A Blog About Intellectual Property Litigation and the District of Delaware


On Friday, Chief Judge Stark released his opinion summarizing his bench rulings from his most recent Section 101 day. This is how the patents fared:

Content Square v. Quantum Metric, Inc., C.A. No. 20-832-LPS (D. Del.)

In the first case, Content Square, the Court invalidated the claims of 2 of the 5 asserted patents.

Not this kind of web crawling.
Not this kind of web crawling. Michael Anfang, Unsplash

The invalidated patents related to "heat map patents," which relate to displaying heat maps of web browsing data. These include U.S. Patent Nos. 10,063,645 and 10,079,737.

The third patent, which was not invalidated, related to "creating multiple versions of a website to determine users' preferences." Interestingly, the Court held …

A nautilus. It's nice when significant cases have memorable names.
A nautilus. It's nice when significant cases have memorable names. Shawn Low, Unsplash

Claim construction opinions tend to be highly fact-specific, so even though they can be critically important to the parties in a case, we don't always post about them on this blog.

Judge Andrews issued an interesting claim construction opinion today, however, which addressed indefiniteness due to a potential drafting error in a claim.

The opinion involved claim language for a mechanical device:

. . . wherein the . . . assembly comprises a housing comprising the syringe and the stirring motor . . .

Defendants argued indefiniteness in light of the dual use of "comprising," because a person of skill in the art cannot determine a …

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.

Even when plaintiffs know of the potential weak spots in their infringement cases, they sometimes fail to address DOE until too late, or they offer a DOE analysis so weak that it gets excluded or wiped out by summary judgment.

That's what happened last week, when Chief Judge Stark struck a DOE opinion after a plaintiff tried to squeak by on the idea that its late DOE argument should be permitted because it never affirmatively declaimed DOE:

Arendi's passing reference to DOE in its complaints followed by its lack of affirmative disclaimer of DOE theories (see, e.g., C.A. No. 12−1595 D.I. 238 at 5) ("Arendi has never asserted that its claims were limited to literal infringement") does …

Somewhere between the filing of the pretrial order and the pretrial conference, Judge Stark typically issues an order resolving pretrial disputes and allocating trial time. These orders - while usually short - provide a wealth of insight into his trial practices and preferences, and (often) his views on substantive evidentiary issues. They also serve to remind litigants of longstanding trial management practices (including those codified in his form pretrial order).

On Friday, Judge Stark issued a 3-page pretrial memorandum order in a set of consolidated Hatch-Waxman ("ANDA") actions, Silvergate Pharmaceuticals, Inc. v. Bionpharma, Inc. et al., C.A. Nos. 18-1962, 19-1067, 19-678. The order contained decisions on sealing the courtroom during the bench trial, obviousness proofs, disclosure of exhibits to be used on cross examination, and others.

When one prior art reference incorporates another, parties often prefer to argue that they form a single reference under an anticipation analysis, rather than asserting them as an obviousness combination. After all, who wants to deal with motivation to combine and secondary considerations of non-obviousness if they don't have to?

But there is a risk. The primary reference truly has to incorporate—not just cite—the secondary reference, which not the most common situation. If the first reference merely cites the second, the court will likely find that they cannot be treated as a single reference.

Judge Andrews addressed that situation this week, when faced with a Daubert motion to strike an expert opinion that treated two references as one in its …

Robin Hood, taking on some rogue non-practicing entities
Robin Hood, taking on some rogue non-practicing entities Reginald Heade

Here is some colorful writing from Magistrate Judge Burke of the District of Delaware, recommending dismissal of a claim for willfulness that failed to plead knowledge, and which relied on—at most—possible knowledge for a 15-hour period between when the complaint was served on an unknown person and when the patent expired:

From the docket, it appears that someone who is in some way affiliated with [defendant] Robinhood was served with the FAC at 9:08 a.m. on July 30, 2019. . . . But, as it turns out, the '633 patent expired on July 30, 2019—that same day. The Court guesses that, in light of all of this, it might be theoretically possible for Plaintiff to pursue what would have to go down as the most de minimis claim of willful infringement in this Court’s history. But whether such a claim—revolving around whether Robinhood knew of the patent and its infringement thereof, during a roughly 15-hour time period on July 30, 2019—would even be plausible would depend on exactly who got served with the Complaint on July 30, 2019 and what their relationship with Robinhood is. Yet the record provides little information on that front. Thus, in the Court’s view, the best course is to grant Robinhood’s Motion as to willful infringement, and if Plaintiff believes it can (and should) pursue such a claim here, then in a further amended pleading, it can attempt to set out the factual basis for such a claim.

But that's not all ...

Trials in ANDA cases (also known as Hatch-Waxman cases) are usually very efficient matters. There is no jury, and the judges, lawyers, and witnesses that regularly try and participate in ANDA cases are well-practiced at maximizing the amount of evidence presented in each trial day (even where the issues are quite complicated and the parties numerous). So ANDA trials are often short, sometimes just a few days from start to finish.

Occasionally, however, even ANDA cases are too complicated to fit into a one-week-or-less trial. For example, Judge Stark recently stated that he may allocate up to 25 hours per side in an ANDA case set to go to trial later this week.

Sierra Nevada Mountains
Sierra Nevada Mountains Alistair Corden, Unsplash

The defendant in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No. 14-1102-RGA (D. Del.), argued that the PTAB's previous invalidation of several claims of the plaintiff's patents in an IPR meant that the plaintiffs were collaterally estopped from asserting the validity of the remaining claims—the claims that were not invalidated—at the district court.

Defendant argued that:

  • The Federal Circuit has held that collateral estoppel applies to IPR proceedings generally;
  • The Supreme Court has held that agency decisions may have preclusive effects during later court proceedings; and
  • The Federal Circuit has extended collateral estoppel effects to unajudicated claims when there were no material differences between those and …

Jamie Street, Unsplash

Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.

Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.

Last week, Judge Andrews …