A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

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Court Issues Permanent Injunction, Sidesteps Need for Analysis: "It Is Regrettable That the Parties Could Not Resolve This Without Me"

Andrew E. Russell, Jan. 14, 2022
Post-Trial Relief Congestion

Pipeline
Mike Benna, Unsplash

Judge Andrews resolved a request for a permanent injunction in a patent case today, in a way I haven't seen before.

In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the plaintiff won an infringement jury verdict in a trial last month.

The patents involve mixing gasoline with butane automatically, rather than through a process that involves manual intervention. The accused infringement involves the mixing of gasoline and butane on a pipeline.

Plaintiff immediately moved for a permanent injunction, and sought a hearing on the injunction on December 22 or 23, just before the holidays. The patent relevant to the permanent injunction expires in April …

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Don't Forget About FRCP 16 When Seeking Post-Deadline Amendment

Jeff Castellano, Jan. 12, 2022
Amended Complaint

FRCP 15 governs amendment to pleadings, so it would stand to reason that it would be the operative rule when seeking to amend a complaint. However, when seeking to amend after the deadline in the scheduling order, the movant must satisfy not only the relatively liberal requirements of Rule 15 but also the more exacting "good cause" standard of Rule 16. Unlike Rule 15, which permits amendment in the absence of undue delay, bad faith, or dilatory motive, Rule 16 requires diligence by the party seeking amendment.

Analog Clock
None, Ocean Ng, Unsplash

A recent ruling by Judge Fallon demonstrates the danger of ignoring Rule 16's requirements when seeking amendment after the deadline. The plaintiff in NRT Tech. Corp. v. Everi Holdings Inc., C.A. No. 19-804-MN-SRF sought to amend its complaint, asserting Walker Process and sham litigation antitrust claims, almost a full year after the expiration of the amendment deadline.

Judge Fallon noted that although plaintiffs "bear the burden of showing that they exercised diligence in seeking the proposed amendment under Rule 16(b)(4)," their motion "does not address the applicable good cause standard for motions to amend filed after the deadline."

Plaintiffs apparently argued that defense counsel should have alerted them of the applicability of Rule 16, but Judge Fallon rejected that ...

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The Hazards of Proposing "Plain and Ordinary Meaning," Ctd.

Andrew E. Russell, Jan. 11, 2022
Plain Meaning Claim Construction

Stop
Markus Spiske, Unsplash

We've written before about why some parties—especially patentees—like to propose "plain and ordinary meaning" constructions for claim terms, and about the potential hazards of doing so. These include having to submit a new joint chart with proposed constructions or, more significantly, risking cancellation of the Markman hearing and a decision for the other side (as Chief Judge Connolly suggested).

But sometimes parties still decide to risk it. Last week Judge Noreika ordered the parties in two separate cases to articulate specific meanings after they proposed "plain and ordinary meaning" constructions:

ORDER re . . . Joint Claim Construction Chart - IT IS HEREBY ORDERED that: (1) The Markman hearing will be narrowed. On or before …
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Lack of Expert Testimony Causes Defendant to Narrowly Lose Summary Judgment of Indefiniteness

Andrew E. Russell, Jan. 10, 2022
SJ Indefiniteness

Last Thursday, Judge Burke issued an R&R on SJ in a patent action. The patent involved software for playing back audio, and the claims included means-plus-function claim elements where an action is triggered either by a single "Back" command or by two consecutive "Back" commands.

Defendant argued that the patent failed to disclose corresponding structure showing how to calculate whether the two button presses were "consecutive"—i.e., how to measure the time between clicks. Judge Burke agreed that the patent failed to disclose such a structure:

As an initial matter, the Court disagrees with Plaintiff that these limitations "do not recite any functional requirement to measure time[.]" . . . As Defendant notes, . . . in order to be able …
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No Venue in Delaware for Delaware LLCs?

Andrew E. Russell, Jan. 9, 2022
Jumara Transfer

Delaware Memorial Bridge
Chintan Jani, Unsplash

We didn't post about this Judge Connolly opinion when it came out back in October, but on revisiting it, I thought it was worth noting.

In deciding a transfer motion, Judge Connolly suggested in a footnote that, for Delaware LLCs, venue may not be proper in Delaware unless the individual members of the LLC are citizens of Delaware (which often may not be the case):

It's not clear to me that a Delaware LLC "resides" in Delaware for purposes of § 1400(b). Although residency is not synonymous with citizenship, the terms are related; and an LLC's citizenship for purposes of deciding whether diversity jurisdiction exists "is determined by the citizenship of each of its members," Zambelli Fireworks Mfg. Co., Inc. v. Wood, 592 F.3d 412,418 (3d Cir. 2010). In this case, I am unable to determine Den-Mat's state of citizenship because it has not expressly identified the persons and/or corporations who are its members.

The Court held that the analysis proceeds up the chain of ownership to include everyone with an interest in the LLC—so it sounds like simply being a subsidiary of a Delaware corporation may not be sufficient:

Den-Mat certified in its Rule 7.1 disclosure statement that its "parent company" is an LLC. . . . It seems likely to me that the parent LLC is Den-Mat's sole member, but I can't be sure of that. In any event, Den-Mat did not identify the members of its parent LLC, and to determine the citizenship of an LLC, courts proceed up the chain of ownership until they determine the identity and citizenship of every individual and corporation with a direct or indirect interest in the LLC . . . .

It's worth noting that the entity at issue ...

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Skinny Labels Are Back, Baby

Nathan R. Hoeschen, Jan. 6, 2022
ANDA Labels

On Tuesday, Judge Andrews issued what I believe is the first opinion in the district regarding "skinny labels" since the Federal Circuit issued its decision in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., 7 F.4th 1320 (Fed. Cir. 2021).

As anyone immersed enough in patent law to read this blog will know, skinny labeling is the practice of excluding certain indications from the generic drug's label and associated inserts, so as to avoid inducing infringement of method of treatment patents listed in the orange book. In Amarin Pharma, Inc. et al v. Hikma Pharmaceuticals USA Inc., C.A. No. 20-1630-RGA, D.I. 97 (D. Del. Jan. 4, 2022), for instance, the branded drug was indicated for treatment of severe …

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Is Receipt of a Letter Listing Only the Patent and Accused Product Enough to State a Claim for Willfulness?

Andrew E. Russell, Jan. 5, 2022
Willfulness MTD

Envelope with Letter
Brando Makes Branding, Unsplash

That is the question Judge Andrews addressed yesterday. He found that yes, a letter listing a patent and accused product is enough to state a claim in a complaint for pre-suit willfulness—the letter need not include things like claim charts or specific descriptions of product features:

I find that the notice letter sufficiently pleads knowledge for the eight patents-in-suit listed in the letter. The letter lists many LG products and states, " These products, and others made, used, sold, offered for sale, or imported into the United States by LG, infringe many of the patents in [Bench Walk's] portfolio." (D.I. 25-1 at 1-2). The letter then enumerates eleven patents, including eight of the ten …
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Judge Andrews Awards Fees for Continued Assertion of Baseless Infringement Claims

Jeff Castellano, Jan. 4, 2022
Attorney's Fees

One of the questions Courts have to answer when presented with an application for attorneys' fees under 35 U.S.C. § 285 is when to start the clock running on fees. The analysis can include objective and subjective factors, but in general (in this District at least) a patentee has to push through multiple warning signs and opportunities for reevaluation before its continued assertion of infringement will justify an award of fees.

Earlier this week, Judge Andrews awarded fees for plaintiffs' continued assertion of infringement after (1) an adverse claim construction decision and (2) subsequent notice from the defendant of non-infringement. After the Court granted summary judgment of non-infringement, the defendant moved for fees.

Judge Andrews quickly disposed with the …

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A New Visiting Judge for Patent Cases in Delaware?

Andrew E. Russell, Jan. 3, 2022
Visiting Judges Congestion

Tennessee
Tennessee Mike Lento, Unsplash

Today Judge Andrews reassigned a case to what appears to be a new visiting judge for the District of Delaware, Senior District Judge Jon Phipps McCalla of the Western District of Tennessee:

Case Reassigned to Judge Jon P McCalla of the United States District Court for the Western District of Tennessee. Please include the initials of the Judge (JPM) after the case number on all documents filed. (rjb) (Entered: 01/03/2022)

Emerson Process Management Regulator Technologies, Inc. v. Pietro Fiorentini (USA), Inc., C.A. No. 21-1488-JPM (D. Del.).

To my knowledge, this is the first referral of a Distrct of Delaware patent case to Judge McCalla, and he is not yet on the …

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