Judge Andrews issued two new decisions invalidating patents under § 101 on motions to dismiss. The patents at issue in B# On Demand LLC v. Spotify Technology SA, C.A. No. 19-2077-RGA, D.I. 24 (D. Del. Sept, 8, 2020) and Aegis 11 SA v. Belkin International, Inc., C.A. No. 19-1161-RGA, D.I. 24 (D. Del. Sept. 9, 2020) were the computer-centric sort that one might have expected to be invalidated at some point in the case, it was surprising to see them decided at a motion to dismiss stage—especially in light of Judge Connolly's decision earlier this week granting yet another motion to dismiss on 101 grounds.
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On September 3, 2020, Judge Connolly invalidated five asserted patents as patent ineligible on a single Rule 12 motion. In Sensormatic Electronics, LLC v. Wyze Labs, Inc., C.A. No. 19-1543-CFC, Judge Connolly granted defendant's motion for judgment on the pleadings, invalidating five of seven asserted patents (two of the seven were no longer being asserted).
Chief Judge Stark today rescheduled the Xcoal trial for Wednesday of next week. The trial was previously derailed following receipt of an anonymous letter just after opening statements.
The opinion (embedded below) has a great summary of the facts of the trial so far, which are very unusual.
In resuming the trial quickly, he hoped to deter others from sending similar "anonymous letters" to interfere with other trials. He also noted that this is the only time the Court will have available for bench trials in the near future, because of the backlog of criminal and civil jury trials which should start back this month:
[T]his District hopes and …
Sometimes people think that they have to offer expert testimony to rebut the other side's expert on every single issue. That's not true, at least when the other side has the burden of proof.
I've represented a defendant in a jury trial representing where we offered no damages expert at all, and it worked out well (under the circumstances—I'm definitely not saying it's a good general strategy). We poked holes in the opposing expert's theories, and the other side had no way to return fire and no reply report in which the fix the issues.
Judge Andrews addressed something like that last week in an opinion on a motion in limine. Defendant had offered expert …
This week, Judge Burke issued an interesting oral order on a discovery dispute about the admissibility of "new" expert opinions in rebuttal reports.
In the order, he sets forth a simple baseline test for what a party has to show to strike purportedly "new" expert opinions in a rebuttal report. To succeed in striking a "new" theory, a party must show at least:
(a) how they clearly disclosed that theory well before final . . . contentions were due . . . ; (b) how the same theory was thereafter found in their opening expert reports . . . ; and (c) how [the opposing party] never provided any substantive response to that theory until …
The Federal Circuit's decision is below.
It found that even though the defendant did not receive an identification of asserted claims from the plaintiff until after the statutory IPR deadline, and even though the patents included a total of 830 claims, the statute did not allow the defendant to file a new IPR petition and then join it to its previous IPR proceeding as a way to add claims after the statutory filing deadline.
The Court recognized that the decision would result in wasted efforts by defendants in challenging claims unnecessarily:
We . . . recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted …
Judge Andrews noted this week that he is currently allowing only two attorneys per side for in-person bench trials, including for a trial scheduled to start on Sept. 14th, and that he "may insist on this practice for some time." Sprint Communications Co., L.P. v. Charter Communications, Inc., C.A. No. 17-1734-RGA, D.I. 545 at 2 (D. Del. September 2, 2020).
He also said that he "anticipate[s] a jury could be assembled for an October 5 trial," but did not want the first post-COVID-19 civil jury trial to be one that involves primarily out-of-town attorneys and personnel.
The trial at issue was ultimately delayed for other reasons, including the fact that there are still nine pending motions, and …
As the court moves closer and closer to resuming normal operations, Judge Noreika has released a new order describing the procedures for her first COVID-19 bench trial with live attorneys (although still remote witnesses).
TriMed, Inc. v. Arthrex, Inc., C.A. No 18-666-MN, was originally slated for a jury trial on September 14, 2020, but was converted to a bench trial on the same dates following a teleconference on July 30.
Other than the lack of in-person witnesses, the trial appears to be remarkably similar to a bench trial in the before-times, with the only major concessions to the pandemic being required masks, the use of electronic witness …
Yesterday, Judge Burke ordered a plaintiff to collect documents from an additional custodian beyond the limit agreed to by the parties. But he also gave the plaintiff a road map for how they might have won with a little extra effort.
Judge Burke acknowledged that "the parties are not large companies, and that cost and burden were a factor in the parties' agreement to [a] seven-custodian limit in the first place."
But Plaintiff could have provided the Court with a record ... to help the Court conclude that the collection, search, review and production of [the custodian's] documents would be unduly burdensome or costly, or that it would be disproportionate to either the amount in controversy or …
The District of Delaware's previous standing order banning jury trials would have expired today, but the Court issued a new order extending Phase 1 (no jury trials) through September 14.
The Court is currently holding bench trials but not jury trials.
The previous extension moved the expiration date back six weeks, but this extension only moves the date back by only two weeks.
This shorter extension may indicate that the Court is gearing up to start dealing with the backlog of trials, although at least one judge indicated as recently as two weeks ago that he thought September jury trials were unlikely.
