A Blog About Intellectual Property Litigation and the District of Delaware


JLH
The Honorable Jennifer L. Hall

Patent Marking: Better Watch Those Burdens of Proof, or You'll Lose Your Pre-Suit Damages

Andrew E. Russell, Sept. 30, 2022
Summary Judgment Pre-Suit Damages

Here's an AI-generated patentee dealing with the burden of proof on marking.
Here's an AI-generated patentee dealing with the burden of proof on marking. AI-Generated, displayed with permission

My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.

Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:

[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.

One interesting thing about marking, ...

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Please Stop, It's Already Dead

Nathan R. Hoeschen, Sept. 8, 2022
Supplemental Authority

markus-spiske-Cf5kL7vcF6U-unsplash
Markus Spiske, Unsplash

I am not, as a rule, a giggler.

However, the timeline of events below—relatable in their banality, painful in their recounting—did elicit an ungentlemanly outburst when I read it this morning.

August 16 - Judge Hall holds a hearing on a 101 motion in Innovative Memory Systems Inc. v. Micron Technology Inc., C.A. No. 14-1480-RGA-JLH

August 17 - The defendant submits a succinct, 1-page, notice of subsequent authority, citing a recent 101 opinion from Judge Andrews.

August 19 - Plaintiff files a 1.5 page response to the notice

August 29 - Defendant responds with a 1.5 page response to the response (sur-response?)

August 31 - Plaintiff responds again about this same opinion (a sur-sur-response?)

September 6 …

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A Helpful Order on Moving to Amend to Add Inequitable Conduct

Andrew E. Russell, Sept. 2, 2022
Inequitable Conduct FRCP 15

Attorney searching for factual support for their inequitable conduct allegations
Attorney searching for factual support for their inequitable conduct allegations Agence Olloweb, Unsplash

Yesterday, in Intercept Pharmaceuticals v. Apotex Inc., C.A. No. 20-1105-MN (D. Del. Sept. 1, 2022), Judge Hall granted a motion to amend to add inequitable conduct allegations almost a year after the deadline for amendment in the scheduling order.

Most D. Del. scheduling orders include a deadline for motions to amend or to join additional parties. Normally, the standard for motions to amend in the Third Circuit is relatively easy to meet. But when there is a scheduling order deadline for amendment, the Courts has held that parties must show "good cause" under Rule 16 if they move to amend after the …

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"Flawed Logic" Leads to Short Opinion, Negative Outcome

Andrew E. Russell, July 11, 2022
Claim Construction

Cell Phone
Tyler Lastovich, Unsplash

In patent infringement cases, plaintiffs' claim construction strategy sometimes seems to boil down to "Plain meaning! Construe it later! Everything is in!", while defendants often go for "No plain meaning! Construe it now! Our thing is out!".

Note that, for defendants, it's not necessarily that everything is out of the claim. It's often that there is one specific thing from the specification that is required, and that just happens to be the one thing the defendant's product doesn't have or do.

This strategy doesn't have a great success rate for defendants, but often I feel like the attitude is that "well it's worth a shot." I'm not sure that's always true, because a really bad argument …

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Court Denies Motion to Strike Bare-Bones Infringement Contentions, Suggests Motion to Strike Later Expert Reports Instead

Andrew E. Russell, April 21, 2022
Infringement Pennypack

Bare Bones
Mathew Schwartz, Unsplash

Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.

Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).

Having a reasonable idea …

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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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Judge Hall Weighs § 271(g) Allegations

Jeff Castellano, Dec. 11, 2021
R&R MTD

Last week, Judge Hall denied a motion to dismiss claims of infringement under 35 U.S.C. § 271(g), finding that the plaintiff had "barely met the low threshold for alleging infringement of the asserted patents." The plaintiff's amended complaint alleged that the defendants imported and sold phone displays that were "remanufactured" overseas using patented methods of removing damaged glass covers from mobile phone displays so that replacement glass can be attached.

Broken Screen
Broken Screen Samsung Galaxy S6 with shattered screen, Ashkan Forouzani, Unsplash

Judge Hall's R&R, issued in Viking Techs., LLC v. Squaretrade Inc., C.A. No. 20-1509-CFC-JLH, addressed four arguments made by the defendant, namely that the amended complaint: (1) did not adequately allege that the remanufacturing process performed all of the claimed steps; (2) failed to attribute specific misconduct to either defendant; (3) did not allege pre-suit notice; and (4) failed to allege infringement under 271(g) because the accused devices are not "made" by the accused process and are "materially changed" by subsequent processes.

On the first argument, the sufficiency of the allegations that the remanufacturing process met all claimed steps, Judge Hall found that "Viking has barely met the low threshold" for pleading infringement. Although the allegations of infringement in the complaint largely tracked the claim language, and did not include allegations of infringement for every claim mentioned in the complaint, Judge Hall found that the allegations were "sufficient to provide Defendants notice of the grounds on which Plaintiff’s claims rest," including "what portion of their business—mobile device repair—and what specific products—those that have had the display assemblies repaired/remanufactured—are accused of infringement." Citing the Federal Circuit's Nalco decision, she explained that there is simply "no requirement that a plaintiff plead facts establishing that each limitation of an asserted claim is met." ...

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Judge Hall Chooses a Side in the Split Over Whether the Complaint Itself Can Establish "Knowledge" of a Patent

Andrew E. Russell, Oct. 4, 2021
Willfulness R&R

Divide
Crack on white concrete surface, Brina Blum, Unsplash

We've been following the district court cases holding that a complaint itself cannot establish knowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.

On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:

As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …
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The Limits of § 285 Fees

Nathan R. Hoeschen, Aug. 19, 2021
Fees IPR

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Girl holding American Dollar Bills, Alexander Mils, Unsplash

An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?

The answer, apparently, is no.

Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:

The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he …
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D. Del. Permits "Novel Theory" of Induced Patent Infringement Against Health Insurer on a Method-of-Use Claim for a Generic Drug

Andrew E. Russell, Aug. 3, 2021
Generic Drug

Pills
Christina Victoria Craft, Unsplash

Magistrate Judge Hall issued an R&R today recommending that the Court deny a motion to dismiss an inducement claim against a health insurer relating to a method-of-use claim for a generic drug.

The complaint alleges that, despite knowing that the plaintiff had a method-of-use claim for a specific treatment, the insurer nonetheless covered the patented treatment at a lower cost to patients than treatment with the name-brand drug:

The thrust of the allegations against [the insurer] Health Net are (1) that it provides coverage and payment for [co-defendant] Hikma’s generic product even in cases where Health Net actually knows that a particular beneficiary is using the generic version for an unapproved—and allegedly infringing . . …
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