A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: December 2021

Judge Fallon Finds "Good Cause" to Amend Infringement Contentions

Jeff Castellano, Dec. 15, 2021
Contentions

Chief Judge Connolly requires that the parties to his cases provide fairly detailed infringement and invalidity contentions early in the schedule, and requires a showing of good cause for any amendments to those contentions.

The question of what constitutes "good cause" is fact-specific, but Judge Connolly's form scheduling order does provide some helpful guidance:

Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include (a) recent discovery of material prior art despite earlier diligent search and (b) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.

Recently, the plaintiff in Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, moved to amend its infringement contentions. The motion was referred to Magistrate Judge Fallon.

The plaintiff (Volterra) had initially accused...

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The Scope of "Substantially Similar" Product Accusations

Emily DiBenedetto, Dec. 14, 2021
Accused Products Contentions

Shades of Coffee

Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?

Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):

(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.

In an order last week, Judge Fallon denied ...

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No Likelihood of Success = No Injunction, Despite Strong Showing on Harm and Public Interest Factors

Andrew E. Russell, Dec. 13, 2021
Preliminary Injunction TRO

Broken
CHUTTERSNAP, Unsplash

We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.

Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:

ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …
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Judge Hall Weighs § 271(g) Allegations

Jeff Castellano, Dec. 11, 2021
R&R MTD

Last week, Judge Hall denied a motion to dismiss claims of infringement under 35 U.S.C. § 271(g), finding that the plaintiff had "barely met the low threshold for alleging infringement of the asserted patents." The plaintiff's amended complaint alleged that the defendants imported and sold phone displays that were "remanufactured" overseas using patented methods of removing damaged glass covers from mobile phone displays so that replacement glass can be attached.

Broken Screen
Broken Screen Samsung Galaxy S6 with shattered screen, Ashkan Forouzani, Unsplash

Judge Hall's R&R, issued in Viking Techs., LLC v. Squaretrade Inc., C.A. No. 20-1509-CFC-JLH, addressed four arguments made by the defendant, namely that the amended complaint: (1) did not adequately allege that the remanufacturing process performed all of the claimed steps; (2) failed to attribute specific misconduct to either defendant; (3) did not allege pre-suit notice; and (4) failed to allege infringement under 271(g) because the accused devices are not "made" by the accused process and are "materially changed" by subsequent processes.

On the first argument, the sufficiency of the allegations that the remanufacturing process met all claimed steps, Judge Hall found that "Viking has barely met the low threshold" for pleading infringement. Although the allegations of infringement in the complaint largely tracked the claim language, and did not include allegations of infringement for every claim mentioned in the complaint, Judge Hall found that the allegations were "sufficient to provide Defendants notice of the grounds on which Plaintiff’s claims rest," including "what portion of their business—mobile device repair—and what specific products—those that have had the display assemblies repaired/remanufactured—are accused of infringement." Citing the Federal Circuit's Nalco decision, she explained that there is simply "no requirement that a plaintiff plead facts establishing that each limitation of an asserted claim is met." ...

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Time Keeps on Slipping

Nathan R. Hoeschen, Dec. 9, 2021
Late

Analog Clock
None, Ocean Ng, Unsplash

One of the countless charming features of practicing in Delaware is the 6:00 filing deadline. Set forth many (well, seven) years ago in a standing order titled "Revision to Electronic Case Filing Policies and Procedures," I have little doubt that this sensible order has saved the Delaware Bar thousands of late nights over the years.

I'm sometimes asked what might happen if something were to be filed a bit after the deadline. The text of the standing order simply notes that documents (other than initial pleadings, which are due at midnight), are not "considered timely filed and served that day" but leaves it to the rich general law of tardiness to supply any penalty. …

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A New Front in Patent Litigation? Accused Infringer Seeks Temporary Restraining Order to Reverse Product Delisting on Amazon.com

Andrew E. Russell, Dec. 8, 2021
Preliminary Injunction UPNE

Warehouse
Adrian Sulyok, Unsplash

Here's one I haven't seen before. In EIS, Inc. v. Intihealth GER GmbH, C.A. No. 19-1227-LPS (D. Del.), the counterclaim-defendant filed a motion for a TRO to force the patentee defendant to withdraw infringement notices it provided to Amazon.com regarding the counterclaim-defendant's products, and to force them to request that Amazon restore the product's ranking and reviews on the site:

Plaintiff EIS Inc. (“EIS”) respectfully moves the Court to grant a temporary restraining order to enjoin Defendants, requiring them to withdraw their patent infringement notice(s) to Amazon that reference EIS’s “Satisfyer” products, and ordering that the withdrawal shall request that Amazon restore EIS’s product listings with the same rankings and customer reviews …
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Defendant Loses § 101 Motion After Inadvertently Contradicting Itself In Briefing

Andrew E. Russell, Dec. 7, 2021
§ 101 Section 101

Conventional components arranged in an unconventional way.
Conventional components arranged in an unconventional way. Devilz, Unsplash

Judge Burke today denied a § 101 motion to dismiss relating to a patent with a single, lengthy claim related to a new type of system-on-a-chip (SOC) that eliminates redundant components by using multiple "media processing units."

The claim sets out the structure of the apparatus, including that the media processing units have certain features and functions:

1. An apparatus for processing data, comprising:
a plurality of media processing units, each . . . :
a multiplier . . . ;
an arithmetic unit . . . ;
an arithmetic logic unit . . . ; and
a bit manipulation unit . . . .
each of the plurality of media processors for performing
at least one . . . operation comprising:
receiving . . . an instruction . . . ;
receiving . . . input/output data . . . ;
processing the data . . . ; and
providing at least one . . . result . . . .

Judge Burke found that the claims were not directed to the abstract idea ...

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Video From Judge Stark's Recent Appearance Before the Senate Judiciary Committee

Andrew E. Russell, Dec. 6, 2021
Fed. Cir. Congestion

As we've mentioned, Judge Stark has been nominated to the Federal Circuit. He had his nomination hearing before the Senate Judiciary Committee last week. The full video is available on the Judiciary Committee web site: Link to Video.

In the video, Judge Stark's introduction by Delaware Senators Carper and Coons starts at 49:27, and Judge Stark himself appears at 1:04:42. The introductions are about 7 minutes long, and the questions run for about 30 minutes.

Some highlights about Judge Stark, mostly from the introductions:

  • 14 years on the bench
  • 6000 civil and criminal cases
  • 2400 patent cases
  • 93 trials (63 patent trials)
  • 2100 written opinions
  • Only 2% of his opinions reversed or affirmed with criticism

As …

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How Often Do Parties Consent to Magistrate Judge Jurisdiction for Patent Cases in the District of Delaware?

Andrew E. Russell, Dec. 3, 2021
Magistrate Judges

Chess
Hassan Pasha, Unsplash

In light of how busy the District of Delaware is right now, between COVID-19-related trial delays and just the ongoing burden of complex of patent filings (not to mention the likely impending departure of Judge Stark), I was curious just how often parties consent to jurisdiction over an action by a magistrate judge.

After all, we've all seen the "notice, consent and referral forms re: U.S. Magistrate Judge jurisdiction" that are filed in new cases. Surely parties sometimes take the Court up on this, right?

The answer appears to be: yes, but not all that often. At least according to Docket Navigator, there have been only 12 cases in the District of Delaware since 2012 where …

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Who Do You Want to Decide Your § 101 Motion

Nathan R. Hoeschen, Dec. 2, 2021
101

As we discussed earlier this week, Judge Stark's last § 101 day (maybe ever) was a real coup for the patentees, with all 6 patents surviving. This is, of course, the ultimate continuation of a years-long trend in these hearings with § 101 motions facing harsher and harsher odds.

What we at IP/DE have not discussed is how this trend compares to the averages for our other judges. Running the numbers on the 10 most recent rule 12 motions on 101 issues, the results are as follows:

  • Judge Stark - 20% of § 101 motions granted
  • Judge Andrews - 60% of § 101 motions granted
  • Judge Noreika - 0% of § 101 motions granted
  • Chief Judge …
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