A Blog About Intellectual Property Litigation and the District of Delaware


SRF
The Honorable Sherry R. Fallon

tobias-eggermann-HhIHBmArf0g-unsplash.jpg
Tobias Eggerman, Unsplash

Depositions have been especially hard during the pandemic. Luckily, the quick proliferation of Zoom and its competitors have made it possible to take remote depositions that roughly approximate the experience of angrily objecting across a conference table.

International depositions, however, have remained problematic. In the past, witnesses could simply be shuffled from a country with hugely restrictive deposition procedures to a more friendly jurisdiction -- be it the Netherlands, the UK, a consulate, or even beautiful Delaware.

Travel restrictions and the closing of consular offices have made this a non-starter in many cases and so there has been a bit of a resurgence in proceedings under the Hague as parties struggle to get what discovery they …

Blackjack
Markus Spiske, Unsplash

How many amended complaints does it take before your infringement claims are dismissed with prejudice? As it turns out, it might only be two.

Last July, Magistrate Judge Fallon issued an R&R recommending partial dismissal of a patentee's amended complaint under Twombly and Iqbal (the complaint was amended in response to an earlier motion to dismiss). The plaintiff sought leave to amend its complaint a second time, which the court granted.

But instead of correcting the problems with the first amended complaint, Judge Fallon found that the plaintiff simply repeated them—bringing allegations that were "conclusory" and "lack[ed] any plausible facts supporting such a conclusion."

Perhaps an even bigger issue, though, was the fact that the plaintiff …

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 …

Looks like Judge Fallon is trying out a new way of doing public hearings, with a YouTube mirror of a private Zoom teleconference at 10:00am ET on Tuesday 9/15:

ORAL ORDER- The Markman Hearing on 9/15/2020 will be a public hearing. The YouTube link for interested members of the public to observe the live Zoom session is https://www.youtube.com/watch?v=w-9WpLOvaLk&feature=youtu.be.

NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA-SRF (D. Del.).

The hearing is scheduled to last 3 hours and cover 6 terms.

To my knowledge, this is the first D. Del. hearing to post a public YouTube (rather than Zoom) link, at least in the IP space.

Honestly this sounds like a good way …

A Crack
Crack on white concrete surface, Brina Blum, Unsplash

Two opinions in the past week have come to differing conclusions as to whether the recitation of claim elements in a complaint is sufficient to state a plausible allegation of infringement.

Recitation of Claim Elements Helpful

In the first, Dynamic Data Technologies, LLC v. Brightcove Inc., No. 19-1190-CFC (D. Del. July 20, 2020), the Court denied a 12(b)(6) motion to dismiss an allegation of direct infringement, stating that it was sufficient to:

identif[y] products accused of infringing each of the asserted patents, identif[y] at least one claim of each asserted patent that the accused products infringe, and describe[] how those products infringe the identified claim.

To show …

Cell Tower
Cell Tower Ben Vaughn, Unsplash

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …