A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

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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Viable: Pre-Institution Stays Pending IPR

Jeff Castellano, July 21, 2020
IPR Stay

While pre-institution stays pending IPR are usually seen as disfavored in this District, they are occasionally granted. The circumstances must be right, however.

Judge Connolly recently ordered a stay in Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 20-0104-CFC pending IPRs that had been filed—but not instituted—on all asserted claims.

He noted that a related action had already been stayed pending IPR, and that the defendants had agreed "to forgo their inequitable conduct counterclaims and defenses in both actions," and found good cause to stay. As a condition of the stay, he required that defendants dismiss their inequitable conduct defenses and counterclaims, and ordered that they would be "barred" from pursuing those defenses in both actions...

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Appeal to Watch: Exclusion of Japanese Patent Office Publication as Not Publicly Accessible

Andrew E. Russell, July 17, 2020
§ 102 FRE

The reference at issue, JP 1992-136787

Japanese patent publications are typically considered to be fairly safe prior art references, as long as you prove up authenticity and offer sufficient evidence of publication.

But it turns out that that second part—showing publication—is kind of important.

In F'real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC, Judge Connolly excluded a Japanese Patent Office Utility Model Publication on a motion in limine because the defendants failed to show that it was publicly accessible under § 102, based largely on defendants' own position in opposing IPR estoppel.

Couldn't Have Found Reference = No IPR Estoppel

The F'real defendants had previously filed an unsuccessful IPR, and plaintiff moved to exclude the reference based on IPR estoppel. …

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Judges Connolly and Burke Hold That Arguments Omitted from Reply Are Conceded

Andrew E. Russell, June 26, 2020
Litigation Legal Writing

While we're talking about reply briefs—Judge Connolly this month affirmed Judge Burke's conclusion that a defendant had "abandoned" arguments that it set forth in its opening brief, because the defendant failed to further address those arguments in a reply after receiving pushback in the answering brief.

Here is what Judge Burke said:

In its opening brief, Defendants appeared to challenge these claims on two other grounds . . . . However, after Plaintiff pushed back on these issues in its answering brief, Defendants did not further address the issues in their reply brief. . . . Thus, Defendants have abandoned these arguments and the Court will not further address them herein.

Judge Connolly disagreed that such arguments are …

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Responding to Opposing Arguments Isn't "Sandbagging"

David M. Fry, June 25, 2020
Litigation Legal Writing

As Andrew recently explained, the District of Delaware has a longstanding rule against "sandbagging," or saving arguments for a reply brief that should have been in a full and fair opening brief. But not every new argument is sandbagging.

In f'real Foods, LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC (D. Del. June 24, 2020), the defendants opposed a permanent injunction on sale of their commercial blenders by pointing out that the plaintiffs presented no evidence that their blender could meet the technical requirements demanded by one of defendants' customers (Dairy Queen).

In reply, the plaintiffs submitted new evidence and argued for the first time that their blenders could be modified to meet Dairy Queen's …

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