A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: June 2021

The Reference Trap

Nathan R. Hoeschen, June 3, 2021
Wilfulness 12(b)(6)

Overflowing with delicious facts
Overflowing with delicious facts Natalie Grainger, Unsplash

The seeds of a motion to dismiss are often planted in the complaint. To some extent this is unavoidable—for instance, try asserting software patent claims without raising the specter of a § 101 motion. Sometimes, though, you can avoid a motion to dismiss by just including a little less detail in the complaint—and especially by not referring to troublesome documents.

Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., C.A. No, 20-662-RGA, D.I. 103 (D. Del. May 28, 2021) is a good example (we discussed another aspect of this opinion last week). There, Icon brought counterclaims for patent infringement related to a series of patents that the parties had previously litigated, resulting in a settlement agreement and license. Peloton moved to dismiss those claims, arguing that the referenced license disposed of the infringement claims.

The interesting bit is that the license itself was not attached to Icon's counterclaims, but was only supplied to the Court with Peloton's motion to dismiss. In ruling on the motion, Judge Andrews noted that this would normally convert the 12(b)(6) motion into a summary judgment motion, unless ...

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Judge Hall Blunts Hemp Processing Company's Bid for Preliminary Injunction

David M. Fry, June 2, 2021
Legal Writing Trade Secret Litigation

Plants
Matthew Brodeur, Unsplash

In a trade secret dispute over THC remediation processes, Judge Hall recently denied a hemp processing company's motion for a preliminary injunction. The redacted version of her opinion came out yesterday, and it gives some helpful guidance for parties litigating trade secret disputes. It also touches on an important tip for legal writers everywhere.

As usual, one of the key questions was whether the plaintiff adequately identified the trade secrets at issue. This requires a careful balancing act—the trade secret needs to be broad enough to cover what the defendant is doing, but narrow enough to qualify for trade secret protection in the first place.

In trying to walk this line, lawyers are often tempted to use terms like "and/or" to keep their options open. In this case, the plaintiff used "and/or" in defining the scope of two of its alleged trade secrets. This ended up playing an important role in Judge Hall's likelihood-of-success analysis:

Starting with (1), SCB’s definition is not only general, it uses the modifier “and/or,” which suggests to the Court that SCB is attempting to claim as a trade secret the idea of oxidizing THC into CBN. If so, the Court rejects it. As SCB acknowledged at oral argument, the process of oxidation, and more particularly the fact that THC oxidizes into CBN, was well known in 2019.
. . .
Although SCB’s position is not entirely clear, its use of the “and/or” modifier in its interrogatory response suggests that it might be seeking to claim as trade secrets each of the individual “parameters and conditions” set forth in its interrogatory response and every possible permutation. As Defendants’ expert points out, that's 57 potential combinations of trade secrets. (D.I. 47 ¶¶ 29, 30.) SCB does not provide separate argument as to any particular permutation, making it impossible for the Court to determine which combinations of “parameters and conditions” it intends to press.

As legal writing experts ...

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Overlap of One Patent Not Enough to Continue Stay In Favor of ITC Proceedings

Jeff Castellano, June 1, 2021
ITC Stay

In certain circumstances, a stay pending the resolution of an ITC Section 337 Investigation is automatic. But where the overlap in patents is not total, whether to stay proceedings on the non-overlapping patents is left to the discretion of the district court judge.

ITC
The USITC in Washington DC, Toytoy at the English Wikipedia, CC BY-SA 3.0 , via Wikimedia Commons, CC BY-SA 2.0

Judge Andrews recently exercised that discretion to deny a request to continue a stay for non-overlapping patents where one of twelve patents-in-suit was still pending at the ITC.

Initially, five of the twelve patents had been asserted at the ITC. Of those, three were involved in an appeal to the Federal Circuit, and just one was remanded to the ITC.

The defendant in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-RGA argued that all five overlapping patents were subject to a mandatory stay under 28 U.S.C. § 1659(a). ...

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