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Three Things Docket Navigator Didn't Mention About Judge Bryson's Recent Discovery Opinion

Andrew E. Russell, July 28, 2020
Errata 30(b)(6)

This morning, Docket Navigator covered Judge Bryson's D. Del. discovery opinion that was made public this week, focusing on his denial of a motion to strike errata to a 30(b)(6) deposition transcript.

But there are (at least) three other interesting points about the errata in the opinion:

  • COVID issues make deposition errata more necessary:
Mr. Rothrock had to prepare for his deposition under difficult circumstances, including having to consult remotely with others in the company. Mr. Rothrock understandably could have made a mistake during his deposition in light of the numerous topics and challenging circumstances in which he was forced to prepare. Given those circumstances, I will not disregard Mr. Rothrock’s errata.
  • The Court noted that, as usual, …
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What Is a Computer?

Jeff Castellano, July 28, 2020
Means-Plus-Function Claim Construction

In both common usage and patent drafting, "computer" has become shorthand for an incredibly broad range of hardware and software, across almost every possible technological space. The breadth of meaning attributable to that single word can be a challenge for litigants and courts working through issues of claim construction or other issues (e.g., Section 101 motions, in which references to concrete computer components can lift a patent out of abstractness, and references to generic components can doom it). On the one hand, "computer" is readily understood by almost everyone in a general sense; on the other, standing alone, it has no specific meaning.

Judge Noreika recently addressed the question of whether a claimed "'computer . . . to computationally' obtain, change, or calculate specified aspects of the radiation beam arrangement or weights" should be construed as a means-plus-function term under 35 U.S.C. § 112, ¶ 6 (pre-AIA).

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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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Judge Fallon Rejects Expert Declaration, Recommends Grant of § 101 Motion at Pleading Stage

Andrew E. Russell, July 23, 2020
MTD Expert

Cell Tower
Cell Tower Ben Vaughn, Unsplash

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …

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Viable: Pre-Institution Stays Pending IPR

Jeff Castellano, July 21, 2020
Pre-Institution Stay IPR

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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Update on Potential New Judgeship for the District of Delaware

Andrew E. Russell, July 21, 2020

Gavel
Gavel, Bill Oxford, Unsplash

Law360 reports bipartisan support for an upcoming bill that would create 65 new judgeships, including one in the District of Delaware.

It may not sound like much, but a single new DE judgeship would be a 25% increase in the number of district court judges here.

The District Court hasn't expanded since 1984, and it consistently ranks among the busiest district courts. This year it ranked third in weighted filings per judgeship (just barely behind number two, the S. D. Indiana). More than a quarter of all 2019 patent cases were filed in Delaware.

Of course, there has been talk of a new DE judgeship before and nothing has come of it. So we'll …

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Judge Andrews Relays Comments on Value of Predictability in a Judge

Andrew E. Russell, July 20, 2020
Precedent Protective Order

In ruling on a protective order dispute today, Judge Andrews wrote:

Urban legend has it that one of my predecessors said he is not bound by his own prior decisions. But I have also heard many times that lawyers believe that predictability in a judge is a really good thing. Thus, since it seems to me that the considerations here are no different than they were in the prior case, I should make the same ruling here.

IP/DE takes no official position as to which previous judge he may be referring...

His Ruling Was Also Worth Noting

The protective order dispute concerned cross-use by a plaintiff of defendants' confidential information in a multi-defendant ANDA action.

Plaintiff' proposal allowed …

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Another Jury Trial Postponement

Andrew E. Russell, July 20, 2020
COVID-19

COVID-19
COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Last week, in between Judge Stark's postponement of the Sunoco trial and the Court's extention of its ban on jury trials, Judge Andrews also postponed a scheduled August 18 jury trial, without setting a new trial date:

ORAL ORDER: The jury trial scheduled for August 18, 2020, is POSTPONED. Ordered by Judge Richard G. Andrews on 7/15/2020. (nms) (Entered: 07/15/2020)

ChanBond, LLC v. Atlantic Broadband Group, LLC, C.A. No. 15-842-RGA, D.I. 513 (D. Del. July 15, 2020).

He continued the trial after defendants' counsel filed an essentially unopposed request based on rising COVID-19 rates, the importance of live testimony, and the fact that plaintiff is an NPE.

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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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