sense; on the other, standing alone, it has no specific meaning.

Judge Noreika recently addressed the question of whether a claimed "'computer . . . to computationally' obtain, change, or calculate specified aspects of the radiation beam arrangement or weights" should be construed as a means-plus-function term under 35 U.S.C. § 112, ¶ 6 (pre-AIA).

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Court Splits As To Whether Recitation of Claim Elements Is Sufficient to State a Claim for Direct Infringement

Andrew E. Russell, July 27, 2020
MTD 12(b)(6)

A Crack
Crack on white concrete surface, Brina Blum, Unsplash

Two opinions in the past week have come to differing conclusions as to whether the recitation of claim elements in a complaint is sufficient to state a plausible allegation of infringement.

Recitation of Claim Elements Helpful

In the first, Dynamic Data Technologies, LLC v. Brightcove Inc., No. 19-1190-CFC (D. Del. July 20, 2020), the Court denied a 12(b)(6) motion to dismiss an allegation of direct infringement, stating that it was sufficient to:

identif[y] products accused of infringing each of the asserted patents, identif[y] at least one claim of each asserted patent that the accused products infringe, and describe[] how those products infringe the identified claim.

To show …

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Judge Fallon Rejects Expert Declaration, Recommends Grant of § 101 Motion at Pleading Stage

Andrew E. Russell, July 23, 2020
MTD Expert

Cell Tower
Cell Tower Ben Vaughn, Unsplash

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …

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Appeal to Watch: Exclusion of Japanese Patent Office Publication as Not Publicly Accessible

Andrew E. Russell, July 17, 2020
§ 102 FRE

The reference at issue, JP 1992-136787

Japanese patent publications are typically considered to be fairly safe prior art references, as long as you prove up authenticity and offer sufficient evidence of publication.

But it turns out that that second part—showing publication—is kind of important.

In F'real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC, Judge Connolly excluded a Japanese Patent Office Utility Model Publication on a motion in limine because the defendants failed to show that it was publicly accessible under § 102, based largely on defendants' own position in opposing IPR estoppel.

Couldn't Have Found Reference = No IPR Estoppel

The F'real defendants had previously filed an unsuccessful IPR, and plaintiff moved to exclude the reference based on IPR estoppel. …

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