As I was reading through Judge Andrews' opinion in Election Systems & Software, LLC v. Smartmatic USA Corporation, C.A. No. 18-1259-RGA (D. Del. Feb. 28 , 2025)—a fairly standard opinion denying a motion for attorney's fees—I noticed an interesting callout:
It is within my discretion to find a case exceptional on the grounds of a plaintiff's meritless section 101 argument so as to "deter similarly weak arguments in the future."On the rare (and I believe only) occasion that I have done so, however, the patent asserted was obviously unpatentable. See Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *l (D. Del. Mar. 18, 2019) ("I have rarely been more confident …
When I started practicing here in the District of Delaware (the decade before last), the typical advice was that a patent case would proceed to scheduling and discovery even if the defendant files a motion to dismiss. Lately, though, several of the District of Delaware judges have been holding off on initiating the FRCP 16 scheduling process when the defendant files a motion to dismiss.
Often, as we've discussed, a smart plaintiff in that situation will file a letter asking the Court to direct the parties to conduct an FRCP 26(f) conference, so that discovery can move forward. Most often that seems to work. …
"I asked plaintiff to pay the cost award, and he just said 'Come at me, bro!' What do you think he means?"AI-Generated, displayed with permission
FRCP 54 provides that the prevailing party is entitled to recover its costs, not including attorneys fees.
In practice, though, that's easier said than done. Recovery of costs is limited both by statute and local rule. Beyond that, plaintiffs in particular may not have a lot of assets, and it may take serious collection effort to get anything out of them. As you can imagine, parties sometimes decide that the likely cost in attorneys fees outweighs what they are likely to actually recover.
But not always! Today, Judge Andrews issued a memorandum order reviewing …
Representativeness is the bête noir of almost every § 101 motion. This is especially true early in the case, when the Court might rightly ask why it should bother invalidating 1 of 2,312,419 currently asserted claims.
This quandary is especially troublesome for defendants because it's often quite difficult to brief representativeness of a large number of claims in the necessary detail.
If you can tell me what claim 9 adds to to claim 8, I will literally eat my own cufflinks and then wear them again! Algorithm? More like Smellsbadgorithm!AI-Generated, displayed with permission
Later in the case, things are a bit different. For one, there's a lot fewer claims at issue (hopefully) so knocking out just a few can make a big difference. Moreover, having a bit of discovery under your belt can make those representativeness arguments easier to make.
Caddo Systems, Inc. et al v. Jetbrains Americas, Inc., C.A. No 22-1033-JLH-LDH (D. Del. Feb. 25, 2025) (Report and Recommendation) had an interesting bit of argument along these lines that I hadn't seen before. The patents at issue there were all directed for a system to "allow a user to more easily navigate a file structure that may have many layers and options."
The parties disputed representativeness (quelle surprise!). One of the disagreements was whether certain claim limitations required a user to select (or have preselected) a menu item by different means. Plaintiff argued that these different means added something to claims that affected the § 101 analysis.
Unfortunately for plaintiff, their expert had submitted an expert report on the doctrine of equivalents, where he had opined that all of these different means actually performed the same function, in the same way, to reach the same result. Judge Hatcher, granting the motion for summary judgment, found this fact persuasive and cited it as an example of how the differences between the claims "do not prevent the Asserted Claims from being conceptually equivalent."
It's a possible contradiction that hadn't occurred to me before, and something to keep in mind when working with your own experts.
"Your honor, in my expert opinion, the law says we win. Their expert is wrong, because he thinks the law says we lose."AI-Generated, displayed with permission
The Court often excludes experts who offer opinions regarding U.S. law itself—but there are some gray areas and circumstances where the Court has permitted such testimony. In patent cases, for example, the Court has typically excluded expert testimony about substantive issues of patent law, but has sometimes permitted experts to testify on PTO procedures (and sometimes not).
This week we got some more guidance, specifically in the context of a bench trial. In Upsher-Smith Laboratories LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW, the Court unsealed an order from last year …
You can tell that I (and pretty much every other lawyer) learned JMOL in a specific and nerdy context.
Pretty much every other collection of letters are pronounced as either an acronym—NASA, SONAR, LOL (this one's a matter of preference)—or an initialism like LMAO, CIA, PB&J.
JMOL, stands proudly atop the divide, too unwieldy to pronounce in either regime.
AI-Generated, displayed with permission
None of this is legally relevant (yet!), but it leads neatly into yesterday's decision in Natera, Inc. v. CareDx, Inc., C.A. No. 20-38-CFC-CJB (D. Del. Feb. 24, 2025). The defendant there made the bold decision of moving for J-MALL that both of the asserted patents were invalid for lack of written description, which the plaintiff naturally opposed.
In support of the motion, defendant pointed to the testimony of its expert to the effect that the specifications failed to disclose all of the various elements of the claimed method being performed together, "as an integrated whole." The plaintiff in response, pointed to the testimony of their expert, but notably ...
Looks like someone got a hole in one. On Friday, Judge Hall issued a relatively short memorandum order granting a § 101 summary judgment motion, and it neatly encapsulates what § 101 analyses seem to be trending towards.
The Court found that the 10 asserted claims, across three patents, are all directed to a simple abstract idea:
I agree with Netflix that each and every one of the asserted claims is directed to “the abstract idea of collecting, organizing, and automatically displaying content (e.g., a playlist of Internet content).” . . . The asserted claims contain a lot of words, and some of those words sound complicated.[] But what the claims cover is not complicated. …
If we keep using this image, people are going to think that all of Wilmington is on the water. Imagine their surprise when they arrive!Andrew Russell, CC BY 2.0
This week, the D. Del. website posted an opening for a term law clerk with Magistrate Judge Hatcher.
As most of our readers probably know, there are two types of judicial clerks: permanent and term. A permanent clerk is, well, permanent. They stay indefinitely. A term clerk stays for, typically, a one-year term, most often starting in September.
Serving as a term clerk is an amazing opportunity for an attorney and I highly recommend it. It gives you an incredible perspective on how the Court works, how judges manage …
Many motions are longshots. Thrown out like a message in the bottle, with little hope that they will ever find a helpful shore. An act born of desperation more than reason.
AI-Generated, displayed with permission
Damages Daubert's are the exception. If you can cobble together a good one, you've got a fair chance of knocking out a big portion of the damages case.
This is exactly what happened last week in Fundamental Innovation Systems Int'l LLC v. Anker Innovations Ltd., C.A. No. 21-339-RGA (D. Del Feb. 11, 2025). The plaintiff there based its damages theories on a series of other licenses that included the patents in suit along with more than 200 other US and foreign patents.
The Looming Parade of Horribles, AI-Generated, displayed with permission
I’m partial to percussion and noticed that there was a gaping hole of staccato in the rising swell of the IPDE music videos, subtle though it may have been in the background of Andrew's singing and Nate’s interpretive dance performances. Leaving the snare drum at home, today I chime in only with the lonely voice of a wistful triangle to supplement this week’s stories with a tale from a faraway land—the Eastern District of Texas.
Why do we in Delaware care about this opinion? It gave me a fresh appreciation for the orderly composition of Delaware scheduling orders. It involved a problem that cannot arise in a District of Delaware …
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