A Blog About Intellectual Property Litigation and the District of Delaware


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Chief Judge Connolly Denies Daubert Motion Regarding Five Experts, Holding That Party Should Have Filed Five Separate Motions

Andrew E. Russell, Dec. 13, 2023
ETSI Congestion

Five Candles
Steve Johnson, Unsplash

Chief Judge Connolly's scheduling order requires parties to rank their Daubert motions, and gives the Court the discretion to automatically deny all lower-ranked motions if it denies any one motion. In other words, if a party files five Daubert motions, and the Court grants the first-ranked motion but denies the second, the Court can then deny motions three, four, and five:

If the Court decides to deny a motion filed by the party, barring exceptional reasons determined sua sponte by the Court, the Court will not review any further Daubert motions filed by the party.

It has a similar provision for summary judgment motions Thus, it's important that parties split up their motions and rank them. …

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Judge Williams Grants Permanent Injunction on Sales of Personalized Cancer Monitoring Product

Andrew E. Russell, Dec. 4, 2023
Damages Permanent Injunction

I have no idea what the accused product looks like, but here is a
I have no idea what the accused product looks like, but here is a "viral whole-genome sequencing experiment." National Cancer Institute, Unsplash

Last month, Judge Williams granted a permanent injunction in Natera Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW (D. Del. Nov. 21, 2023). The Court unsealed the opinion on Friday, and I thought there were enough interesting things about it to warrant a short post.

The Court granted the injunction only in part, and permitted the defendant to continue using the personalized cancer monitoring product, referred to as "PCM," for "ongoing clinical trials, for updating old studies undergoing peer review, and for limited quality control." The parties also agreed that the injunction should exclude use …

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What Not to Do When the Court Requires a Concise Statement of Facts

Andrew E. Russell, Nov. 20, 2023
Concise Statement of Facts Summary Judgment

"Here is our argument. The rest of the pieces are in our concise statement of facts." T.J. Breshears, Unsplash

Years ago, I wrote a really terrible first draft of a summary judgment brief arguing invalidity of a patent for obviousness.

I wrote it immediately after expert reports, and my draft failed to actually say why the claims were obvious. Instead, the whole draft read like a sur-rebuttal to the patentee's expert: here is why their first argument doesn't work, here is why their second argument doesn't work, and so on. Never "here is why the claims are obvious."

To me, at the time, it looked great. I rebutted all of their arguments! How can we lose! To others, it …

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Court Rejects Parties' Joint Request to Defer Case Scheduling Until After the Markman Hearing and Claim Construction Order

Andrew E. Russell, Nov. 15, 2023
Litigation Scheduling Order

Not the hoped-for result.
Not the hoped-for result. Michael Jin, Unsplash

Sometimes it's nice to know what doesn't work.

In AlterWAN, Inc. v. Amazon.com, Inc., C.A. No. 19-1544-MN (D. Del.), the parties stipulated to a judgment of non-infringement after the Court construed certain terms of the patent, and then appealed to the Federal Circuit.

The Federal Circuit vacated the stipulated judgment because it found it was not specific enough, and remanded the case. See AlterWAN, Inc. v. Amazon.com, Inc., 63 F.4th 18, 23 (Fed. Cir. 2023) (“[W]e cannot ‘ascertain the basis for the judgment’ of non-infringement, . . . because the parties did not adequately explain how the claim construction rulings related to the accused systems.”).

On remand, the …

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Reminder for Defendants: Reverse Doctrine of Equivalents and Ensnarement Exist. You Should Assert Them.

Andrew E. Russell, Nov. 8, 2023
Reverse DOE Litigation

"Yes, your honor, it literally meets the claim elements of an 'animal' in a 'structure' with a 'gable roof.' But under the reverse doctrine of equivalents . . ." Go to Tomas Tuma's profile Tomas Tuma, Unsplash

The reverse doctrine of equivalents and ensnarement are great for accused infringers, but for whatever reason they often seem to get set by the wayside.

RDOE for You and Me

Reverse doctrine of equivalents has a terrible name. It's really just the argument that even if the accused product meets the literal elements of the claim, it does not infringe because it is performs the claimed function in a substantially different way than the claimed invention.

As Judge Connolly put it …

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Court Unseals Entire Attorneys-Eyes-Only SJ Appendix After Party Files Second "Recycled" Brief in Support of Motion to Seal

Andrew E. Russell, Nov. 6, 2023
Litigation Redactions

Crow
Greg Rosenke, Unsplash

This post continues our Halloween theme of things that induce nightmares and shake the hearts of the stoutest Delaware counsel.

The parties in Stragent, LLC v. Volvo Car USA, LLC, C.A. No. 22-293-JDW (D. Del.) filed a joint appendix of exhibits alongside some supplemental SJ briefing. The defendant filed a motion to seal its SJ brief, which apparently discussed internal software specifications.

The Court granted the motion to seal the SJ brief, but criticized the brief in strong terms:

Volvo seeks to file its supplemental summary judgment brief under seal, but it’s supporting brief doesn’t say much. For example, while Volvo makes generic references to “proprietary commercial, financial and business information” and …
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Don't Assume You'll Get a Stay, Even If You Invalidate the Patent at the PTO

Andrew E. Russell, Oct. 29, 2023
Ex Parte Reexamination Stay

No Stopping
Ben Tofan, Unsplash

Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.

We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:

ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court …
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Court Denies § 101 Motion, Holding That "address[ing] § 101 issues in . . . seriatim . . . is not a good use of the Court's time"

Andrew E. Russell, Oct. 25, 2023
Motion to Dismiss Congestion

Terracotta Warriors
Aaron Greenwood, Unsplash

Along the lines of on Friday's post, Judge Noreika issued an order in a different case this week denying a § 101 motion because it addressed only a subset of claims, and suggested that more claims may be asserted:

ORAL ORDER re (10 in 1:23-cv-00174-MN) (9 in 1:23-cv-00220-MN) MOTION to Dismiss - Defendants have filed motions to dismiss for failure to state a claim, arguing that claim 1 in two of the four asserted patents is directed to ineligible subject matter under 35 U.S.C. § 101. . . . Defendants state in a footnote that they are not addressing other claims, but that very same footnote suggests that the Court may face additional § 101 arguments in the future should Plaintiff add further asserted claims from the two patents at issue in the motion and that the Court may also later have to address § 101 with respect to the remaining two patents not subject to the present motion. (C.A. No. 23-220, D.I. 10 at 2 n.2). Given that Defendants' § 101 motions suggest that the Court will be forced to address § 101 issues in this case seriatim and because doing so is not a good use of the Court's time, IT IS HEREBY ORDERED that Defendants' motions to dismiss are DENIED without prejudice to renew as appropriate during summary judgment. ORDERED by Judge Maryellen Noreika on 10/23/2023.

AlmondNet, Inc. v. Freewheel Media, Inc., C.A. No. 23-220 (D. Del. Oct. 23, 2023).

What was in the footnote? An admission that the motion doesn't resolve all of the claims:

This motion is directed to only two claims—claim 1 of the ’307 patent and claim 1 of the ’249 patent—because they are the only claims of those patents that the Complaint alleges Defendants infringe. . . . While Plaintiffs could conceivably assert other claims of the ’307 and ’249 patents if the Court grants this motion, they would do so at their peril because those other claims add only incidental limitations to the two at issue here. Thus, resolution of this motion will likely dispose of two of the four asserted patents in this case. Moreover, because Plaintiffs’ patents are all similar—and all face similar obstacles under Section 101—Defendants believe that deciding this motion now will streamline and promote resolution of this entire case, and possibly of other AlmondNet cases as well, since they involve similar or overlapping patents. . . . Accordingly, Defendants believe that deciding this motion now, at the Rule 12 stage, will be an efficient use of the Court’s resources.

Id., D.I. 10 at 2 n.2.

This outcome is not unusual, but it's definitely something to keep in mind when evaluating ...

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Court Dismisses All Claims with Prejudice After IPR—Even Though Some Were Not Invalidated

Andrew E. Russell, Oct. 23, 2023
Voluntary Dismissal MTD

Dart in Target
Silvan Arnet, Unsplash

Both parties in Wrinkl, Inc. v. Meta Platforms Inc., C.A. No. 20-1345-RGA (D. Del.) agreed that the case should be dismissed after the PTAB invalidated 50 of the 54 asserted claims, but disagreed about whether the remaining 4 claims should be dismissed with prejudice.

The plaintiff claimed that it did not intend to assert the remaining claims, but that it should retain the right to, and that it is unaware of caselaw holding that the Court cannot dismiss some claims with prejudice and some without.

The defendant argued that the Court cannot split up the claims, and must dismiss all or nothing with prejudice:

Defendants contend there is no legal support or precedent …
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In Response to § 101 Motion, Judge Noreika Orders Plaintiff to Identify Asserted Claims (a Prelude to Denial?)

Andrew E. Russell, Oct. 22, 2023
MTD Motion to Dismiss

"How many more claims will we assert? I'm glad you asked..." Klim Musalimov, Unsplash

We noted last year how Judge Noreika has sometimes denied § 101 motions to dismiss that challenge large numbers of claims, holding that it is more efficient to deal with such motions at the SJ stage (where, presumably, the case would be narrowed).

This week, the Court addressed a § 101 motion in Global Tel*Link Corporation v. JACS Solutions, Inc., C.A. No. 23-500-MN (D. Del.). The motion seeks a § 101 ineligibility finding for 5 claims across 5 asserted patents—i.e., one claim per patent. That's all the plaintiff asserted in the complaint. Id., D.I. 20.

In response, the plaintiff (wisely) argued …

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