Both parties in Wrinkl, Inc. v. Meta Platforms Inc., C.A. No. 20-1345-RGA (D. Del.) agreed that the case should be dismissed after the PTAB invalidated 50 of the 54 asserted claims, but disagreed about whether the remaining 4 claims should be dismissed with prejudice.
The plaintiff claimed that it did not intend to assert the remaining claims, but that it should retain the right to, and that it is unaware of caselaw holding that the Court cannot dismiss some claims with prejudice and some without.
The defendant argued that the Court cannot split up the claims, and must dismiss all or nothing with prejudice:
Defendants contend there is no legal support or precedent …
We noted last year how Judge Noreika has sometimes denied § 101 motions to dismiss that challenge large numbers of claims, holding that it is more efficient to deal with such motions at the SJ stage (where, presumably, the case would be narrowed).
This week, the Court addressed a § 101 motion in Global Tel*Link Corporation v. JACS Solutions, Inc., C.A. No. 23-500-MN (D. Del.). The motion seeks a § 101 ineligibility finding for 5 claims across 5 asserted patents—i.e., one claim per patent. That's all the plaintiff asserted in the complaint. Id., D.I. 20.
Come on in, stay a whileAI-Generated, displayed with permission
This naturally suggests a strategy for avoiding stays that I have been surprised not to see more of—splitting your suit into multiple different cases, each asserting just a few claims. This seems to be what occurred in ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484-CJB (D. Del. Oct 17, 2023) (Oral Order).
In that case, Immervision filed two separate suits at around the same time (but not actually on the same day) asserting different claims of the same patent. The PTAB issued an IPR that covered all of the claims asserted in one of the cases, but none of those asserted in the other. Apple moved to stay both cases (which had been consolidated for pretrial purposes), and Immervision opposed, just as to the case not covered by the IPR.
Unfortunately for the Plaintiff, Judge Burke found that it would make little sense to split these consolidated cases apart and granted to the motion to stay as to both cases:
Additionally, absent a stay in this scenario, two rounds of summary judgment and Daubert briefing/hearings would need to be held (one in this action and one in the 1733 action) -- as opposed to one combined summary judgment/Daubert process. Plus, since the PTAB's Final Written Decision in the 990 patent IPR is due in late summer 2024 (prior to the October 2024 trial scheduled in this case), if the PTAB upheld the claims at issue in that IPR, then no doubt ...
Seems like it was just yesterday that we heard that Magistrate Judge Hall had been nominated to take Judge Andrews' seat when he takes senior status.
But it was actually yesterday that we heard that the Senate confirmed Judge Hall as a District Judge in the District of Delaware. According to Law.com, she was confirmed by a vote of 67 to 29, a wider margin than any other federal district court judge this year. Congratulations, Judge Hall!!!
Judge Hall will fill Judge Andrews' spot, after he takes senior status at the end of December. The Court has said that Judge Andrews expects to continue with a full caseload, leaving us with essentially five sitting district court judges. That's great …
I told you all! I told you we'd hear about this case again! Did you listen? No! I was called a fool, a madman! But who's laughing now! Whhoooo's laughing nowwwwwww!
That's right, we're going spooky this monthAI-Generated, displayed with permission
I speak of course of the Federal Circuit decision in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023). As we discussed last time, when I made my dire warning that you fools failed to heed, the Federal Circuit there reversed the district court judgment invalidating several unasserted claims under 101, noting that the Plaintiff had taken pains to clarify that only 4 specific claims were at issue, …
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for oneAndrew E. Russell, displayed with permission
Judge Bryson issued an opinion today in Michael R. Cahill, Trustee of the Hunt Irrevocable Trust v. Air Medical Group Holdings, Inc., C.A. No. 21-679-WCB (D. Del. Oct. 16, 2023). In it, he describes a clever procedural maneuver that failed, but resulted in a positive outcome anyway.
The case involves an breach of contract claim affirmative claim and counter-claim. The Court granted summary judgment for the plaintiff on their affirmative claim, holding that it was time-barred under a provision of the contract that set out a time for bringing claims.
Judge Andrews issued a claim construction opinion today resolving an interesting dispute.
The parties disagreed as to whether the patentee had acted as its own lexicographer. Here is the text from the patent spec:
As used herein, the term “plant” includes reference to whole plants, plant organs (e.g., leaves, stems, roots, etc.), seeds and plant cells and progeny of the same. “Plant cell,” as used herein includes, without limitation, seeds, suspension cultures, embryos, meristematic regions, callus tissues, leaves, roots, shoots, gametophytes, sporophytes, pollen, and microspores.
Pioneer Hi-Bred International, Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA, D.I. 72 (D. Del. Aug. 2, 2023).
Seems pretty clear, right?
Not so much, according to the plaintiff. It argued that one of the specification's definitions shouldn't apply to the term as it was used in the claim. Here is ...
We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgivingPennypack factors.
We've also discussed how you really ought to have a reason for a late disclosure.
On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:
ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …
Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."
Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.
Uh Oh - An Emergency Extension Motion Fails
That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.). …
I wanted to call out the interesting quote in the title, which comes from an opinion Judge Noreika issued on Friday granting-in-part post-trial motions in a patent case.
The quote is in the context of a motion for JMOL of no post-suit indirect infringement because the accused infringer didn't encourage users to infringe. The Court was very disappointed in the parties' briefing:
[T]he Court must still address Defendants’ remaining complaint as to indirect infringement. Defendants argue that there was no evidence at trial to suggest that they encourage others to infringe the ’502 and ’386 Patents, which is required for a finding of inducement liability. On this point, …
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