Both Chief Judge Connolly and Judge Williams require parties to rank their summary judgment motions. This is an effort to deter meritless summary judgment motions. Upon denying a higher-ranked motion, the Court will automatically deny lower-ranked motions as well.
In other words: You had better be careful when ranking your summary judgment motions. But it can be tricky! Do you put the one with the highest chance of success first, even if it's on an issue you don't care as much about? Or do you rank the tougher SJ motion first because it addresses a critical issue first, to ensure that the Court will at least address it?
We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Earlier this year Judge Hall bifurcated the upcoming patent trial in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.), keeping Apple's patent claims, the related invalidity and unenforceability defenses, and a portion of a Walker Process anti-trust counterclaim—but moving other claims to a later trial:
ORAL ORDER: Having held a case management conference on March 20, 2024, . . . IT IS HEREBY ORDERED that a 5-day jury trial is scheduled beginning October 21, 2024, with a pretrial conference scheduled for October 4, 2024 at 11:00 AM in courtroom 6D. The remaining claims and defenses in C.A. No. 22-1377 and C.A. No. 22-1378 shall be joined and/or bifurcated for trial such …
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).
Just imagine the bird is a summary judgment motion.AI-Generated, displayed with permission
Our blog readership remains pretty high these days, and we continue to grow subscribers. But not all District of Delaware attorneys follow the blog—yet.
That may be why, even though we've talkedabouttheseatlength, parties continue to file separate "concise statements of material fact" in support of their summary judgment motions that list non-material facts and do not include pinpoint citations—potentially resulting in denial of their motion.
Here are some guidelines for when you are putting together a concise statement of material facts in support of an SJ motion:
Include only the material facts. If you could still win your motion if a fact …
We'd all like to win the war in one decisive strike. Just have a trial by stone and knock the whole thing out without needing to go to the time and expense of a trial . . . by law.
(Eds. note—has nobody else seen The Dark Crystal? I thought this was a universal reference, but it appears to be just another exhibit in the case for my being quite old)
AI-Generated, displayed with permission
Where was I? Anyway.
It's always tempting to take a big swing at summary judgment on validity or infringement in the hopes of knocking out the whole case. This urge, however, must be tempered by the knowledge that these big motions are harder to win. With limited pages and various judicial policies effectively limiting the number of SJ motions that can be brought, a more winnable motion on a small issue is often a good choice.
But an issue can be too small.
That was the lesson of Northwestern Univ. v. Universal Robots A/S, C.A. No. 21-149-JLH, D.I. 327 (D. Del. Aug. 28, 2024). The defendant filed a couple big SJ motions on 101 and noninfringement, but also moved for ...
The Court has developed many methods for curtailing the tendency of litigants to file and argue implausibly large numbers of SJ and Daubert motions. The first, begun long ago when mankind was yet to know fire and all creatures lived in harmony, was page limits. Later, Judge Connolly pioneered the practice of having parties rank their motions. Still further methods take seed, blossom, and wither, each day.
In you can't tell, I've been spending a lot of time in my garden this month. I just got my first plum! (not these).Svitlana, Unsplash
This last month Judge Burke debuted a new approach—"requesting that the parties select one motion each to argue at the hearing.
The parties in the case in question each filed SJ and Daubert motions under the usual page limits. After briefing was complete, Judge Burke issued an order requesting the parties select 80 pages of briefing to actually be argued at the hearing:
The Court needs the parties' help to narrow the issues as to which argument will be presented on July 2. By no later than May 20, 2024, the parties shall meet and confer and file a joint letter with the Court advising of their position (it would be ideal if this were a joint position), as to which of (or which portions of) the 5 pending motions the parties wish to present argument on at the July 2 hearing (and which the Court can simply resolve on the papers). For guidance, the Court can productively prepare for and hear argument on no more than about 80 pages of briefing. After hearing back from the parties, the Court will then advise on which motions/issues it will hear argument on during the July 2 hearing.
The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No.22-57-CJB. D.I. 219 (D. Del. Apr. 29, 2024).
The parties ultimately did submit a joint letter selecting the 80 pages of briefing. Judge Burke then issued a follow-up order requiring further narrowing for the hearing:
[T]he Court has further reflected on the issue, in part having after having recently overseen another similar hearing regarding such motions. As a result, it has become clear to the Court that for a hearing on summary judgment and/or Daubert motions to be most fruitful and focused, it makes best sense to require the parties to each select one motion that they will offer argument on to the Court. This will allow for a detailed and focused argument regarding what the parties believe to be their most important motion, and will allow the Court to meaningfully prepare for argument. Therefore, the Court hereby ORDERS that by no later than May 28, 2024, the parties shall submit a joint letter advising the Court of the motion that each respective side selects to be argued at the July 2 hearing.
Most of the judges in the District of Delaware have settled on page limits for summary judgment and Daubert motions in patent cases of 250 total pages: 50 pages opening, 50 pages answering, and 25 pages reply—per side.
The "per side" part is important, and it can have a significant impact on cases with multiple unrelated defendants or defendant groups.
The Court has usually resisted expanding these limits, and in many cases, has instead experimented with ways of reducing the burden on the Court. Judge Noreika, for example, has sometimesrequired parties to seek leave before filing summary judgment motions.
The big apple: The home of the Statue of Liberty, the Empire State Building, and (apparently) precedent permitting late-served cross-motions for summary judgment.Michael Discenza, Unsplash
In Fundamental Innovation Systems International LLC v. Anker Innovations Ltd., C.A. No. 21-339-RGA (D. Del.), plaintiff moved for summary judgment of patent eligibility, and defendant filed an answering brief.
At the same time as its answering brief, however, defendant filed a late "cross-motion" for summary judgment, asking the Court to not only deny plaintiff's motion, but to grant summary judgment of ineligibility. Defendant devoted about 9 pages of its 40-answering brief to arguing against plaintiff's motion and in favor of its own affirmative "cross-motion" for a determination of ineligibility.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
