A Blog About Intellectual Property Litigation and the District of Delaware


SRF
The Honorable Sherry R. Fallon

A few days ago, Magistrate Judge Fallon denied a request to stay her discovery ruling pending the losing party's objections and review by the District Judge. Defendant SXM in Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184-JFB-SRF asked Judge Fallon to follow the parties' "agreed-upon practice" to stay discovery rulings pending objections, a practice the parties had apparently followed in two prior instances.

Or not.
Or not. Erik McLean, Unsplash

On October 7, Judge Fallon ordered that the plaintiff's experts should have access to defendant SXM's confidential information. About a week later, the parties submitted a letter setting forth their respective positions on whether the discovery ruling should be stayed.

Judge Fallon declined to stay her ruling. She noted that...

PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails RCA

Yesterday, Magistrate Judge Fallon granted a motion for sanctions against One World Technologies, Inc., a defendant in a patent action, for failing to produce the bulk of its e-mail until 13 months after the plaintiff's initial request.

Defendant One World initially produced only 13 e-mails in response to plaintiff's requests, served back in April 2020. According to a later declaration of counsel, One World's attorneys had received multiple gigabyte's worth of .pst files containing e-mail from the agreed-upon custodians. But they found those files to be corrupted, and they relied on their clients' determination that all but 134 of the e-mails were unrecoverable. …

This remote definitely can't decode compressed video streams by itself.
This remote definitely can't decode compressed video streams by itself. Glenn Carstens-Peters, Unsplash

Prosecution disclaimer can be tough to prove. Practiced prosecution counsel seem to know how to phrase things in such a way that a patent examiner understands them to be different from the claimed invention, but a later court may still find the opposite.

In an opinion today, Judge Andrews reversed a prosecution disclaimer finding by Magistrate Judge Fallon. The patent claims involves a "tethered digital butler" that can perform smartphone-like functions in a lower-cost way by using cheaper hardware that may be "tethered" to a desktop computer, which takes care of the heavy lifting.

Specifically, the claims discuss a "palm held remote," and the parties disputed …

We've written about the strong presumption of public access in the Third Circuit, which has led the D. Del. judges to push back on sealing requests in recent years. Judges frequently deny requests to seal judicial records (like hearing transcripts and opinions), and some have taken a more active role in monitoring sealed filings on their dockets.

On Tuesday, for example, Magistrate Judge Fallon ordered a party to provide "a factually detailed explanation" for why the exhibits to the redacted version of a sealed letter brief met the Third Circuit standard for sealing:

ORAL ORDER TO SHOW CAUSE re: D.I. 161 : On or before close of business on July 14, 2021, Defendants shall submit a letter …

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 …