A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Waiver

Does O2 Micro Raise the Bar for Waiver of Claim Construction Issues?

Andrew E. Russell, Nov. 2, 2025
Claim Construction Waiver Forfeiture

Wave
Jeremy Bishop, Unsplash

Last week, Judge Bryson ruled on a motion in limine where an accused infringer sought to strike the patentee's alleged "new theory" of validity just before trial or, in the alternative, for a permission to raise a new claim construction regarding that theory.

The Court ultimately denied the motion in limine because the accused infringer was on notice of the theory, but granted its alternative motion for permission to raise a new claim construction position regarding the theory, citing O2 Micro.

The Accused Infringer Was On Notice of the Issue

The Court easily denied the motion to strike, finding seven different ways that the accused infringer either was or should have been aware of the …

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Keep It In The Ring

Nathan R. Hoeschen, Jan. 9, 2025
101 Waiver

It's become fairly common to see opinions in Delaware noting that an argument has been waived when presented only in passing. The classic example is something discussed only in a footnote.

This of course leads to the question of which other bits of a brief are too scanty to hide an argument. Might there be other spots we should know to avoid?

AI-Generated, displayed with permission

Judge Williams' opinion last week in Game Play Network, Inc. v. Lien Games Racing LLC, C.A. No. 23-323-GBW-CJB, D.I. 34 (D. Del. Jan 3, 2025) gave us just such an example of a place an argument can not be placed.

As a bit of background, local rule 7.1.3 lists a series of sections required for briefs including "nature and stage of the proceedings," "conclusion," and—important here—"argument." The plaintiff there had lost a 101 motion and moved for reconsideration, alleging among other things, that the Court had neglected to address several claim construction issues. In particular, the motion for reconsideration argued that the "statement of facts" portion of their original opposition brief had discussed several relevant terms and the need for construction.

Judge Williams found that the passing reference to claim construction in the argument section was ...

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Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
O2 Micro Waiver

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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The Stuff of Nightmares: Plaintiff Makes Insufficient JMOL Motion During Trial, Waiving Its Post-Trial JMOL Motion Entirely

Andrew E. Russell, March 29, 2023
JMOL Waiver

Bye bye, JMOL motion
Bye bye, JMOL motion Ioana Cristiana, Unsplash

In most patent cases that make it through trial, the losing party files a post-trial motion seeking judgment as a matter of law (JMOL), asking the judge to override the jury and find for them instead. It seems fairly uncommon to see a case that went to trial and did not settle that doesn't involve a post-trial JMOL motion from one side or the other.

Under the federal rules, to file a post-trial JMOL motion under FRCP 50(b), you must first file a JMOL motion during trial under FRCP 50(a). That motion must be made before the case is is submitted to the jury, and must "specify the …

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Judge Andrews Sets Out When Parties Have to Raise Indefiniteness at Claim Construction: Be Careful of Waiver

Andrew E. Russell, Feb. 3, 2023
Markman Indefiniteness

Typical day in litigation
Typical day in litigation AI-Generated, displayed with permission

We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.

The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.

Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …

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Sword-and-Shield Privilege Argument Succeeds Against Company's "Folklore" of an Implied License

Andrew E. Russell, Jan. 23, 2023
Hearsay Waiver

"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents." AI-Generated, displayed with permission

Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.

The Court found that this "folklore" was relevant to the implied license defense:

While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from ...
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A Note on Footnotes

Nathan R. Hoeschen, Nov. 3, 2022
Waiver Footnotes

DALL·E 2022-11-03 10.27.28 - a pen held in a foot writing a note
AI-Generated, displayed with permission

One thing I noticed, but failed to mention, in discussing Judge Williams' opinion in Cirba IP, Inc. v. VMware, Inc., C.A. No. 19-742-GBW, week was the following passage on footnotes in briefing:

[T]he Court ultimately needs not address this footnote argument because "arguments raised in passing (such as, in a footnote), but not squarely argued, are considered waived. "

Cirba, at 4 n.3 (quoting Samsung Elecs. Co. v. Netlist, Inc. , C.A. No. 21-1453-RGA, 2022 WL 3027312, at *5 (D. Del. Aug. 1, 2022))

This is a policy we've touched on occasionally on the blog, most notably from Judge Andrews.

Where it gets interesting, is that Judge Williams issued another order with …

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Status Communications Between Litigation and Prosecution Counsel Were Not Privileged

Andrew E. Russell, Oct. 19, 2022
Prosecution Prosecution Counsel

Something is missing here.
Something is missing here. Pawel Czerwinski, Unsplash

A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.

In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.

As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:

These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
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Judge Noreika Rejects Attempt to "Reserve[]" Arguments Regarding Post-Judgment Interest

Andrew E. Russell, Aug. 29, 2022
Reservation of Arguments Litigation

Freshly preserved arguments, ready to be set aside for the winter...
Freshly preserved arguments, ready to be set aside for the winter... Olia Gozha, Unsplash

Parties often try to expressly reserve, preserve, and/or avoid waiver of arguments or the right to seek relief, often in a paper filed or served on the deadline to make the argument or seek the relief. It may not always work—but it's not very costly to give it a shot, either.

Last week, in Aqua Connect, Inc. v. TeamViewer US, Inc., C.A. No. 18-01572-MN (D. Del.), Judge Noreika rejected an attempt by a plaintiff who prevailed at trial to avoid having to raise its arguments regarding post-trial interest during post trial briefing.

After plaintiff won a $5.7m verdict in a jury trial …

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The Double Waiver Maneuver

Nathan R. Hoeschen, Aug. 2, 2022
Waiver

daniel-jensen-UDleHDOhBZ8-unsplash
Last summer, Daniel Jensen, Unsplash

We've all spotted a waiver in the other side's papers—some issue that would have been raised earlier or more clearly by a noble opponent in a just world. Normally the issue doesn't merit more than a finger-shaking footnote, but its galling nonetheless.

Forget it Jake, it's Delaware.

An Issue Ignored

This brings us to the convoluted saga of San Rocco Therapeutics, LLC v. Bluebird Bio, Inc. The plaintiff had a license to the patents-in-suit and the parties disputed whether it was sufficient to grant standing. Because that license had an arbitration provision, the defendant moved to stay the case and compel arbitration.

In their opening brief, however, Defendants did not address the threshold …

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