In a summary judgment opinion issued on April 20, Judge Connolly found claims of two patents indefinite because they included a limitation directed to applying a composition "in an amount effective to enhance the condition of the skin." Judge Connolly reasoned that whether he applied the plain meaning of the term or the meaning ascribed to the term by the specification, "the determination of whether a person's skin is enhanced provides a paradigmatic example of indefiniteness." As he pointed out, "Beauty . . . is 'in the eyes of the beholder.'"
CFC
The Honorable Colm F. Connolly
Judge Connolly put this oral order on the docket on Thursday:
ORAL ORDER: The Court has read Plaintiffs' April 7 letter . . . . The Court understood Mr. Groombridge's response to be in substance what Plaintiffs outline in their letter. The Court asked an imprecise question. But the Court had in mind what Mr. Groombridge had in mind. Mr. Groombridge has appeared before the Court on numerous occasions and the Court appreciates and respects his practice of conceding points he should concede and getting to the heart of the disputed matters before the Court. All counsel would do well to follow his lead in that regard.
Amgen Inc. v. Hospira, Inc., C.A. …
Pop quiz: What's the easiest way to get your SJ motion denied in a single page? Answer: Tell the judge that a disputed fact is material to your motion.
Several of the D. Del. judges require parties to include a concise statement of material facts with their summary judgment motions. This is exactly what it sounds like: a statement of each fact that the moving party contends is (a) essential to resolve the motion and (b) undisputed.
Judge Noreika, Judge Connolly, and Magistrate Judge Hall each require a concise statement to be filed with the opening brief, as well as a responsive statement with the answering brief. Judge Noreika and Magistrate Judge Hall also require …
As we pointed out last July, Judge Connolly has publicly questioned (several times) whether post-complaint knowledge is enough to state a claim for willfulness or indirect infringement. Today, he answered that question with a resounding no.
In nearly two full pages of footnotes, Judge Connolly collected the conflicting authority across the nation—and within the district—on whether an infringement complaint, by itself, is enough to support the knowledge element of willful and indirect infringement claims.
He went on to explain his own views:
ZapFraud has identified, and I know of, no area of tort law other than patent infringement where courts have allowed a plaintiff to prove an element of a legal claim with evidence that the plaintiff filed …
Judge Connolly granted summary judgment of invalidity this week, finding three claims indefinite due to their physical impossibility.
The patent relates to a faster air-powered nail gun, which uses a trigger to control the gun by providing "fluid communication"—i.e., air flow—between air valves.
All of the patent's claims involve triggers and "fluid communication" of various sorts, but defendants picked up on some weird phrasing in one independent claim:
a trigger valve exterior frame to which the main valve control channel is fluidly connected;
Defendants argued that the "exterior frame" is solid and can't be "fluidly connected" to the trigger.
Plaintiffs disagreed, arguing that a person of skill in the art would …
The practice in Delaware has long been that calls to chambers are generally only appropriate in a relatively narrow range of circumstances, and "please decide my motion immediately" is not one of them.
It looks like one plaintiff's counsel may have learned this this hard way on Wednesday when they filed a TRO seeking to enforce an arbitration clause in an employment agreement, and then immediately called the court to urge that it receive immediate attention. Here is the Court's response, issued the same day as …
While motions for reconsideration are frequently filed, they are not frequently granted. Typically they are shut down pretty easily. The rules put the moving party in a box, because parties can neither repeat arguments from their brief nor offer new arguments.
These motions are sometimes granted, though, and Judge Connolly granted one such motion late last month. I thought it would be interesting to look at what worked.
What happened?
The Court had originally granted a motion to exclude expert testimony from a defendant's infringement expert, on the grounds that the expert had testified that the presence of additional structure in a means-plus-function claim results in non-infringement.
We discussed this opinion at the time, pointing out that violating a well-established rule like that one is a great way to get an expert opinion excluded. ...
We discussed last month how it has, in Judge Andrews' words, become fairly routine for the Court to grant stays following IPR institution. With the recent increase in granted stays, one can see how a litigant might be tempted to fly even closer to the sun, and extend a stay through an appeal to the Federal Circuit.
Judge Connolly gave those gallant dreamers a bit of hope on Tuesday when he granted just such a motion in DDR Holdings, LLC v. Priceline.com LLC, et al., C.A. No. 17-498-CFC, D.I. 101 (D. Del. Jan 19, 2021). In that case, the parties had stipulated to a stay pending resolution of an IPR. When the IPR concluded, some of the asserted claims had been upheld and others had been invalidated, and the plaintiff was appealing the invalidated claims to the Federal Circuit. Plaintiff wanted to move forward with the remaining claims against some of the defendants, while the defendants argued that the stay should continue.
Judge Connolly ...
Most Delaware attorneys tend to hesitate before filing an "emergency" motion, because they know how busy the Court is. The Court takes emergency motions seriously. It may defer work on other pressing issues to assist the parties with a true emergency.
I don't think anyone would want be standing before the judge (or on a conference call, or a video conference) explaining why they unnecessarily disturbed the Court's management of its docket.
Last week, Judge Connolly issued an opinion showing what may happen when a party files an unwarranted "emergency" motion.
In FinancialApps, LLC v. Envestnet, Inc., C.A. No. 19-1337-CFC-CJB (D. Del.), a trade secret and contract action, the Court …
I came across this case today, and I thought it was a good example of why, in Delaware, it can be dangerous to be seen as acting unreasonably, particularly when it comes to things like discovery disputes and case management.
Plaintiffs filed a first case in 2018, asserting infringement of a single patent. Earlier this year, it filed a second case against the same defendant for a newly-issued patent relating to the same subject matter.
Plaintiffs sought to consolidate the two cases because they involved similar facts:
[The cases involve] identical parties, identical accused acts of infringement, the same accused process, and related patents with identical inventors, materially identical specifications, and overlapping claim terms.
Defendants opposed …
