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.”).
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 ...
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.
I wanted to call out the interesting quote in the title, which comes from an opinion Judge Noreika issued on Friday granting-in-part post-trial motions in a patent case.
The quote is in the context of a motion for JMOL of no post-suit indirect infringement because the accused infringer didn't encourage users to infringe. The Court was very disappointed in the parties' briefing:
[T]he Court must still address Defendants’ remaining complaint as to indirect infringement. Defendants argue that there was no evidence at trial to suggest that they encourage others to infringe the ’502 and ’386 Patents, which is required for a finding of inducement liability. On this point, …
As we've mentioned, Local Rule 16.4(b) must be one of the most frequently-forgotten local rules in the District of Delaware. It sets forth that a party must include certain things in a stipulation extending the fact discovery or trial dealine:
Unless otherwise ordered, a request for an extension of deadlines for completion of discovery or postponement of the trial shall be made by motion or stipulation prior to expiration of the date deadline, and shall include the following:
(a) The reasons for the request; and
(b) Either a supporting affidavit by the requesting counsel’s client or a certification that counsel has sent a copy of the request to the client.
It takes a lot to get a legitimate audible laugh out of us at IPDE, but Judge Noreika managed it with one of her orders this week:
On 5/25/2023, the Court issued an Oral Order stating in part that "[t]he Court will not...accept further ex parte emails." Nevertheless, on 5/30/2023, the Court received an ex parte email stating: "We are not attempting to have an ex parte communication entered into the files. By the attached letter, we are attempting to comply with this Court's orders. Will you please provide the Honorable Judge Noreika the attached letter." The Court does not accept ex parte communications. The Court notes, however, that the referenced "attached letter" states that the patents-in-suit are "no longer …
We talked early last year about how Judge Noreika praised Chief Judge Connolly SJ ranking procedures, and applied them in a case where the parties had filed 11 SJ motions.
As a reminder, under Chief Judge Connolly's procedures, the parties rank their SJ and Daubert motions. The Court addresses them in order, and if it denies one, it then denies the remainder.
Needless to say, it can lead to some significant strategizing prior to filing, where parties try to balance the importance of each motion with its likelihood of success.
This week, Judge Noreika did it again, and I thought it was a good time to remind everyone that this can happen. In VB Assets, LLC v. Amazon.com, Inc. …
Parties can freely stipulate to many things in the District of Delaware, and often stipulations to extend deadlines are filed close to the last minute, especially where the parties are working toward agreement but ultimately cannot agree on the final filing in time (or else are having trouble connecting with the other side).
However, stipulations filed close to the Delaware witching hour (5:00PM EST) can be fraught with risk of the Court's denial, as we’ve seen in past heart-stopping examples. We’ve warned before that requests to move Court-scheduled conferences are in the “iffy” category, and combined with last minute filing, can end in disappointment for everyone, as shown in an oral order from Judge Noreika last week in Neurocrine Biosciences, Inc. v. Lupin Limited et al., C.A. 21-1042, D.I. 197 (D. Del. Jul. 16, 2021):
On April 17, 2023, the Court instructed the parties to talk to each other about their disputes so that a follow-up call with the Court (set for April 21, 2023) would be more productive than the prior call. On April 21, 2023, a few hours before the set call, the parties submitted a stipulation requesting the April 21 call be delayed. After further inquiries, it became clear that, in the five days after the Court directed the parties to TALK, they did not do so. The Court intended to address that during the April 21 call, but no counsel appeared for the call (notwithstanding that the Court had not granted the request for a delay). THEREFORE, IT IS HEREBY ORDERED that, should the parties not inform the Court that they have resolved their dispute in full by Tuesday April 25, 2023, lead trial counsel SHALL appear in person in Courtroom 4A on April 26, 2023 at 3:00 p.m. ORDERED by Judge Maryellen Noreika on 4/21/2023.
Judge Noreika previously indicated frustration with the magnitude of this particular discovery dispute (on search methods to find responsive documents), so the parties were on thin ice long before ...
To keep the patent assertion entity from coming back from dead, kill it with counterclaimsAI-Generated, displayed with permission
One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
While counterclaims are generally low-cost, they are not free and still involve some work.
They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties …
Aaaand we're back. You'll note one of the stipulations listed as "iffy" (legal term) was stipulations to extend page limits. We got a good example of just how iffy those can be last week from Judge Noreika:
IT IS HEREBY ORDERED that the Stipulation is DENIED. The request to extend page limits was filed seven minutes before the over-the-page limit brief was filed. The effect of this was that Plaintiff granted itself an extension without leave of Court and without respect for the Court and its rules. THEREFORE, IT IS FURTHER ORDERED that the Motion for Preliminary Injunction is DENIED for failure to comply with the page limits. Counsel may re-file the motion with a brief that complies with the Court's rules.
Janssen Biotech, Inc. v. Amgen, Inc., C.A. No. 22-1549-MN (D. Del. Mar. 2, 2023) (Oral Order)
Obviously, it didn't help that the parties filed their stip just minutes before the relevant brief, giving the Court no opportunity to act on it. But it led me to wonder just how often these stipulations are denied in ...
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