A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2021

Judge Stark Awards Post-Claim-Construction Fees

Jeff Castellano, Sept. 7, 2021
Disclaimer Fees

Late last week, Judge Stark granted defendant's request for litigation fees under 35 U.S.C. § 285 in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, following an award of summary judgment of non-infringement to the defendant and a summary affirmance at the Federal Circuit.

Plaintiff PDIC's patents are directed to virtual reality programs controlled by music or control tracks created from music. Defendant Ubisoft asserted that the accused games manually synchronized the video, soundtrack, and other effects on a timeline, and were not controlled by music or a control track created from music.

During claim construction, Judge Burke found that plaintiff had disclaimed certain subject matter during IPR proceedings...

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Defendant Narrowly Escapes Motion to Exclude After Flippant Remark by Expert at Deposition

Andrew E. Russell, Sept. 6, 2021
Depositions Expert Witness

Judge Burke last month addressed a motion to strike portions of an expert report regarding commercial acceptability of a non-infringing alternative.

As set forth in the report, an expert may rely on experience in the industry, but must explain "how that experience leads to the conclusions reached." Here, the expert opined that an alternative was commercially acceptable, but did not set forth why.

Then, when asked for more detail at his deposition, he responded with a snide comment:

[D]uring his deposition, [the expert] very ill−advisedly made things worse when he responded to a question on this subject by flippantly suggesting that he had "no backing" for the conclusion, and had simply "put [it] in on purpose" because Plaintiffs' expert similarly …
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Judge Andrews Rejects Attempt to Sidestep § 101 Via Amended Complaint

David M. Fry, Sept. 1, 2021
MTD 101

On Monday, Judge Andrews addressed a plaintiff's attempt to cure a § 101 dismissal by amending its complaint—certainly not something you see every day.

Earlier in the case, Magistrate Judge Fallon issued an R&R concluding that one of the asserted patents was directed to ineligible subject matter. Judge Andrews adopted the R&R and granted dismissal without prejudice.

The plaintiff then filed an amended complaint, which contained "eight new paragraphs with allegations . . . tout[ing] the supposed advantages and improved methods of the" previously dismissed patent.

Judge Andrews found that these allegations were not enough to avoid dismissal, granting partial dismissal of the amended complaint with prejudice:

These allegations do not resolve the issues that the Magistrate Judge …
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The ANDA Controls In Infringement Dispute Over ANDA Product's pH

Jeff Castellano, Aug. 31, 2021
ANDA

In a post-trial Hatch-Waxman opinion issued this week, Chief Judge Connolly sided with the defendant regarding the sole infringement dispute: whether the defendant's ANDA product had an infringing pH. The plaintiffs' patents required that the claimed compositions have a pH of between 3.7 and 3.9. The defendant's ANDA undisputedly required that the defendant's generic product have a pH between 3.4 and 3.6. Importantly, the ANDA required that the product stay within the 3.4-3.6 range both upon release and during the stability testing period (24 months).

Given that the ANDA's requirements are binding on the manufacturer of the generic product, and given that the ANDA is the operative document for the purposes of the infringement inquiry in Hatch-Waxman cases, you might think that would be the end of the inquiry. Indeed, Judge Connolly noted that in these circumstances, a judgment of noninfringement "must necessarily ensue."

However, the plaintiffs challenged this conclusion...

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Judge Noreika Permits Recovery of Damages for Some Non-Infringing, Extraterritorial Uses

Andrew E. Russell, Aug. 30, 2021
Foreign Sales Damages

Globe
Gaël Gaborel, Unsplash

Judge Noreika today issued an an opinion regarding a damages jury instruction for an upcoming case. The case involves damages for products alleged to infringe a method claim, which are made or sold in the United States but used only abroad.

Judge Noreika noted that it was undisputed that the uses abroad cannot infringe:

It is well-established (and undisputed) that the manufacture, sale and offer to sell a method is not an act of infringement. . . . And it is also well-established (and undisputed) that patent law is territorial. . . . Thus, to infringe a method claim, the method must be performed in the United States. . . .
The issue here, however, is …
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"What reasonable patent attorney or client representative in those shoes would not say: 'I am unduly prejudiced!'"

Andrew E. Russell, Aug. 27, 2021
Discovery Dispute Stay

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

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More Orders from Judge Andrews Rejecting Sealed Filings

Andrew E. Russell, Aug. 26, 2021
Protective Order Redactions

The dam continues to break on sealed filings.
The dam continues to break on sealed filings. Englebright Dam, Amit Patel, CC BY 2.0

We noted last week that Judge Andrews has been cracking down on parties filing entire exhibits under seal. Since then, he has issued three more orders regarding filings where exhibits were sealed in their entirety. Beyond those, in two instances he has rejected even more limited redactions:

ORAL ORDER: The justification for sealing is non-existent. Apparently, per Ms. Pascales letter . . . , Medacta is the party who wants to redact. The entire document [that was filed] is going to be unsealed on August 27, 2021, unless Medacta submits before then (1) the document with the redactions in yellow highlighting, and (2) a …
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On the Perils of Sandbagging

David M. Fry, Aug. 25, 2021
Sandbagging

Sandbags
Rifugio Lagazuoi - Sandbags, vintage?, Rebecca Siegel, CC BY 2.0

As we've previously discussed, the D. Del. local rules prohibit a party from reserving arguments for a reply brief that "should have been included in a full and fair opening brief" (LR 7.1.3)—a practice commonly referred to as "sandbagging." This rule has real teeth, and failing to follow it can result in strong arguments being ignored altogether.

That's what happened on Monday in a summary judgment R&R from Magistrate Judge Burke. In addressing an invalidity motion that turned on a disputed priority date, Judge Burke found that this was "a disputed issue of fact" and recommend denial.

In addressing one of the defendant's …

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Amended Complaints Fail to Save Patents From Section 101

Jeff Castellano, Aug. 24, 2021
MTD Amended Complaint

Server
electronic wire lot photo, Massimo Botturi, Unsplash

Given the liberal amendment standard in federal court, it is not surprising that plaintiffs faced with § 101 challenges to their asserted patents may attempt to introduce factual issues through amended pleadings to avoid a dismissal.

Judge Connolly recently permitted the plaintiff in the consolidated Realtime Data litigation to amend its complaints after he had twice found plaintiff's patents (involving data compression) invalid under § 101. RealTime Data LLC v. Array Networks Inc., C.A. No. 17-800-CFC.
But the amendments were not enough to save plaintiff's patents, and Judge Connolly walked through the amendments to explain why.

First, the amended complaints asserted that certain claims were not representative of others, and that different limitations "must be considered separately for for the purposes of § 101." But these statements were deemed "conclusory," and in any event, the plaintiff failed to "explain why these limitations are relevant to subject-matter eligibility."

Second, he found that all but one of the "new" claim construction positions were already before the Court, and the remaining proposal (to construe "data accelerator" as "hardware or software with one or more compression ...

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A 353-Page-Long Statement of Contested Facts in a Pretrial Order Is "Ridiculous No Matter What"

Andrew E. Russell, Aug. 23, 2021
Trial LR 16.3

353? Ridiculous.
Andrew E. Russell, CC BY 2.0

Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."

These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …

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