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The Hazards of Proving Infringement of Means + Function Claims

Nathan R. Hoeschen, July 18, 2024
Means-Plus-Function JMOL

Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.

She's so lonely
She's so lonely Dima Solomin, Unsplash

Judge Andrews issued an interesting decision yesterday that illustrates the unique difficulties of proving infringement of a means + function claim.

In ViaTech Techs., Inc. v. Adobe Inc., C.A. No. 20-538-RGA (D. Del. July 17, 2024), the Court construed a means + term as having two functions:

  1. communicating with a dynamic license database, and
  2. monitoring use of the digital content by a user to determine (yadda, yadda, not …
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About $44,400 in Sanctions and Counting, Just to Avoid a Trip to Delaware?

Andrew E. Russell, July 17, 2024
Mavexar FRCP 45

Is it such a long flight?
Is it such a long flight? AI-Generated, displayed with permission

It's hard to believe it has been almost a year, but last August we wrote about a Mavexar-related witness who refused to travel to Delaware to testify, instead insisting that she would offer testimony only remotely.

The Court fined her $200 per day for contempt of Court. She immediately appealed, arguing that the Court cannot force her to attend as she is outside of the 100-mile subpoena radius permitted under FRCP 45. The Court denied her motion to stay the fine pending appeal.

Yesterday, the Federal Circuit issued an order affirming the contempt sanction (and doing so pretty enthusiastically). The Federal Circuit made clear that the Court's inherent authority absolutely …

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Bring A Note From Your Doctor

Nathan R. Hoeschen, July 16, 2024

Remote trial testimony was briefly a hot-button issue in the district (on account of the whole plague thing). But in our new, vaccinated, world it has receded to a background issue only rarely surfacing.

Todd Cravens, Unsplash

So there's not many opinions on exactly what sort of hardships might qualify someone to testify remotely under Rule 43(a). Thankfully Judge Fallon's opinion today in AAG Glass, LLC v. Laminados de Aller, S.A., C.A. No. 21-638-SRF (D. Del. July 15, 2024) (Mem. Order), gives us a few examples of what hardships do not justify remote testimony.

Losing Your Visa After A DUI

Okay, this one is a bit of a gimme. The defendant witness, Roberta Garcia, was a …

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Judge Connolly Sets Forth Exact Scope of FRAND Trial (After the Parties Apparently Misunderstood)

Andrew E. Russell, July 15, 2024
FRAND

Phases
Mason Kimbarovsky, Unsplash

In Koninklijke Philips N.V. v. Thales DIS AIS USA LLC, C.A. No. 20-1713 (D. Del.), the plaintiff brought patent infringement claims for several patents, plus a DJ claim seeking a declaratory judgment of no FRAND license defense, citing a previous Delaware case finding no such defense absent a sworn affidavit that the defendant would sign a global FRAND license.

In the alternative, if the defendant submitted a signed affidavit, Plaintiff's complaint sought a "declaratory judgment determining the appropriate worldwide FRAND licensing terms for Philips’ world-wide portfolio of patents under ETSI policies."

With its answer, the defendant included just such a signed affidavit, along with its own DJ counterclaim and breach of contract counterclaim …

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Court Rejects Stipulated Extension of Trial Date

Andrew E. Russell, July 12, 2024
Stipulation

Danger Landmines
AI-Generated, displayed with permission

One of our more popular posts over time has been a post about what you can and cannot stipulate to in D. Del.

In the post, we note that certain kinds of stipulations are kinda iffy, in that "the parties can file a stipulation [about the issue] but the Court may deny or modify it, or the stipulation may have unexpected consequences." One of those categories is requests to move the trial date.

We got a good example of that this week in Rotolight Limited v. Videndum PLC, C.A. No. 22-0098-JLH, D.I. 119 (D. Del. July 8, 2024). The parties tried to stipulate to move the trial date back by …

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Order Of Operations

Nathan R. Hoeschen, July 9, 2024
Bond Preliminary Injunction

If you've spent way too much time on the internet lately, you'll likely have seen way too many memes about how kids today don't understand the order of operations. The typical format is some bookface (tm) post along the lines of:

999,999 out of 1,000,000 people get this wrong:
3 + 4(3+2) - 2 X 3 = ?
  1. 17
  2. The darkness at the end of all time
  3. 97
  4. (audible belch)

And then there's someone confidently giving the wrong answer.

"Remras!" Camylla Battani, Unsplash

Of course, the correct answer can only be arrived at by following the prescribed order of operations. This same concept comes up quite often in civil procedure, but the application is often less straightforward than good old …

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Court Orders 3-Day Deposition of Deponent Who "Created All 643 Trade Secrets at Issue"

Andrew E. Russell, June 24, 2024
Depositions FRCP 30(b)(1)

"Whatcha doin'?" "I'm writing out my 543rd trade secret. One hundred more to go." AI-Generated, displayed with permission

In my experience it's fairly uncommon to see a party get multiple days of deposition time with a fact witness deponent, outside of a few recurring circumstances (e.g. translated depositions). That's why I thought it was worth pointing out the ruling unsealed today in Gemedy, Inc. v. The Carlyle Group, Inc., C.A. No. 23-157-CFC-SRF (D. Del. June 7, 2024).

In Gemedy, plaintiff alleged misappropriation of 643 trade secrets, all authored (or co-authored, for 11 of them) by one person over an eight-year period. The defendant sought to depose that one person for four days, given their scope of …

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Court OK's Intent Requirement in Apparatus Claim; Holds that Intent Means the Designer's Intent, Not the User's

Andrew E. Russell, June 22, 2024
Indefiniteness Claim Construction

Not this kind of
Not this kind of "virtual" Lucrezia Carnelos, Unsplash

Yesterday, in Datacore Software Corp. v. Scale Computing, Inc., C.A. No. 22-535-GBW (D. Del. June 21, 2024), the Court issued fascinating opinion rejecting an indefiniteness argument for apparatus and method claims that included an "intent" requirement.

The claims at issue relate to allocating drive space on computer disks. The patentee explained in the specification that the system involves defining multiple virtual disks that can, collectively, be larger than the actual physical space available (e.g., in a sense, they overlap):

One advantage of the present invention is that the physical storage devices that are placed into a storage pool do not need to add up to the size of …
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Reminder: You Must Ask to Seal the Hearing or Teleconference When Either Side Discloses Confidential Information

Andrew E. Russell, June 17, 2024
Sealing Motion to Seal

Secret
Paolo Chiabrando, Unsplash

Given how easy it is to seal information on the docket in Delaware, parties often don't think too much about the fact that they are going to discuss confidential information at a hearing, and may not want to interrupt the process to seek to seal the courtroom. And parties rarely seek to seal teleconferences, if only the parties are on.

But recent orders have made clear that if you may need to later seek to seal the transcript of a teleconference, hearing, or trial, the only safe thing to do is to request to seal the proceeding. This is true even if you are certain that only the parties are on the line.

We saw this …

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Court Rejects Argument That Searching with Search Terms Absolves Accused Infringer of Production of "All" Technical Documents—Including Those that Don't Hit on Terms

Andrew E. Russell, June 15, 2024
Default Standard Document Production

Source Code
Markus Spiske, Unsplash

Over 10 years ago, the District of Delaware adopted its "Default Standard" for discovery, which sets forth several basic rules for discovery, particularly in patent actions.

One of the rules is the requirement to produce "core technical documents" early in the case:

Within 30 days after receipt of the [list of accused products and asserted patents], each defendant shall produce to the plaintiff the core technical documents related to the accused product(s), including but not limited to operation manuals, product literature, schematics, and specifications.

Pretty quickly after its adoption, the Court held that this includes non-public documents, after parties started trying to skirt the rule by dumping user manuals on the patentee.

These days, …

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