A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: May 2021

Judge Noreika Points Out Nuance in O2 Micro, Declines to Construe Term

Andrew E. Russell, May 17, 2021
Plain Meaning Claim Construction

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …
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Update on Upcoming Jury Trials: First D. Del. Patent Jury Trial to Start?

Andrew E. Russell, May 14, 2021
COVID-19 Trial Calendar

Summer Green Wheat
Artem Kniaz, Unsplash

It's been about two weeks since we last talked about the upcoming trial schedule. In that update, we noted that D. Del. jury trials are truly back, with at least one criminal jury trial having already concluded.

First Post-COVID Patent Jury Trial Next Week?

It looks like In Re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA (D. Del.) is still on track to be the first post-COVID-19 patent jury trial. It is set to start on Thursday 5/20 before Judge Andrews, and from all appearances it will go forward.

To my knowledge, the Court's COVID-19 protocols are still in effect; as such, only one jury trial may proceed at a time …

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Does Filing an Amended Complaint Moot Your Preliminary Injunction Motion?

Andrew E. Russell, May 14, 2021
Motion to Stay Preliminary Injunction

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David Clode, Unsplash

In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.

Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.

Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.

After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …

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The Goldilocks Fallacy

Nathan R. Hoeschen, May 13, 2021

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Hans-Jurgen Mager, Unsplash

How many 101 motions are too many? How many are too few?

There's a limit to the number of claims you can reasonably brief, especially if there's no agreement on representative claims. Moreover, if you're accused of infringing 2076 claims at the start of case, you can be fairly sure that most of them will drop out of the case naturally as the case progresses. So it might make sense to just eat the elephant bite by bite -- challenge 1 or 2 claims that are both vulnerable and likely to stay in the case.

On the other hand, dismissing just one or two patents might not do much to make your life easier going forward …

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Correction: Judge Connolly Does NOT Permit Formal Argument on Indefiniteness at Markman

Andrew E. Russell, May 13, 2021
Corrections IPDE

Last month, we took a look at how the different judges handle indefiniteness at Markman, a question that comes up a lot.

We reported that every judge will hear argument about indefiniteness issues at Markman. But in the Judge Connolly specific section, we noted that he has never held a term indefinite in a Markman opinion, and has instead deferred ruling on the issue until summary judgment (citing two examples). See the full post for details.

Yesterday, at a hearing, Judge Connolly mentioned a blog post and stated that the post was incorrect in suggesting that he considers indefiniteness at Markman. He clarified that he does not permit indefiniteness argument at Markman. Instead, he might entertain early …

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Can You Depose Claim Construction Experts in Delaware?

David M. Fry, May 12, 2021
Claim Construction

By and large, the view from the bench is that expert testimony provides little value in the claim construction process. It's litigation-driven extrinsic evidence, and it often plays no role in the court's final analysis. But if you choose to rely on an expert during claim construction, will you have to make them available for deposition?

Judge Stark answered this question on Friday with a resounding yes. After reiterating the general view that "[e]xpert opinions and declarations constitute extrinsic evidence . . . and are at times unhelpful," he confirmed that:

a party asking the Court to rely on such extrinsic evidence should expect to make its expert(s) available for deposition prior to a claim construction hearing, should …
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Judge Connolly Tosses Damages Opinion Based on CEO's Testimony

Jeff Castellano, May 11, 2021
Damages Lanham Act

In a recent Daubert ruling in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662-CFC-CJB, Judge Connolly excluded the opinion of the plaintiff's expert regarding "corrective advertising damages," in part because it was based on "vague, undocumented, and back-of-the-envelope . . . estimates" by the plaintiff's CEO. The Judge granted the defendant's motion to exclude the expert's testimony under both Rule 702 and Rule 403, indicating that not only did the expert's opinion fail to satisfy the Daubert hallmarks for admissible expert testimony, it would also confuse the jury and be prejudicial because it "would essentially place the imprimatur of an expert on [the CEO] Maag's undocumented and dubious damages calculation."

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Judge Andrews Rejects Theory that Prior Expert Testimony Was a Party Admission

Andrew E. Russell, May 10, 2021
Motion in Limine MIL

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …
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Judge Fallon Rejects Reliance on COVID-19 Stay Opinions for New Stay Motion Now that Jury Trial Ban Is Lifted

Andrew E. Russell, May 7, 2021
COVID-19 Trial Calendar

Judge Fallon today rejected a motion to stay in Minerva Surgical, Inc. v. Hologic, Inc., C.A. No. 18-217-JFB-SRF (D. Del.), where the defendants tried to rely on COVID-19 opinions as precedent to support a further stay of the August 2021 jury trial.

Not stopping
Jorgen Hendriksen, Unsplash

Defendants tried to argue that the current trial date is tentative and COVID-19 uncertainty supports a further stay:

Although discovery is complete, the trial date is merely tentative and “subject to courtroom availability and the priority of other trials previously scheduled ahead of it.” . . . Moreover, as the Court observed in American Axle, “the ongoing impact of the coronavirus pandemic would render it imprudent to set a trial date at this time.” 2021 WL 616992, at *2; Brit. Telecomms. PLC v. IAC/InterActiveCorp, C.A. No. 18-366-WCB, 2020 WL 5517283, at *5 (D. Del. Sept. 11, 2020) (“[I]n light of the COVID-19 pandemic, it seems highly unlikely that the present schedule will hold. . . . And once trials resume, the district court will be faced with the challenge of dealing with the backlog of civil cases that has built up . . . .”); Order at 3, Pact XPP Schweiz AG v. Intel Corp., C.A. No. 19-1006-JDW, D.I. 277 (D. Del. Nov. 5, 2020) (Ex. 1) (“The Court is also mindful of challenges it and the Parties face due to Covid-19 and corresponding restrictions. If this case were to proceed on its current schedule, the trial would likely be subject to significant delays.”).

Magistrate Judge Fallon rejected this argument outright:

Pursuant to the court's April 5, 2021 Notice, the suspension of civil jury trials has expired ...
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Judge Noreika's Construction Limits, Revisited

Nathan R. Hoeschen, May 6, 2021
Markman Briefing 10 Terms

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Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

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