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Court Attributes Expert's Knowledge to Party Itself, Strikes Invalidity Arguments

Andrew E. Russell, Dec. 14, 2020
Motion to Strike Pennypack

Stop Sign
Luke van Zyl, Unsplash

In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
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Threading the Needle: How to Lose a Motion for Reconsideration

David M. Fry, Dec. 11, 2020
Motion for Reconsideration Claim Construction

Threading the Needle
amirali mirhashemian, Unsplash

Motions for reconsideration are almost impossible to win, often because the legal standard requires parties to thread a very small needle. On one hand, you can't rehash arguments you already made. On the other hand, you can't raise new arguments that you could have made earlier.

Judge Connolly illustrated this catch-22 a few days ago, when the plaintiffs on the wrong end of a Markman order tried to convince the judge to reconsider one of his claim constructions. He ignored many of the plaintiffs' arguments, which "simply regurgitate the arguments [they] made in their share of the 113-page Joint Claim Construction Brief and at the Markman hearing."

The plaintiffs raised one new argument: that Judge Connolly's construction …

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Chief Judge Stark Gives Update on the District of Delaware's COVID-19 Status: Jury Trials to Continue

Andrew E. Russell, Dec. 10, 2020
COVID-19 Trial Calendar

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Chief Judge Stark spoke at a virtual FBA event in Delaware today, and gave an update on the Court's COVID-19 plans going forward. Here are the main points:

  • The Court intends to remain in Phase 2 of its reopening plan, which is the phase it has been in since September. The Court will keep trying to hold jury trials as scheduled trials come up.
  • No jury trials are scheduled for the remainder of December, but he understands that there are still trials set for January. Chief Judge Stark mentioned that he did not know the exact status of those cases. (Note that at least one judge has doubted that …
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Perhaps Not the Best Way to Object to a Magistrate Judge Ruling (District Judge Strikes Letter)

Andrew E. Russell, Dec. 10, 2020
FRCP 72 Objections to R&Rs

As we discussed last week, people sometimes forget that parties can object to even non-dispositive rulings by a magistrate judge under FRCP 72—although I don't know whether that is what happened here.

In Boston Scientific Co. v. Micro-Tech Endoscopy USA, Inc., C.A. No. 18-1869-CFC-CJB (D. Del.), defendants moved to strike plaintiff's infringement contentions for failure to apply the Court's claim construction. The motion was referred to Magistrate Judge Burke, who denied it:

(1) With regard to Defendant's request that Plaintiffs' FICs regarding the term "breakable link... adapted to be broken[,]" be stricken, (D.I. 169 at 2), it is DENIED. The Court did not construe this term, and Defendant has not convinced the Court that Plaintiffs are …
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"Failure of the Defendant to Concede [Does Not] Automatically Convert . . . a Non-Willfulness Case into a Willfulness Case"

Andrew E. Russell, Dec. 9, 2020
Willfulness Indirect Infringement

Illustration of plaintiff's willfulness allegations
Illustration of plaintiff's willfulness allegations Head Of A Skeleton With A Burning Cigarette, Vincent van Gogh

Judge Andrews, in granting a motion to dismiss a patentee's willfulness allegations:

The allegations could charitably be described as bare-bones. There is nothing to suggest any pre-suit knowledge of the two asserted patents. Thus, Plaintiff’s position is that failure of the Defendant to concede after a suit is filed automatically converts a non-willfulness case into a willfulness case. I disagree. Thus, I will grant the motion as to willfulness.

In the same short order, he set out his view on the difference in pleading standards between willfulness and indirect infringement:

As to indirect infringement, I think the allegations make out a case for post-December 2014 indirect infringement. (I do not think Plaintiff is arguing that there was any pre-December 2014 indirect infringement, and, in any event, there are no allegations that would provide any basis for such a theory.). I do not think the requirements in regard to state of mind for indirect infringement are as great as they are for willfulness. Thus, I will deny the motion as to indirect infringement.
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Filed Under: Things That Make You Say "Huh."

Andrew E. Russell, Dec. 9, 2020
SJ MIL

Lightbulb
Person Catching Light Bulb, Júnior Ferreira, Unsplash

This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.

Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").

So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:

I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …
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Judge Andrews Strikes Down "Frivolous" Privilege Claims

Jeff Castellano, Dec. 8, 2020
Privilege Discovery Dispute

Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."

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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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Court Raises Doubts About Feasibility of February 1 Jury Trial in the District of Delaware

Andrew E. Russell, Dec. 3, 2020
Bench Trial COVID-19

In light of the ongoing delays in restarting patent jury trials, and the rising COVID-19 numbers nationwide, it's no surprise to see Judge Andrews recognize that parties may be better served by having a bench trial in the near future rather than waiting an indeterminate time for a jury to be available:

ORAL ORDER: The court doubts that a jury trial will be feasible on Feb. 1. On the other hand, a bench trial would be very feasible. The parties are requested to discuss with each other whether they would mutually agree to a bench trial on Feb. 1, and, if they both do agree, report that fact to the court by no later than Dec. 9. If one …
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