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Entries for tag: Summary Judgment

Court Grants Summary Judgment of Non-Obviousness, Rejecting Typical Motivation to Combine Language in Expert Report

Andrew E. Russell, Sept. 16, 2024
Invalidity Summary Judgment

"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).

Judge Andrews also rejected ...

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Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied

Andrew E. Russell, Sept. 10, 2024
Concise Statement of Facts Summary Judgment

Just imagine the bird is a summary judgment motion.
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 talked about these at length, 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 …
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When A Gimme's A Gotcha

Nathan R. Hoeschen, Sept. 3, 2024
Summary Judgment

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 ...

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Only So Many Hours In A Hearing

Nathan R. Hoeschen, May 30, 2024
Summary Judgment Daubert

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).
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.

Id., D.I. 238 (D. Del. May 21, 2024).

I would not be surprised to see used more going forward in cases before Judge Burke. We'll let you know if it enters his form order.

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Judge Hall Rejects Request to Impose Summary Judgment Motion Ranking, Expands Page Limits

Andrew E. Russell, April 8, 2024
Summary Judgment Ranking

Continuing our eclipse theme
AI-Generated, displayed with permission

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 sometimes required parties to seek leave before filing summary judgment motions.

Chief Judge Connolly has instituted a "ranking" procedure in his cases to help deter meritless …

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D. Del. Court Rejects Attempt to Import N.Y. State Court Procedure Permitting Late Cross-Motions for Summary Judgment

Andrew E. Russell, Jan. 24, 2024
Summary Judgment Scheduling Order

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.
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.

Plaintiff …

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ITC Opinions Are Not Evidence

Nathan R. Hoeschen, Jan. 4, 2024
Summary Judgment

The ITC is just, constantly issuing opinions. It's always "import this" and "don't export that." Frankly, I don't have the time for it.

That sands through the hourglass, so are the [copyrighted material redacted]
That sands through the hourglass, so are the [copyrighted material redacted] Nathan Dumlao, Unsplash

On this historic day, however, Judge Wolson struck back against the relentless tide of ITC opinions. An act for which we at IP/DE will forever be grateful.

The issue came up in the context of a summary judgment opinion in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW-MPT (D. Del. Jan 4, 2024) (Mem). The plaintiff there had previously prevailed at the ITC on one of the patents, and the ITC had issued (sigh) an exclusion order.

The plaintiff then moved for summary judgment of infringement, citing in support only the ITC's written decision. Judge Wolson, denied the motion:

The ITC’s decision is not factual evidence. It is, instead, a decision that weighs evidence and applies the law. Wirtgen’s reliance on the ITC decision as the sole evidence to support its argument means that I could deny the motion just for a failure of proof. But there are other problems as well.
Even if I treated the ITC’s decision as evidence, it would not suffice to carry Wirtgen’s burden. The decision is not binding on me. And the decision came in a different procedural posture. The ITC weighed the parties’ evidence and reached a conclusion, much like I would do after a bench trial. But, at this stage of the proceedings, I can’t weigh the evidence. Instead, I have to credit any contrary evidence that Caterpillar offers, and it has offered evidence . . .

Wirtgen, C.A. No. 17-770-JDW-MPT, at 10.

Let this serve as a reminder that we all have to keep fighting the good fight.

(Eds. Note - the ITC is actually pretty cool by the standards of IP courts and practitioners)

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How Not To Save Words

Nathan R. Hoeschen, Dec. 7, 2023
Page Limits Summary Judgment

Many years ago now (I'm so old), then-Judge Connolly (now Chief Judge Connolly) brought forth onto this district the gift of the word limit (at least in cases assigned to Judge Connolly). Nevermore would Delaware counsel spend hours futzing (technical term) with fonts and orphan control (it really sounds ominous to put those words together) in an effort to get our briefs down to the mandated 20 pages (this paragraph has waaay too many parentheticals).

For a time it seemed we would have a new golden age of beautiful briefs where every section began proudly atop its own page.

(hums patriotic tune while shedding a single tear)
(hums patriotic tune while shedding a single tear) National Archives

But alas, the conversion to a word limit spawned its own set of tactics to limit the number of words that must be counted. One such tactic—borrowed, in fact, from the days of the page limit—is the use of a table of abbreviations at the front of the document. Judge Connolly's opinion yesterday in Synopsys, Inc. v. Bell Semiconductor, LLC, C.A. No. 22-1512-CFC (D. Del. Dec. 6, 2023) (Mem. Op.), neatly illustrates the pitfalls of this method.

The infringement defendant, Synopsis (plaintiff in the DJ action), moved for SJ of no indirect infringement. As a result of filing three other SJ motions and two Dauberts, Synopsis was running up against the combined word limit. Accordingly, each of the SJ briefs had a table of abbreviations right after the table authorities, seting forth the definitions of, among other things the "asserted claims." The body of the brief, however, did not specifically mention this table and just referred to the Asserted Claims generally throughout.

Chief Judge Connolly found this practice unclear, particularly because ...

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What Not to Do When the Court Requires a Concise Statement of Facts

Andrew E. Russell, Nov. 20, 2023
Concise Statement of Facts Summary Judgment

"Here is our argument. The rest of the pieces are in our concise statement of facts." T.J. Breshears, Unsplash

Years ago, I wrote a really terrible first draft of a summary judgment brief arguing invalidity of a patent for obviousness.

I wrote it immediately after expert reports, and my draft failed to actually say why the claims were obvious. Instead, the whole draft read like a sur-rebuttal to the patentee's expert: here is why their first argument doesn't work, here is why their second argument doesn't work, and so on. Never "here is why the claims are obvious."

To me, at the time, it looked great. I rebutted all of their arguments! How can we lose! To others, it …

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Defendant Sweeps Summary Judgment, Winning SJ on Contract, Trade Secret, Trade Dress, and Non-Infringement of Two Different Patents

Andrew E. Russell, Oct. 7, 2023
Harm Breach of Contract

Five
Ryan Johns, Unsplash

Wow! This is something you don't see every day. The defendant in Truinject Corp. v Galderma S.A., C.A. No. 19-592-GBW (D. Del.) filed—and won—five motions for summary judgment.

Impressively, each of the five motions had its own grounds. This isn't an instance where one winning argument resolved five motions.

Here are the five motions:

  • Breach of Contract: No damages. The Court granted summary judgment that because the alleged harm was not actually caused by the breach, there can be no damages.
  • Trade Secret Misappropriation: No misappropriation. Plaintiff showed that misappropriation could have happened—because employees had access and worked on defendant's product—but offered no evidence that it did happen.
  • Non-Infringement of Patent 1: …
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