A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2023

Take That, Boat News!

Nathan R. Hoeschen, Sept. 7, 2023
Prior Art

Casual readers might not be aware, but we at IP/DE have a long-running feud with the Swedish publication, "boat news." They think they're so great just because they're all so tall and they write about cool boats. Well, someone finally had the nerve to tell those ruggedly handsome jerks what for.

Wahhhhhhh! No one reads my boat magazine!
AI-Generated, displayed with permission

That brave soul was Judge Andrews in yesterday's opinion in MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-92 (D. Del. Sept. 6, 2023) (Mem. Op.).

The defendant, Waydoo, alleged that the asserted patent was anticipated by a paper written by a bunch of Swedish engineering students as part of a project. Unlike the famous thesis in In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986), the students project wasn't indexed in a library, but was simply placed on the website for the college course. Apparently, it was downloaded by 17 people.

A dispute thus arose as to whether this paper was "publicly accessible" (and thus prior art). In support of the contention that the paper was accessible, Waydoo noted that Boat News had written an article about the project that included a link to the paper (riveting, I'm sure). Waydoo contended that this article would have led the magazines many readers to the paper.

Judge Andrews, however, noted the obvious flaw ...

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Court Grants JMOL and Reverses $19m Verdict Against Google—Did Google's Motion in Limine Save It?

Andrew E. Russell, Sept. 6, 2023
MILs Motion in Limine

Audio Player
Firmbee.com, Unsplash

Motions in limine can feel like some of the most impactful-feeling motions in the case. Unlike most motions in our busy federal courts, they are typically addressed very quickly, and almost always by the judge handling trial. They are also normally addressed immediately prior to trial. As such, even if the MIL is denied, the issues presented in the MIL may remain at the top of the judge's mind and can influence the direction of the trial (and make subsequent objections easier).

We got an example of that yesterday in Personal Audio, LLC, v. Google LLC, C.A. No. 17-1751-CFC (D. Del. Sept. 5, 2023). In that case, Chief Judge Connolly granted a post-trial JMOL …

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A Neat On-Sale Bar Fact Pattern

Nathan R. Hoeschen, Sept. 5, 2023
On-Sale Bar

Today, I present a gift to the many patent law professors that read this blog every morning (presumably). I give you a truly odd fact pattern that can be inserted neatly into your next exam, and which is guaranteed to annoy your students. All I ask in return is that you require those students to subscribe to the blog in perpetuity, on penalty of failure.

AI-Generated, displayed with permission

Deal? Deal.

The issue here was the on-sale bar. As a quick refresher, that's this bit of 102:

A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

The patents in W.R. Grace & Co. v. Elysium Health, Inc., C.A No. 20-1098-GBW (D. Del. Aug 30, 2023) covered distinct crystal forms of a compound called "NCRI." Shortly before the critical date of July 24, 2013, the patentee had agreed to sell some NCRI to a customer. There was a PO and ...

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Competitor Cannot Escape DJ Action, Even Absent Specific Allegation of Infringement

Andrew E. Russell, Sept. 4, 2023
MTD Motion to Dismiss

It's clear who was the faster draw.
It's clear who was the faster draw. AI-Generated

In Candid Care Co., v. SmileDirectClub, LLC, C.A. No. 21-1180-CFC (D. Del.), SmileDirectClub sued Candid Care—its competitor—for patent infringement of a single patent. Chief Judge Connolly dismissed the case, holding that the patent was patent ineligible under § 101.

The next day, SmileDirectClub sued Candid Care on a second patent in the same family, this time in the Western District of Texas.

But the Western District of Texas transferred the case back to Delaware—and, because it is related to the previous case, it was assigned to Chief Judge Connolly again. Shortly thereafter (perhaps to avoid its second patent suffering a similar fate under § 101), SmileDirectClub granted …

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To Put Right What Once Went Wrong

Nathan R. Hoeschen, Aug. 31, 2023
Declarations Summary Judgment

It's got more of a Rufus from Bill & Ted vibe, but I think you get what I was going for
AI-Generated, displayed with permission

There is probably no more common desire than the ability to go back in time to correct one's mistakes. To use examples from the fascinating life of Jeff Goldblum, you could:

  • Decline that invitation to the trial run of a dinosaur themed amusement park
  • Check your laboratory for bugs before experimenting with teleportation, or alternatively, hire an assistant
  • Suggest someone else lead the pod people away so the group can escape. Ideally, this person would be a bit faster than you.

Most lawyers are bound by more mundane hopes. The job is riddled with tiny-seeming pitfalls with potentially disastrous consequences. Every time you fall into one, you wish you could just call a mulligan and fix …

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Judge Hall Offers Guidance on How Parties Should Redact Transcripts

Andrew E. Russell, Aug. 30, 2023
Sealing Motion to Seal

What the gallery should look like when presenting confidential information
What the gallery should look like when presenting confidential information Andrew Seaman, Unsplash

I know—we have a lot of posts about sealing and redactions. But it's something that comes up in almost every IP case, and it's a place where parties and attorneys tend to get tripped up, with potentially major consequences. I think it's worth the occasional post to keep it at the top of all of our minds.

One of the most common places parties get tripped up is at trial, when they present confidential information when members of the public are in the courtroom and they fail to move to seal.

On Monday, Judge Hall issued an oral order providing some guidance on this issue. She …

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Where there's A Will, There's A Won't

Nathan R. Hoeschen, Aug. 29, 2023
Willfulness Advice of Counsel

Rowan Heuvel, Unsplash

Here's a fun fact for you—in the 7 years since the Supreme Court's decision in Halo, the use of the word "pirate" in Federal Court opinions has increased by 23%. This can probably be attributed to the following passage which shifted the focus of the enhanced damages inquiry from "willfulness" to something a bit looser and more . . . arrrggguable:

The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate . . . .

Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103-04 (2016)

There are worse legacies. But I digress.

The oft-cited loosy-goosy standard above has lead to an interesting split in decisions about how the enhanced damages provision, 35 U.S.C. 284 (which does not specifically reference willfulness), interacts with Section 298 (the only section of the patent act to actually refer to willfulness):

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent . . .

The question is, once a jury has found willful infringement, can the Court then consider the failure to obtain advice of counsel in determining whether to enhance damages?

Last week, Judge Kennelly held that 298 did not prevent the Court from considering the failure to obtain advice of counsel, and awarded ...

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Judge Williams Offers a Judge-Burke-Style Response to a Pre-Institution Motion to Stay

Andrew E. Russell, Aug. 28, 2023
Pre-Institution Stay Stay Pending IPR

I'm not sure if
I'm not sure if "Ddrops" stands for "dew drops." But this is a nice picture regardless. Aaron Burden, Unsplash

We've talked about how pre-institution stays can be tough (but not impossible) to achieve, and about how Judge Burke has sometimes responded to a pre-institution motion to stay by asking for a status report and abbreviated briefing after the institution decision:

Therefore, no later than five business days after the PTAB rules on whether it will institute IPR as to the last of the petitions at issue, the parties shall provide the Court with a status report of no more than two single-spaced pages, indicating the outcome of the petitions and whether Defendant wishes to renew its Motion. If Defendant does wish to renew the Motion then, the Court will set a further (truncated) briefing schedule.

eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB, D.I. 108 (D. Del. Mar. 4, 2022) (Burke, J.).

Last week, Judge Williams adopted a similar view, denying a pre-institution motion to stay but offering to revisit the issue after the institution decision—and to take the previous briefing into account:

ORAL ORDER: Having reviewed Defendant MOM Enterprises, LLC's ("MOM") Motion to Stay Pending Inter Partes Review ("IPR") . . . , IT IS HEREBY ORDERED that the Motion is DENIED WITHOUT PREJUDICE to renew the request if the IPR is instituted. A court has discretionary authority to grant a motion to stay. . . . Because no institution decision has yet been issued, the Court will decline to stay the case until it hears from the PTAB. . . . By no later than five (5) business days after the PTAB issues its institution decision as to the IPR petition relating to the asserted patent, the parties shall file a joint letter updating the Court on the results of the PTAB's decision. If the PTAB grants the IPR petition, and if MOM then wishes to renew its Motion, MOM should include in the joint letter a statement that it intends to renew its Motion. The Court will then set a letter briefing schedule on the renewed Motion. When reviewing the renewed Motion, the Court will take into account the briefs already filed as to the instant Motion. ORDERED by Judge Gregory B. Williams on 8/25/2023.

Ddrops Company v. MOM Enterprises, LLC, C.A. No. 22-332-GBW, D.I. 108 (D. Del. Aug. 25, 2023). This mirrors Judge Burke's previous order, although Judge Williams' order doesn't state whether the later briefing will be truncated—that may depend on the circumstances.

Judge Williams' practice is useful to know because, obviously, it affects the calculus of whether it is worthwhile to bring a pre-institution stay motion at all.

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Highlights from the United States District Court District of Delaware Annual Report 2023

Emily DiBenedetto, Aug. 25, 2023

This report, produced by the Court, is available on the Court's website. I’d encourage our readers to peruse the full report, but we highlight a few interesting statistics and announcements below.

IP Cases Continue to Dominate the Docket

In 2022, there was an increase in jury trials to 19 in the District of Delaware. Patent/IP cases accounted for 44% of all civil filings in the last 7 years and 43% in 2022 alone.

Pie Chart Delaware Docket
The United States District Court: District of Delaware

Nationally, patent filings decreased from 4,037 filings to 3,854. In the District of Delaware in 2022, 685 patent cases were filed, a 23.04 percent decrease from the previous year of 890. Delaware is second in the nation, after …
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Cow/Not-Cow

Nathan R. Hoeschen, Aug. 24, 2023
Markman

Lawyers, especially patent lawyers, are artists in the medium of obfuscation. Much of the job is finding the fuzzy areas at the edges of seemingly straightforward language and tugging at them to suit your needs. At best, it leads to moments of mad brilliance that Van Gogh might envy.

So it was in the case (fast becoming one of my favorites in the district) of a Markman dispute in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del. Aug. 15, 2023).

Person, cow, not cow, camera, tv
Person, cow, not cow, camera, tv AI-Generated, displayed with permission

The term in question was "non-animal."

As you probably gathered from the caption, the patent covered various fake meats (Facon, Soysauge, Ham-pty promises) with "non-animal" ingredients.

Being naturally averse to spoilers, I read the opinion until I got to the disputed term, and then stopped to ask myself "what could the dispute possibly be?" before peaking into the parties' arguments. I sat there a full 10 minutes before shaking my head and giving up.

As it happens, it was more reasonable than it looks at first blush. Impossible argued for the definition I'd immediately jumped to—not from an animal (or in the parlance of lawyers "derived from a non-animal source"). Motif's position, however was that the particular ingredients had to be chemicals (here, proteins) that were "not naturally present in animals" as opposed to merely not harvested from animals in this instance.

Judge Bryson ultimately sided with Impossible for boring science and law reasons. But game recognizes game, so I felt obliged to call out this impressive little dispute. I hope you readers are as inspired as I was.

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