A Blog About Intellectual Property Litigation and the District of Delaware


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The Honorable Maryellen Noreika

Eleven Terms Enter, Ten Terms Leave

Nathan R. Hoeschen, Aug. 27, 2020
10 Terms Claim Narrowing

Claim Construction Meet and Confer Ends in the Usual Way
Claim Construction Meet and Confer Ends in the Usual Way Ein Gedenkbuch an das glorreiche Jahr 1866 in Wort und Bild, British Library, Unsplash

Last Friday, Judge Noreika ordered the parties in two separate actions to submit revised joint claim charts "identifying no more than a total of ten (10) terms to be argued at the [claim construction] hearing."

The Ongoing Struggle to Limit Terms

This represents a bit of an escalation in the Court's struggle to reduce the number of terms it construes, largely led by our newest Judges, Noreika and Connolly. Last year, Judge Noreika begin issuing her "now-standard post-briefing order directing the parties to meet and confer in an attempt to narrow issues prior to the …

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Whoops, Better Make Sure The Entity You Are Suing Is Actually a Delaware Corporation

Andrew E. Russell, Aug. 13, 2020
Jumara Transfer

I'm not sure that these are actually Georgia peaches.
I'm not sure that these are actually Georgia peaches. Joanna Stołowicz, Unsplash

Judge Noreika granted a motion to transfer yesterday in a case against an Equifax entity, where 3 of the Third Circuit's Jumara factors favored transfer, and only one (plaintiff's choice of forum) weighed against.

My first thought was—Did the plaintiff really have only one factor in it's favor?

Judge Noreika usually credits the fact that the Defendant is a Delaware corporation, and I thought Equifax was one.

Turns out, so did plaintiff. The complaint lists the defendant as a Delaware corporation. But—as the Court notes—Equifax Information Services is actually a Georgia entity. Plaintiff messed up.

So the transfer makes sense. The plaintiff is Hawaiian, meaning …

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The Limits on Section 101 Abstraction

Jeff Castellano, Aug. 4, 2020
Section 101 Abstract Idea

When mounting a Section 101 challenge, it is tempting to reduce the claimed invention to the broadest abstract concept possible (for example, "communications" or "data transfer"). The Federal Circuit has not given defendants much incentive to be more selective or specific in that regard. However, there are limits, and the defendants in APS Techs. v. Vertex Downhole, Inc., C.A. No. 19-1166-MN found them.

Oil Rig
Oil Rig Worksite Ltd, Unsplash

In a July 29, 2020 order Judge Noreika denied defendants' motion to dismiss because defendants' Section 101 challenge "oversimplified the claim to an improper level of abstraction." Defendants asserted that the claims were directed - at their heart - to "data transmission." Although Judge Noreika expressed some …

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What Is a Computer?

Jeff Castellano, July 28, 2020
Means-Plus-Function Claim Construction

In both common usage and patent drafting, "computer" has become shorthand for an incredibly broad range of hardware and software, across almost every possible technological space. The breadth of meaning attributable to that single word can be a challenge for litigants and courts working through issues of claim construction or other issues (e.g., Section 101 motions, in which references to concrete computer components can lift a patent out of abstractness, and references to generic components can doom it). On the one hand, "computer" is readily understood by almost everyone in a general sense; on the other, standing alone, it has no specific meaning.

Judge Noreika recently addressed the question of whether a claimed "'computer . . . to computationally' obtain, change, or calculate specified aspects of the radiation beam arrangement or weights" should be construed as a means-plus-function term under 35 U.S.C. § 112, ¶ 6 (pre-AIA).

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