A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

Plaintiff Throws (Almost) Everything at § 101 Motion to Dismiss, Loses

Andrew E. Russell, Dec. 7, 2020
MTD § 101

I couldn't find a picture of
I couldn't find a picture of "teleorthodontics" H. Shaw, Unsplash

Today, Judge Connolly held ineligible a patent directed to "teleorthodontics," i.e., a business method for practicing orthodontics remotely through the use of 3D scans of a patients' mouth.

The outcome is not all that unusual—Judge Connolly characterized the patents as essentially "do it with a computer" patents for orthodontics, where the patent claims performing a traditionally offline activity remotely using conventional computers and commercially available 3D scanners.

And, as the Court noted, other courts have held telehealth business method patents ineligible under § 101. Here, according to the Court, the patents at issue simply applied available commercial technology to the abstract idea of connecting patients and orthodontists …

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District Judge Reverses Magistrate, Orders Production of Purported Common Interest Material

Andrew E. Russell, Dec. 6, 2020
FRCP 72 Common Interest Privilege

Corporations, looking down at the tattered remains of their common interest privilege
Corporations, looking down at the tattered remains of their common interest privilege Foggy skyscrapers, Matthew Henry, Unsplash

When magistrate judges are referred a dispositive matter, they issue an R&R that goes to the district judge. In Delaware, an R&R typically notes the objection period at the end, and the losing party typically (but not always) files objections.

When magistrate judges are referred a non-dispositive matter, they issue an order (and possibly an opinion). The order typically does not mention any review period or process for review.

What parties often forget is that you can object to a magistrate judge's order just as easily as you can to an R&R under FRCP 72. And, in fact, the District Court …

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Judge Connolly Rejects Joint Request for Video Hearing

David M. Fry, Dec. 2, 2020
COVID-19

Phone Booth
Phone booth in London city centre, Katarzyna Pracuch, Unsplash

Sometimes it's better to be heard than seen. Although most of the D. Del. judges have been holding hearings by video since March, Judge Connolly has consistently held his hearings and conferences by telephone.

Yesterday, the parties in one of his cases filed a joint request to hold a Markman hearing by video instead of by phone. They explained their rationale (to "allow for more effective and efficient presentations" and help direct the court's "attention to exhibits and demonstratives"), and offered to handle all of the logistics.

The court was not interested. Judge Connolly issued a one-sentence oral order the same day, saying only that "the Markman hearing will be held by telephone."

What's the takeaway? It's been almost nine months since the court issued its first COVID-related standing order, and the judges have had plenty of time to hone their procedures. It might not hurt to ask, but don't expect them to change what's been working.

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Defendant's Attempt to Raise Inventorship Defense at Trial Blocked

Jeff Castellano, Nov. 10, 2020
Preclusion Litigation

Earlier today, Judge Connolly issued a ruling precluding a defendant from pursuing its inventorship theory under 35 U.S.C. § 102(f). The ruling is notable because the request for preclusion came at trial after the defense was included in the parties' pretrial order. Nonetheless, Judge Connolly found that the circumstances justified exclusion.

ani-kolleshi-7jjnJ-QA9fY-unsplash.jpg
Ani Kolleshi, Unsplash

Although defendant Sandoz's final contentions had raised an inventorship defense, it was focused on misjoinder as opposed to nonjoinder, Judge Connolly explained.

And although Sandoz included a nonjoinder defense in its portion of the pretrial order, Judge Connolly noted that "given the number of contested facts and issue of law Sandoz identified in the 8,629-page PTO, I would not fault Plaintiffs if they failed …

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Judge Connolly Sets Out His Views on Expediting "Silver Bullet" Motions, Including Indefiniteness

Andrew E. Russell, Nov. 6, 2020
Marking Early SJ

Wolf
Wolf in the Forest, Philipp Pilz, Unsplash

I don't have the full transcript, but based on quotes set out in a letter filed by the parties, Judge Connolly recently set forth his thoughts on the kinds of issues he is willing to address early in the case:

Now, what I try to do when I think there's kind of a silver bullet, I move it to the top of the pile. That's what I do on indefiniteness.

According to the letter, Judge Connolly was prepared to stay the case and expedite summary judgment briefing on indefiniteness if it was case dispositive. Defendant declined that offer in a letter after the hearing.

Judge Connolly also suggested that he …

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Does It Matter Whether a Patent Plaintiff Is Actually Located in Delaware?

Andrew E. Russell, Oct. 28, 2020
Jumara Transfer

Globe
Adolfo Félix, Unsplash

The short answer is: it depends on the judge.

These days, most Delaware patent plaintiffs are incorporated in Delaware but not located here. Different District of Delaware judges have gone different ways on the question of whether a plaintiff's location actually matters when considering whether to transfer a case out of Delaware.

Transfer motions are governed by the twelve "Jumara factors," and plaintiff's choice of forum gets "paramount" weight except—some judges have held—when the plaintiff is not actually located in Delaware.

Judge Connolly today answered this question with a resounding "no," holding that the location of plaintiff's principal place of business does not matter to whether it's choice of forum gets paramount weight: …

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Judge Connolly Knocks Out Five Patents on Rule 12 Motion

Jeff Castellano, Sept. 8, 2020
FRCP 12(c) 12(c) Motion

On September 3, 2020, Judge Connolly invalidated five asserted patents as patent ineligible on a single Rule 12 motion. In Sensormatic Electronics, LLC v. Wyze Labs, Inc., C.A. No. 19-1543-CFC, Judge Connolly granted defendant's motion for judgment on the pleadings, invalidating five of seven asserted patents (two of the seven were no longer being asserted).

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Judge Connolly Dismisses "Confusing and Contradictory" Direct Infringement Claims

Andrew E. Russell, Aug. 10, 2020
MTD

Judge Connolly has previously denied a motion to dismiss direct infringement claims where the plaintiff at least recited the claim elements and accused a product of meeting them. Last week, though, he granted a motion to dismiss where the plaintiff did not even go that far.

Even though the patent included only method claims, plaintiff accused only products of infringing, without identifying any accused process or alleging how it is performed by those products.

Even as to those products, plaintiff contradicted itself, identifying smartphones as accused, but also discussing servers, software, and "other devices and technology." Judge Connolly called these allegations "confusing and contradictory."

Judge Connolly did grant leave to amend, and gave them a month to fix their …

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You Gotta Know When To Fold 'Em, Know When to Assert Due Process Rights

Nathan R. Hoeschen, Aug. 6, 2020
Claim Narrowing

michal-parzuchowski-oT-XbATcoTQ-unsplash.jpg
Poker Night, Michał Parzuchowski, Unsplash

On Monday, Judge Connolly issued a Memorandum Order squarely rejecting the notion that requiring a patentee to drop asserted claims for case management purposes violates due process.

Claim narrowing is one of those issues in patent law that is frequently litigated, but rarely produces a full opinion. Often, a plaintiff asserts a monstrously large number of claims, the defendant then complains that a trial on 396 claims is impossible, and the plaintiff notes that requiring them to drop the claims implicates due process. Then, everything is teed up for a discovery dispute resulting in a brief oral order narrowing the case without significant analysis.

The dispute in VLSI Technology LLC v. Intel Corporation …

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Court Splits As To Whether Recitation of Claim Elements Is Sufficient to State a Claim for Direct Infringement

Andrew E. Russell, July 27, 2020
MTD 12(b)(6)

A Crack
Crack on white concrete surface, Brina Blum, Unsplash

Two opinions in the past week have come to differing conclusions as to whether the recitation of claim elements in a complaint is sufficient to state a plausible allegation of infringement.

Recitation of Claim Elements Helpful

In the first, Dynamic Data Technologies, LLC v. Brightcove Inc., No. 19-1190-CFC (D. Del. July 20, 2020), the Court denied a 12(b)(6) motion to dismiss an allegation of direct infringement, stating that it was sufficient to:

identif[y] products accused of infringing each of the asserted patents, identif[y] at least one claim of each asserted patent that the accused products infringe, and describe[] how those products infringe the identified claim.

To show …

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