A Blog About Intellectual Property Litigation and the District of Delaware


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Intellectual Property

Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
Waiver Claim Construction

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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Court Holds That Using Prior Art That Was Considered in Post-Grant Proceedings "Opens the Door" for Patentee to Put Evidence of Those Proceedings Before the Jury

Andrew E. Russell, Sept. 4, 2024
Trial Procedure Motion in Limine

When the Court says
When the Court says "unless they open the door," typically you'd want to stay far away from that door. AI-Generated, displayed with permission

There is a lot of precedent in D. Del. regarding when the parties can and can't present evidence from post-grant patent proceedings such as IPRs. Most often, the Court holds that such evidence is inadmissible or constrained, to prevent it from unduly influencing the jury. "We already won this once" can be a powerful argument.

Last week, Judge Williams issued an opinion taking the usual position as to most evidence. But the Court also held that simply asserting a prior art reference that was raised in post-grant proceedings opens the door for the patentee to introduce …

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The Pennypack Factors Are Tough: Court Permits Patentee's Untimely Disclosure of Conception Date

Andrew E. Russell, Aug. 30, 2024
Pennypack FRCP 26

Pennypack: Kinda stacked for the late discloser since 1977!
Pennypack: Kinda stacked for the late discloser since 1977! Kim Leary, Unsplash

I hope the Third Circuit one day revisits the Pennypack factors, which are what it directs the lower courts to apply to determine whether late disclosures are subject to sanctions such as preclusion.

The factors can be lenient on parties that are very late in disclosing critical facts. Pennypack sets up a system where, oddly, the more critical the late-disclosed fact is, the later the party can be, and the less likely it is to be excluded. Isn't that backwards?

In practice, the factors often seem to turn on whether there is incurable prejudice, and that can be hard to establish. But a rule that "you …

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Court Rejects General Claim Construction Interrogatory—But POSITA Interrogatory Is Fine

Andrew E. Russell, Aug. 28, 2024
Contention Interrogatories Contentions

It was tough to find an image for this. Just imagine each lego head is a proposed claim construction.
It was tough to find an image for this. Just imagine each lego head is a proposed claim construction. Wu Yi, Unsplash

The District of Delaware supports contention interrogatories generally (but not contention 30(b)(6) topics). I remember that, back before the Court adopted the Default Standard in 2011, contention interrogatories were the main way to define and limit the scope of the case during fact discovery.

But contention interrogatories are not without limits. On Friday, in LeFebvre v. Extrabux, Inc., C.A. No. 23-167 (D. Del.), Judge Burke issued a decision on a discovery dispute about a contention interrogatory seeking claim construction positions. He held that a party can't just ask the opposing party for its …

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Chief Judge Connolly Orders Mavexar-Related Witness to Appear, Pay $53k Fine

Andrew E. Russell, Aug. 23, 2024
Mavexar Remote Testimony

Mavexar is depicted herein as a crab, per our policy
Mavexar is depicted herein as a crab, per our policy Vincent van Zalinge, Unsplash

Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.

Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:

At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
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Court Awards Fees After Patentee Asserts Invalid Claims, Flubs § 101 Briefing

Andrew E. Russell, Aug. 21, 2024
Exceptional Case Finding § 285

Money—Exactly the thing that this accused infringer may not actually wind up collecting
Money—Exactly the thing that this accused infringer may not actually wind up collecting Giorgio Trovato, Unsplash

We're back! During our brief intermission, the Court issued an exceptional case finding in Wireless Discovery LLC v. eHarmony, Inc., C.A. No. 22-480-GBW (D. Del.), and awarded fees.

I always like reading these opinions both (1) as a guide on what not to do and (2) to figure out how to better threaten NPEs with the risk of fee awards. I'm not sure this one is going to be particularly helpful in those regards, because there were some exceptional facts.

First, the patentee filed a patent that asserted previously invalidated claims. Worse, after the accused infringer called them …

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Asserting a New Reference Is Not "Narrowing" the Invalidity Contentions, Even If the Overall Number of References Goes Down

Andrew E. Russell, Aug. 12, 2024
Case Narrowing Contentions

For some reason, one of the references stands out...
AI-Generated, displayed with permission

Judge Bryson unsealed a discovery dispute opinion last week in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del.), addressing a motion to supplement infringement contentions after the deadline for final contentions. The patentee argued that it had good cause to supplement because it did so quickly after the accused infringer added a totally new prior art reference in their final invalidity contentions.

There are a couple of interesting things about the opinion, but I wanted to call out one in particular.

The case included a deadlines for final contentions, and then for case narrowing, with the defendant to drop to a list of 10 references. The defendant initially cut …

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Can a COVID "Vaccine" Patent Cover Something That's Not a "Vaccine"? Chief Judge Connolly Hopes Federal Circuit Will "Jettison Its Rulings" on Preamble Construction

Andrew E. Russell, Aug. 9, 2024
Claim Construction

Alice in Wonderland
AI-Generated, displayed with permission

Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.

The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:

What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
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A New Technique? Peicemeal Claim Construction Opinions Issued as Individual Oral Orders

Andrew E. Russell, Aug. 9, 2024
Congestion Claim Construction

I couldn't find a picture for this. Just imagine each leaf is an individual claim construction oral order.
I couldn't find a picture for this. Just imagine each leaf is an individual claim construction oral order. Erol Ahmed, Unsplash

I've noticed that, since November of last year, Judge Burke has been issuing claim construction opinions in some cases in the form of a series of oral orders on the docket, rather than a formal memorandum opinion or an order with footnotes. I thought I'd flag this so that people know what may happen if you have claim construction in a case before Judge Burke.

I first saw the Court construe terms via oral orders on the docket in November 2023, in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057, D.I. 140-141 ( …

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Check Those Cites

Emily S. DiBenedetto, Aug. 6, 2024
Alice Step One MTD

Alice ponders the internet of things
Alice ponders the internet of things AI-Generated, displayed with permission

Last week in Ignite Enterprise Software Solutions, LLC et al. v. NGData, US Inc. and NGData N.V., C.A. 23-1209 (D. Del. Aug. 2, 2024), Judge Murphy dinged defendants for stale citations, including failing to cite recent Federal Circuit precedent on the level of detail required in patent pleadings.

We flagged the case that this Court called the "most recent and most relevant Federal Circuit authority" back when it came out: Bot M8 LLC v. Sony Corp. of Am., C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021).

Analysis of Every Claim is Not Required in the Complaint

The holding from Bot is …

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