A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2023

An Attorney Declaration

Nathan R. Hoeschen, March 23, 2023

ne of the more common questions to Delaware counsel is "do I need an attorney declaration to accompany exhibits?"

I do declare! There is something a-very wrong with my hands!
I do declare! There is something a-very wrong with my hands! AI-Generated, displayed with permission

The answer, thankfully, is no. No Delaware rule requires them—you can attach those suckers right to your brief and be done with it. Easy peasy (legally speaking).

The lone place I do see them occasionally used is in support of summary judgment motions. One reason is that there's often a lot of exhibits and a declaration can act as a convenient table of contents. I've also sometimes seen it suggested that an attorney declaration might shield the attached exhibits from challenges under FRCP 56(c)(2) "that the material cited to support or dispute a fact cannot be presented in a form that would be admissible in evidence." How exactly it might do so is not clear, but I've never seen a decision on the issue going either way.

Until today.

The attorney declaration in MirTech, Inc. v. AgroFresh, Inc, C.A. No. 20-1170-RGA (D. Del. Mar. 23, 2023) (Mem. Op.) was of the usual sort—a representative ...

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A Stipulated Judgment Pending Appeal Must Have "Sufficient Detail"

Andrew E. Russell, March 22, 2023

Coals Fire
Pawel Czerwinski, Unsplash

In Continuous Composites, Inc. v. Markforged, Inc., C.A. No. 21-998-MN (D. Del.), after claim construction, the parties filed a stipulation of non-infringement of some of the asserted patents pending appeal to the Federal Circuit.

This is something that happens from time to time in circumstances like this, where the Court's construction means that the patentee cannot show infringement—and where the patentee wants to appeal the construction without having to litigate further.

In Continuous Composites, the parties stipulated that the Court would enter judgement of non-infringement on the patents with the claim construction issue, whenever the Court enters judgment on one remaining patent that apparently lacked that issue:

In view of the Court’s …
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Court Sua Sponte Suggests Transfer of Patent Action, Directs Parties Opposing Transfer to File Briefs

Andrew E. Russell, March 22, 2023
Transfer

Subway platform
Eddi Aguirre, Unsplash

Today Judge Andrews issued a memorandum order addressing a motion to dismiss in Metrom Rail, LLC v. Siemens Mobility, Inc., C.A. No. 22-49-RGA (D. Del.). He denied the motion (noting that "Allegations of direct infringement do not require much"), but questioned why the patent action was filed in Delaware at all:

The Court cannot help but note that it appears that the case should be transferred to the Southern District of New York, which would clearly have a much greater interest in a case that is all about the New York MTA [the Metropolitan Transportation Authority], its bid processes, and Plaintiff's allegations of nefariousness in connection with the same. Perhaps there is …
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Someday Law Will Find You, Break those Chains that Biiiinnd You

Nathan R. Hoeschen, March 21, 2023
Claim Construction

As a lawyer I am a creature of rules. Bound in a cage of local rules, standing orders and conventions, I sometimes struggle to see the possibilities that lay beyond. What might be seized if we broke those bonds?

AI-Generated, displayed with permission

It turns out, nothing good.

Few cases illustrate this lesson better than Bausch & Lomb Inc. v. SBH Holdings LLC C.A. No. 20-1463-GBW-CJB (D. Del Mar. 20, 2023) (Oral Order). Earlier this month (following a bit of a trend in the district), Judge Burke issued an oral order requiring the defendant to clarify its claim construction positions:

The Court, having reviewed the parties' Joint Claim Construction Chart ("JCCC"), hereby ORDERS that by no later …
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Judge Andrews Finds That "Analysis Engine" and "Event Classification Engine" Are Means-Plus-Function Terms (And Indefinite)

Andrew E. Russell, March 20, 2023
Means-Plus-Function Claim Construction

This is the kind of engine that has structure.
This is the kind of engine that has structure. Markus Spiske, Unsplash

There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.

Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.

Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:

I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).

The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff ...

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Judge Noreika: "The Court Will Not Act as a Negotiator to Whittle Down Overly Broad [Discovery] Requests."

Andrew E. Russell, March 17, 2023
Meet-and-Confer Discovery Dispute

Attorneys
AI-Generated, displayed with permission

Judge Norieka issued a notable oral order earlier this week in Neurocrine Biosciences, Inc. v. Lupin Limited, C.A. No. 21-1042-MN (D. Del.).

The context is not fully clear from the docket, but it looks like the parties contacted the Court to initiate a discovery dispute regarding the sufficiency of the plaintiff's document collection efforts. But, instead of issuing the typical order starting the process, Judge Noreika ordered the parties to meet-and-confer again and set some expectations as to how the Court will handle the dispute:

ORAL ORDER - The parties have requested a discovery dispute teleconference regarding Defendants' request for discovery into the search methods Plaintiff used to find responsive documents. IT IS HEREBY ORDERED that the parties shall meet and confer again. Thereafter, on or before 5:00 PM on 3/20/2023 [five days from the order], the parties shall provide the Court with the current version of the discovery requests, explaining what part or parts remain in dispute. The Court will not act as a negotiator to whittle down overly broad requests. Therefore, Defendants should propose requests of appropriate scope with the understanding that the Court may simply deny requests that are overly broad on their face.

It looks like the Court may be trying out a more efficient way to resolve disputes over discovery requests.

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The True Protagonist of Delaware's Redaction Saga

Nathan R. Hoeschen, March 16, 2023
Redactions

As Judge Connolly famously noted in his "star chamber" opinion, part of the reason over-redaction is a problem is that the parties themselves have no real incentive to challenge one another on the issue. It's akin to a tragedy of the commons scenario, but worse—the parties suffer no adverse consequences from the redactions at all, because they can see all of the filings, it is only the public at large that is left with questions.

This unfortunate equilibrium is disrupted, however, when a third party requests unsealing.

It Is I, an Interested Third Party!
It Is I, an Interested Third Party! AI-Generated, displayed with permission

That's exactly what happened this week in United States of America v. Gilead Sciences, Inc., C.A No. 19-2103-MN. For those who haven't been following this fascinating case, the CDC has various patents on an HIV prophylaxis regimen (known as PrEP in the biz), following years of research into the issue. Gilead markets two blockbuster PrEP drugs—Truvada and Descovy—which the government alleges infringe those patents. The Complaint is rife with allegations that Gilead has been gouging customers with its pricing for these allegedly infringing drugs. See D.I. 1 at 48-49 ("Another critical barrier to increasing access to PrEP in the United States has been
the cost of Truvada®, which presently is only sold by Gilead"; "Many AIDS activists and many in the medical community have criticized Truvada’s price in the United States, particularly in light of HHS’s patents, the Government’s funding of clinical research on PrEP, and the relatively low cost at which Gilead apparently makes the product").

TL;DR, the case is a big deal even to normies. So, it probably shouldn't have come as a huge surprise when ...

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Opinion: The Third Circuit's Proposed 5 p.m. Filing Deadline Is a Good Idea and the Arguments to the Contrary Are Wrong

Andrew E. Russell, March 15, 2023
Filing Deadline

Hourglass
Aron Visuals, Unsplash

The Third Circuit Court of Appeals announced a proposed rule change recently that implements a 5 p.m. filing deadline:

26.1 Date of Filing and “Last Day”/ Deadline for Filing
Documents received by the Clerk by 5:00 p.m. Eastern Time will be filed as of the day of receipt and documents received after 5:00 p.m. will be filed as of the next day the clerk’s office is open, regardless of the means of transmission (electronic filing or otherwise). Documents received by 5:00 p.m. Eastern Time on the last day for filing will be considered timely filed, unless a different time is set by a statute, local rule, or court order. Documents received after 5:00 p.m. Eastern Time …
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Claim Narrow, Claim Broad

Nathan R. Hoeschen, March 14, 2023
Claim Narrowing

This morning I woke up and everything hurt. It was cold, and my old house made a sound like a sad kazoo with every mournful gust of wind. I'm still working out the physics of that last bit. As I sat down to my porridge, I admitted to myself that I was old.

More than usually cursed art (FYI, it's supposed to be a kazoo)
AI-Generated, displayed with permission

Anyway.

All this is to say that I felt like nothing was going my way. So I empathized with the filers of a seemingly simple stipulation in Cleveland Medical Devices, Inc. v. ResMed Inc., C.A. No. 22-794-GBW.

The scheduling order there differed from Judge Williams' form in that it added a specific provision for the reduction of prior art, limiting the number of claims asserted for each patent, as well as the number of prior art references for each patent:

The parties shall reduce the number of asserted claims and asserted prior art used for anticipation and obviousness combinations as follows:
• On January 9, 2023 . . . Plaintiff shall serve an Initial Election of Asserted Claims, which shall identify no more than 64 total asserted claims, and no more than 10 asserted claims per patent.
• On February 8,2023 . . ., Defendant shall serve an Initial Election of Prior Art, which shall identify no more than 64 total references and no more than 10 references per patent that can be used for anticipation or as combinations for obviousness . . .

Id. at D.I. 41 Paragraph 3(g).

Later, the parties had a dispute over the per-patent cap ...

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Judge Fallon Denies Discovery on Unlaunched, Abandoned, and Future Products—But Defendant Can't Redact That Information from Otherwise Responsive Docs

Andrew E. Russell, March 13, 2023
Document Production Accused Products

Abandoned
Cédric Dhaenens, Unsplash

Judge Fallon made an opinion public today that deals with whether a plaintiff can get discovery on unlaunched, abandoned, and future products in the lead up to a preliminary injunction hearing. The Court held that discovery on those products was not proportional to the needs of the case:

Zwift has shown that the document discovery requested by Wahoo is not proportional to the needs of the case at this stage of the proceedings. (D.I. 72) The complaint establishes that Wahoo was aware of Zwift’s unlaunched and abandoned hardware products, yet it did not raise these products in its motion for a preliminary injunction, indicating that the relevance of the requested discovery to the preliminary injunction inquiry …
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