A Blog About Intellectual Property Litigation and the District of Delaware


MN
The Honorable Maryellen Noreika

All teed up
All teed up Will Porada, Unsplash

I come to you, loyal reader, with hat in hand. As a reporter on the indefiniteness beat, I pride myself on being on top of all the new developments in Delaware—but it looks like one slipped by me earlier this month—Judge Noreika has issued her first order finding a claim indefinite at Markman.

It should be noted that the claims at issue in Tracktime, LLC v. Amazon.com, C.A. No. 18-1518-MN, D.I. 89 (Mem. Order, July 7, 2021) were means-plus-function claims, which Judge Noreika found indefinite for lack of a corresponding structure in the specification. See id. at 14-15. These issues tend to be easier lifts at the Markman stage for all of …

Yesterday, visiting Judge Bataillon excluded a patentee's expert opinion where the expert tried to use the doctrine of equivalents to skirt the Court's construction of a term.

The Court had initially rejected a preliminary injunction motion by the patentee, holding that it had failed to show a likelihood of success on infringement based on its proposed claim construction.

The patentee then proposed the same construction during claim construction before the magistrate judge, who issued an R&R rejecting it.

The patentee then objected to the R&R, but the Court adopted the construction in the R&R and again rejected the patentee's proposed construction.

Specifically, the Court held that the claims required two elements that each have a different thickness and composition: …

Fire. I couldn't find an image of raining brimstone.
Fire. I couldn't find an image of raining brimstone. Ricardo Gomez Angel, Unsplash

On Monday, Judge Noreika sanctioned a patentee plaintiff for not following the protective order regarding source code.

Here is what the plaintiff did:

Plaintiff violated the Protective Order at least six times over a period of almost one year by: 1) creating an electronic copy of the source code on July 6, 2020; 2) sending that electronic copy to a vendor that had not signed the Acknowledgement and Agreement to Be Bound by Stipulated Protective Order (which actually violated two provisions of the Protective Order); 3) failing to maintain a log of all copies; 4) storing an electronic and apparently unencrypted copy of the source code …

Time
Charles Deluvio, Unsplash

Judge Noreika issued an interesting order last week that allows us to pinpoint precisely how much time she requires to consider Daubert motions.

Naturally, we already had some insight into this issue from the Judge's form scheduling orders. For non-ANDA cases (i.e. cases where the parties may file summary judgment motions), Daubert motions are due at the same time as SJ motions -- at least 4 months before the pretrial conference. See Form Scheduling Order [Patent, Non-ANDA], ¶ 8(f)(iii) (D. Del. Apr. 5, 2021) (Noreika, J.).

The form scheduling order for ANDA cases, on the other hand, gives the parties considerably more leeway, simply requiring that any Daubert motion be brought …

We at IPDE have chronicled the Court's efforts to limit the number of terms it construes pretty extensively. Just last month, we discussed Judge Noreika's opinion in Sentient Sensors, LLC v. Cypress Semiconductor Corp., C.A. No. 19-1868-MN (D. Del. May 17, 2021) where she shot down the plaintiff's motion to reconsider one of her claim construction rulings, citing O2 Micro.

This week, there are some further claim construction developments worth talking about—but we'll start first with some interesting history that we overlooked last time around.

A Difficult Claim Construction Journey

Although we didn't discuss it in our previous post, this case had already had a tempestuous claim construction process. The parties had initially submitted 8 disputed …

You've got . . . 2 new complaints!
You've got . . . 2 new complaints! Brett Jordan, Unsplash

We talked earlier this year about how Judge Hall permitted e-mail service of a complaint to a Taiwanese corporation under FRCP 4(f)(3), and we wondered whether this may be a reliable way to skirt cumbersome foreign service issues going forward.

As of Friday, the answer is still trending towards "yes." The previous case involved Taiwan, which is not a party to the Hague Convention. On Friday, Judge Noreika permitted service via e-mail on the U.S.-based counsel of a Korean entity—a party to the Hague convention—sidestepping the need to engage in cumbersome and time-consuming international service procedures:

Pursuant to Rule 4(f)(3), the Court may order that …

It's fairly common for plaintiffs in Delaware to plead infringement by alleging that the defendant infringes "at least claim x," of the relevant patent—leaving the question of what other claims might be asserted until later in the case.

In line with the Federal Circuit decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018), many of our Delaware judges have explicitly endorsed this practice. See, e.g. Promos Techs., Inc. v. Samsung Elecs. Co., Civil Action No. 18-307-RGA, 2018 U.S. Dist. LEXIS 186276, at *6 (D. Del. Oct. 31, 2018) ("Plaintiff does provide details of at least one claim allegedly infringed under each asserted patent. Therefore, Plaintiff's identification of infringed …

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …

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Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

Form Scheduling Order
The Honorable Maryellen Noreika

Judge Noreika updated her form scheduling order yesterday. Here are the changes:

  • Separate deadlines for fact and expert discovery cut offs. Judge Noreika's old form orders, and several other judges' form scheduling orders, set a cut off date for "all" discovery and a deadline for substantial document production. But parties often also set a separate deadline for fact discovery, so that there is a clear delineation for when fact depositions and any remaining document production need to end before expert reports occur. This resolves that issue.
  • Joint claim chart changes. Intrinsic evidence must now be submitted in an appendix rather than with the joint claim chart. This may help with the common issue that …