A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

Redact, Don't Do It

Nathan R. Hoeschen, Sept. 27, 2022
Redactions

Why did they play this song at my prom? I am not that old, and it is surprisingly hard to dance to
Honey Fangs, Unsplash

For the past year or so, we've been tracking Judge Andrews' new practice of rejecting filings that redact exhibits in their entirety with a docket entry like the below:

The redacted filings (D.I. 453 , 454 , and 458 ) are REJECTED because parts of them are redacted in their entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety …
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A Master's Order, A Question Answered, A Chicken Unchained

Nathan R. Hoeschen, Sept. 13, 2022
Pennypack Special Master

So Noble
So Noble Navi, Unsplash

The law can always surprise you. Sometimes this is a bad thing. For instance, I was surprised and saddened to learn that, in the city of Wilmington, you can only have a chicken if it is an emotional support animal who lives at least half of the year in your home. Unfortunately, Learned Claw is not yet house-trained.

Sometimes, though its a good surprise. The sort that you can wring a blog post out of if you can pad it with a personal anecdote (*coughs*).

For instance, I was surprised to learn that there was a dispute about the standard for reviewing one of the most common disputes in all of Delaware -- whether to strike contentions under the Pennypack factors.

The specific context at issue in the painfully long-running case of TQ Delta LLC v. Comcast Cable Communications LLC, was an objection to a Special Master's Order. The underlying dispute was your usual Pennypack issue, with one party complaining that the other had disclosed a new DOE theory too late in the game, and the other arguing that the theory was not really new at all. The Special Master went through all of the usual factors and ultimately struck ...

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Too Far: Judge Andrews Denies Post-Trial § 101 Motion on System for Blending Gasoline and Butane

Andrew E. Russell, Aug. 31, 2022
Prior Art § 101 Section 101

Tanks
Patrick Federi, Unsplash

Judge Andrews resolved what seems like a tough § 101 motion today, and I thought the claims of the patent (and the outcome) were interesting.

The patent involves a system for mixing gasoline and butane. The patent specification said that these fuels were previously mixed in multiple ways, including in a laborious process involving manually adding butane to a tank of gasoline and then stirring the two together.

There were a number of claims at issue, but the one that stands out most to me simply claims the whole system and what it does, without claiming how the components work:

A system for blending gasoline and butane at a tank farm comprising:
a) a tank of …
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Fee Fi Fo Fun

Nathan R. Hoeschen, Aug. 30, 2022
Fees

Ashley Jurius, Unsplash

Typically, parties on the same side of the V like to put up a united front. Whatever things might look like behind the scenes, in public, they make a big show of laughing loudly at each other's jokes and slapping one another on the back with more than necessary force.

Apparently, that all goes out the window when fees are on the line.

Earlier this year, Judge Andrews awarded the defendants attorneys' fees in M2M Solutions LLC v. Sierra Wireless America, Inc, C.A. No. 14-1102-RGA (D. Del. Aug 16, 2022) (Clarifying Order), largely because the plaintiffs had pressed an infringement theory contrary to the Court's claim construction.

As it happened, there were two unrelated …

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Judge Andrews Puts Accused Infringer on Notice that "If It Causes a Mistrial by Poor Preparation or Poor Judgment in Questioning [Certain Witnesses], It Will, at a Minimum, Have to Pay [the Patentee's] Attorney Fees"

Andrew E. Russell, Aug. 22, 2022
Expert Witness Trial Sanctions Expert Testimony Witness Preparation

Be Careful
Josh Frenette, Unsplash

In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).

The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.

That a Lot of Briefing

The parties then filed a stipulation setting …

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Court Strikes Seven New Prior Art Exhibits Offered for the First Time After Post-Trial Briefing (!?!)

Andrew E. Russell, Aug. 17, 2022
Post-Trial Briefing Post-trial Motions Post-Trial Relief Pennypack

Man rushing to get important facts into the record prior to appeal
Man rushing to get important facts into the record prior to appeal Man Holding Handbag, Andy Beales, Unsplash

Wow, it's hard to imagine how a party could have a fact disclosure that is later than this, other than maybe trying to offer new facts for the first time on appeal.

In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the parties had a jury trial in December 2021. The jury found infringement, no invalidity, willfulness, and damages of over $12 million against two defendants. The Court later entered a (mostly undisputed) permanent injunction.

The Court addressed the defendant's § 101 claims by motion and briefing after the …

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Judge Andrews Rejects Attempt to Fix § 101 Issues via Amended Complaint (with Prejudice)

Andrew E. Russell, Aug. 15, 2022
Amended Complaint Motion to Dismiss § 101

Apples at which the patentee will not be getting a third bite.
Apples at which the patentee will not be getting a third bite. Pierpaolo Riondato, Unsplash

Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).

He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:

Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.

Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)

Id. at 19.

Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:

The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...
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The Double Waiver Maneuver

Nathan R. Hoeschen, Aug. 2, 2022
Waiver

daniel-jensen-UDleHDOhBZ8-unsplash
Last summer, Daniel Jensen, Unsplash

We've all spotted a waiver in the other side's papers—some issue that would have been raised earlier or more clearly by a noble opponent in a just world. Normally the issue doesn't merit more than a finger-shaking footnote, but its galling nonetheless.

Forget it Jake, it's Delaware.

An Issue Ignored

This brings us to the convoluted saga of San Rocco Therapeutics, LLC v. Bluebird Bio, Inc. The plaintiff had a license to the patents-in-suit and the parties disputed whether it was sufficient to grant standing. Because that license had an arbitration provision, the defendant moved to stay the case and compel arbitration.

In their opening brief, however, Defendants did not address the threshold …

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Over Objection, Judge Andrews Grants Party's Motion to Correct Its Own Mistaken Statement that Formed Part of Court's Trial Opinion

Andrew E. Russell, July 27, 2022
FRCP 60 Motion to Correct Trial Opinion FRCP 52 Post-Trial Briefing

Bandaid
Diana Polekhina, Unsplash

Here's a motion you don't see every day.

In AstraZeneca AB v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 18-664-RGA (D. Del.), after a bench trial before Judge Andrews, plaintiff had filed proposed post-trial findings of fact that included a definition for a person of skill in the art for the asserted patents.

Judge Andrews then issued a trial opinion finding the asserted claims infringed and not invalid—i.e., a ruling in plaintiff's favor. He adopted plaintiff's proposed definition of a person of skill in the art.

Shortly after the opinion issued, however, plaintiff realized it made a mistake in its proposed findings of fact. It had omitted part of its definition of a person …

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Judge Andrews Requires Plaintiff to Propose Construction for "Plain Meaning" Term the Day Before Markman Hearing

Andrew E. Russell, July 20, 2022
Plain Meaning Claim Construction

Analog Clock
None, Ocean Ng, Unsplash

One of our busiest posts on the blog is What Is "Plain and Ordinary Meaning," Anyway? And Why Do Plaintiffs Want It? This has been a recurring issue for years. Sometimes the Court is OK with a plain meaning construction, but sometimes the it is decidedly not.

Judge Andrews issued an order today for a forthcoming Markman hearing, set for 9:00 am tomorrow, directing plaintiff to propose a construction for one of its "plain meaning" terms by 8:00 pm this evening:

ORAL ORDER: The time for argument at the Markman hearing is reduced to thirty minutes per side. . . . As to disputed term D, the Court thinks construction is …
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