A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: MTD

Six Patents Survive Judge Stark's Section 101 Day

Jeff Castellano, Nov. 30, 2021
§ 101 Days MTD

All six challenged patents survived Judge Stark's most recent § 101 Day, held on November 22, 2021. The six patents were spread across three cases. Continuing his usual practice, Judge Stark ruled from the bench after hearing argument in all three cases, and then issued a written order (see below) incorporating the transcript of his bench ruling and the formal orders on the pending motions.

DNA
DNA DNA, ANIRUDH, Unsplash

In the first case, considering Step One of the Alice framework, Judge Stark found that the challenged patent was not directed to the abstract idea posited by the defendant ("an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set") and instead "enables the identification of mutations with positional accuracy in a computationally tractable manner," solving a prior art problem - notably, that sequence assembly providing for accurate detection of variants was often computationally intractable for high-throughput analysis.

Judge Stark denied the motion to dismiss based on the Step One analysis.

In the second case, Judge Stark took the somewhat unusual path of deciding Step Two of the Alice test before Step One. He explained:

The Federal Circuit has employed a similar approach and resolved 101 issues at Step Two in several of its cases, ...
View

Patentees' Bid for Transfer to Texas Fails

Jeff Castellano, Nov. 16, 2021
First-filed MTD

Much has been written recently about the struggle between patentees who want their cases to be heard in Texas, and alleged infringers who want those cases to be heard elsewhere. But what happens when a patentee who has been sued in a declaratory judgment action tries to transfer its case to Texas?

Maybe next time.
Maybe next time. Threes Company, Vivian Arcidiacono, Unsplash

For the two defendants in Roku, Inc. v. AlmondNet, Inc., C.A. No. 21-1035-MN, who asked Judge Noreika to move Roku's DJ case to Texas or dismiss it in favor of a co-pending Texas suit involving the same patents and parties, the answer was straightforward: the case stays in Delaware.

Following unsuccessful licensing discussions, Roku filed suit in Delaware just six hours before the defendants filed their mirror-image case in Texas. The defendants then moved to transfer the Delaware case to the Western District of Texas.

Regarding the transfer motion, Judge Noreika found that the threshold requirement for transfer...

View

On the Difficulty of Obtaining Early-Stage Claim Construction

David M. Fry, Oct. 20, 2021
MTD Hatch-Waxman

Judge Noreika just addressed an issue that rarely comes up in D. Del.: whether a patent should be delisted from the Orange Book for non-compliance with the Hatch-Waxman listing requirements. Although the issue itself is uncommon, the decision highlights the difficulty of winning a Rule 12 motion that hinges on early-stage claim construction.

The plaintiff sued "for infringement of five patents, only one of which . . . is listed in the Orange Book." The defendants counterclaimed that the Orange Book patent "must be delisted because it claims a 'system,' not a drug product, or method of using a drug, as required by" the Hatch-Waxman Act. The defendants then moved for judgment on the pleadings on their delisting …

View

Judge Andrews No Longer Referring 12(b)(6) Pleading Motions to Magistrate Judges

David M. Fry, Oct. 6, 2021
MTD 12(b)(6)

We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.

Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."

He ultimately concluded that:

  1. "[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
  2. "In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
  3. "I will, …
View

When Filing a § 101 Motion to Dismiss, Don't Short-Change the Argument About Whether a Claim Is Representative

Andrew E. Russell, Oct. 1, 2021
MTD FRCP 12(b)(6)

You know what they say about eggs in baskets...
You know what they say about eggs in baskets... Natalie Rhea, Unsplash

In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.

This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.

A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …

View

Judge Bibas: "Equivalent" Doesn't Imply "Bioequivalent"

David M. Fry, Sept. 15, 2021
MTD Twombly

Drugs
freestocks, Unsplash

Sitting by designation in D. Del., Circuit Judge Bibas recently issued an interesting 12(b)(6) opinion on false-advertising claims in the pharma context. These opinions tend to fly under the radar, but they often contain helpful practice tips.

The parties "both sell a medical cream, each with the same active ingredients in the same strength." Although the defendant's cream "is not an FDA-approved generic and has not been tested for bioequivalence[,]" it was listed in a database of pharmaceutical products "as an 'Equivalent Drug[.]'"

Judge Bibas found that this statement was neither false nor misleading:

Yet Sebela insists that “equivalent” implies more: bioequivalence and FDA approval. . . . The FDA has not approved TruPharma’s cream. But …
View

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 …
View

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 ...

View

Chief Judge Connolly Declines to Apply First-to-File Rule

David M. Fry, July 30, 2021
MTD

Chief Judge Connolly issued an interesting opinion on Friday, denying a motion to dismiss a DJ complaint in favor of an earlier-filed infringement action in the Western District of Texas.

The DJ case is the second Delaware action between these parties. After Judge Connolly found the claims in the first case invalid under § 101, the patentee brought an infringement action in Texas on a "virtually identical" continuation patent.

Although the Texas case was filed first, Judge Connolly declined to apply the first-to-file rule. He based his decision not only on judicial economy (i.e., he had already devoted substantive attention to the earlier, "virtually identical" patent), but also on the patentee's "litigation gamesmanship":

Second, SmileDirectClub' …
View

Chief Judge Connolly Dismisses NPE Complaint for Inadequate Detail

Andrew E. Russell, July 28, 2021
MTD FRCP 12(b)(6)

March of the Trolls
Paulo O, CC BY 2.0

Continuing our theme, another subject that often comes up in defending NPE complaints is whether the NPE's often-lackluster complaint may be vulnerable to an FRCP 12(b)(6) motion to dismiss (and whether that motion can be brought economically).

Judge Connolly today dismissed a complaint by Swirlate IP, an (alleged) IP Edge entity, because the complaint mostly parroted the language of the claims and offered an unspecific website URL.

Here is an example of a typical paragraph from the complaint, which mirrors the claim language but also offers slightly more:

21. Upon information and belief, the Accused Instrumentality performs the step of performing the second transmission by transmitting the second data symbols over a …
View
Newer
Older

Archive