A Blog About Intellectual Property Litigation and the District of Delaware


Patent
Patent

Coffee Equals
Charles "Duck" Unitas, Unsplash

Most patent litigators know that the reverse doctrine of equivalents exists, and provides a way to argue non-infringement even if an accused product meets the literal terms of a claim. But it tends to be one of those issues that floats around in the ether, waiting for the right case, and it is rarely applied in practice.

Judge Connolly had an occasion last week to address the issue, resolving a motion for summary judgment of no reverse DOE, and took the opportunity to dig into some of the history of the reverse doctrine of equivalents. He first quoted the Federal Circuit's description of what the doctrine is:

the reverse doctrine of equivalents . . …

What I imagine claim construction arguments looked like
Immo Wegmann, Unsplash

Last week, Judge Noreika issued an interesting oral order regarding a claim construction dispute that was briefed—haphazardly, apparently—in the parties' summary judgment papers.

She criticized the briefing, ordered the parties to meet-and-confer and file ordinary claim construction briefing, and threatened sanctions if the parties don't try hard enough to reach agreement:

ORAL ORDER − In their summary judgment papers, the parties include arguments that either three or four additional claim terms must be construed by the Court. The parties' arguments are disjointed, do not focus on the intrinsic evidence and do not demonstrate any real understanding of what that other side's construction is. Thus, IT IS HEREBY ORDERED that, on or before 5:00 PM on …

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 …

You know what they say about eggs in baskets...
You know what they say about eggs in baskets... Natalie Rhea, Unsplash

In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.

This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.

A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …

We dug up a transcript.
We dug up a transcript. Jon Butterworth, Unsplash

Last week, in deciding a renewed motion to stay pending a § 101 motion to dismiss, Judge Burke commented on the likelihood of success of such motions:

The Court, having reviewed the parties' letters relating to Defendant's request to renew its motion to stay, . . . hereby ORDERS that the request is DENIED. . . . [I]n light of the circumstances here (including the statistical unlikelihood of prevailing on a Section 101 motion to dismiss as to each of the four separate patents−in−suit), the Court concludes a stay is not warranted.

Defendant had renewed the motion to stay after Judge Burke denied it in late April. That transcript was …

Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:

He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":

The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.

He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the …

Nope
Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …

A peloton?
Jonathan Petit, Unsplash

Before § 101 got big in the early-to-mid 2010's, I recall there being a lot more discussion about construing claims—particularly software claims—to be means-plus-function claims, and then trying to get them invalidated under § 112 ¶ 6 for lack of corresponding structure.

Lately that issue seems to be litigated less frequently, but an order from Judge Andrews today shows that it hasn't faded away completely.

He looked at two claim elements:

a [] translator device adapted to translate data between the exercise communication protocol and the computer communication protocol.

and

translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative …

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

353? Ridiculous.
Andrew E. Russell, CC BY 2.0

Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."

These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …