"Your honor, we'd like to drop most of our claims." "Ok, but you're not picking them back up."AI-Generated, displayed with permission
True D. Del. patent litigators know that, no matter which side you're on, you're going to have to narrow your claims and defenses before trial. It's just unwise and unworkable to go into a five-day trial with 100 claims, or with 30 prior art references and hundreds (or millions) of potential obviousness combinations. There isn't time to cover it all.
That said, sometimes the parties in patent cases delay case narrowing for a long time. And while the Court will often narrowing, it doesn't do that in every case. Instead, judges sometimes take the approach that …
This is an issue I've seen come up a few times, but I don't know of another opinion on it offhand.
Source code is typically managed using a source control or version control system, typically (but not always) using a program called git. Git is a command-line program that allows developers to manage different versions of source code in a tree structure called a "repository."
A developer can create a "branch" within the repository, for example, to work on a specific feature. As they work on aspects of the code for that feature, they can "commit" them, along with a message about the purpose of their revisions. When they are done working on that feature, …
It seems fairly well known that while parties can freely stipulate to most kinds of schedule adjustments in the District of Delaware, changing the dispositive motion deadline is a danger zone that might result in the denial of your stipulation—or worse, such as the loss of your trial date.
But people often do it anyway. Yesterday, visiting Judge Bryson denied a stipulation that would move the case dispositive motions deadline to April 25, 2025 for a trial starting July 14, 2025.
Assuming the parties use the briefing schedule under the local rules, the Court will not have a full set of papers until May 16, less than 2 months before the first day of trial. No …
The Court has held in the past that motions in limine cannot be used to bring stealth summary judgment or Daubert motions after the deadlines for those motions (we first posted about this issue over four years ago—wow).
Last week, this issue came up again, this time with a party overtly asking the Court for two additional MILs, beyond the default three, specifically to address summary judgment issues. Unsurprisingly, the Court did not grant the motion:
Defendants seek . . . permission to file two motions in limine beyond the three motions in limine permitted by the Scheduling Order. . . . In Defendants' words: "Two requests will seek to exclude certain exhibits and testimony …
I attended the 2024 Delaware Regional Federal Circuit Bench and Bar today. It was a great program with many judges speaking on panels, plus an interview with Judge Dyk of the Federal Circuit and remarks by Senator Chris Coons. Here are some notes about interesting points from the conference, in case you missed it.
New Judges for the District of Delaware
Of particular interest to District of Delaware attorneys (and litigants) is the great news about two potential new judges. Senator Coons relayed the news—which we here at IP/DE had not picked up on—that the U.S. Senate has unanimously approved the JUDGES act …
AI refuses to draw a judge without an old-school judicial wig. This is the best I could do.AI-Generated, displayed with permission
Chief Judge Connolly held a second Mavexar-related hearing yesterday, this time in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del.). This was after the one in the Backertop action that we just posted about.
Chief Judge Connolly questioned both the out-of-town attorney who represented Swirlate as lead counsel in the action, and the sole member of the Swirlate NPE
The Court addressed several topics with the attorney, including:
Gaps and redactions in the court-ordered document production, which was supposed to include communications with his client.
There was another hearing this morning in the still-ongoing Mavexar saga, this time in Backertop Licensing LLC v. Canary Connect, Inc., C.A. N. 22-572 (D. Del.).
If you recall, this is the case where the sole member of the patent assertion LLC is a litigation paralegal from Texas who was the wife of a Mavexar attorney.
She appeared in one of the first Mavexar hearings back in November 2022. She later accused the Court of "mansplaining" and "gender harassment and intimidation," and she refused to appear in person to testify a second time, incurring a $53,000 fine. She appealed, and the Federal Circuit affirmed.
Sometimes summary judgment motions or responses end up involving arguments that material should be struck or not considered by the Court. A common question is whether, in making that kind of argument, a party needs to bring a separate motion, or if they can just make it as part of their summary judgment briefing—in an (ugh) footnote, for example.
The answer varies by judge. But we got some guidance from Judge Andrews in his Acceleration Bay opinion last week (which we also wrote about yesterday).
The opinion addressed a motion for summary judgment barring the plaintif from asserting the claims based on a prior contract that contained a non-assertion clause. The plaintiff responded by citing …
"A POSITA would be motivated to combine cocktail sauce and raspberry jam, as both are red-colored foodstuffs safe for human consumption that come in glass containers with metal, screw-on lids."AI-Generated, displayed with permission
Judge Andrews issued a lengthy summary judgment and Daubert opinion on Thurday in Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA (D. Del.). The opinion hits multiple interesting issues, and we may have a couple of posts on it this week.
But the one ruling that jumped out to me was the Court's rejection of the fairly typical, low-effort motivation-to-combine language that many experts rely on in their obviousness opinions.
Motivation to combine is often an afterthought. I've seen many initial contentions that address it only in a short paragraph that basically just lists characteristics of each reference (same field, same problem, etc.). Expert reports sometimes uncritically adopt paragraphs like that no elaboration.
If you've ever been involved in reading or writing invalidity contentions, you've probably seen motivation-to-combine paragraphs just like this one, from Thursday's opinion:
As those charts show, [the first reference] ATT Maxemchuk builds upon [the second reference] ’882 Maxemchuk and informs a POSITA of additional details related to ’882 Maxemchuk’s grid-based mesh network. A POSITA would be motivated to combine these references for several reasons. Both references are in the network architecture field and are directed to improving mesh networks. Both teach the simplification of routing of data that arises from the grid-based mesh network. And both disclose the same grid-based mesh network. In addition, ATT Maxemchuk includes additional implementation details for the grid-based mesh network that ’882 Maxemchuk describes.
The paragraph gives just four one-sentence reasons for its statement that a person of skill in the art would combine the references. Three of the reasons are about general similarities between the references.
The fourth sentence is a bit more helpful, and says that the first reference provides "additional implementation details" for part of the second reference.
The Court found that this paragraph—which the parties agreed was representative—simply could not provide support for a motivation to combine the references. The Court granted summary judgment of no obviousness:
Mr. Greene “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” . . . His opinion does nothing more than explain why the prior art references are analogous to each other and to the claimed invention. . . . Plaintiff’s “assertions that the references were analogous art, . . . without more, is an insufficient articulation for motivation to combine.” . . .
As Defendant’s invalidity contentions rely on Mr. Greene’s testimony, Mr. Greene’s failure to opine on a POSA’s motivation to combine the asserted prior art references proves fatal to Defendant’s obviousness theory. I grant summary judgment of nonobviousness as to all asserted obviousness defenses.
Acceleration Bay, LLC v. Amazon Web Services, Inc., C.A. No. 22-904-RGA, at 37-38 (D. Del. Sept. 12, 2024).
A perennial question in disputes about late disclosures is whether the demandingFRCP 16 "good cause" standard applies, which hinges on diligence, or whether the more forgivingPennypack factors apply.
When it comes to case narrowing, there seems to be a building trend that the good cause standard applies, not the Pennypack factors. We've seen that multipletimes when it comes to a plaintiff's decision to drop claims, and on Wednesday, Judge Burke issued a detailed opinion finding that good cause is likewise required to revise a defendant's election of prior art references.
In State Farm Mutual Automobile v. Amazon.com, Inc., C.A. No. 22-1447-CJB (D. Del.), the Court ordered the defendant to cut …
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