A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Chief Judge Connolly Comments on the "Sad Reality" of Certain Magistrate Judge Referrals

Andrew E. Russell, Nov. 27, 2021
Summary Judgment Magistrate Judges

This week, Chief Judge Connolly denied a joint request for leave to present an early SJ motion on damages in a patent action. The parties hoped that resolution of the motion would set the stage for settlement.

Judge Connolly reiterated his rule that he will not permit early SJ motions unless they are going to be the only SJ motions, while also commenting on his case load:

As a general rule, I do not allow for an early summary judgment motion unless the resolution of the motion would be case dispositive and the party seeking to file the motion agrees that it cannot file any other summary judgment motions. In light of my case load, which approaches 600 civil cases …
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Judge Noreika Orders Pre-Markman Final Contentions

Jeff Castellano, Nov. 23, 2021
Scheduling Orders Contentions

The practice of supplementing contentions after the Court issues a claim construction ruling has become commonplace in this District. For the litigants, this timing is generally advantageous because it permits final contentions to be drafted with the Court's claim construction ruling in hand, and does not require the development of alternative positions that take into account each side's claim construction positions.

On the other hand, because the Markman process (in particular the identification of the terms in dispute) often occurs months before final contentions are due, it is not unusual for final detailed contentions to result in additional claim construction disputes, which the Court must resolve long after the initial Markman process.

Judge Noreika recently issued oral orders in several cases specifically to address this timing...

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Five Claims Across Four Patents Held Indefinite Because "Aesthetic" Is Subjective

Andrew E. Russell, Nov. 22, 2021
Indefiniteness Claim Construction

"Moon flask with Aesthetic bird motif" The Met

Judge Stark today issued an opinion holding five claims across four patents indefinite, based on two terms: "aesthetic" and "similar to a light house." The Court held that both terms indefinite because they are subjective. As to "aesthetic," the Court rejected an argument that "aesthetic" merely differentiated between artistic and functional aspects of light:

The Court . . . agrees with [accused infringer] HeathCo that "aesthetic" is subjective and, accordingly, the claim term is indefinite. [Patentee] Vaxcel insists "aesthetic" is not subjective because it relates to the "philosophy" or "science" of "beauty and ugliness," not to whether something is pleasing or displeasing. . . . This is unpersuasive, in part …
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The Beginning of the End for Remote Depositions?

Nathan R. Hoeschen, Nov. 21, 2021
Remote Depositions

Plane in Turbulence
Turbulence, Joshua Hoehne, Unsplash

Perhaps the most facile musing of the late-stage (please) pandemic, is wondering if remote work will become a permanent fixture in our lives. It's become such a common topic for think pieces, that I would not disgrace these hallowed pages with another trite contribution to the ouevre.

I am, however, duty-bound to note a recent development that suggests that remote depositions may not be long for this world. The issue arose before Judge Andrews last week in Takeda Pharms. USA, Inc. v. Mylan Pharms .Inc. C.A. No. 19-2216. The plaintiffs sought to depose the defendant's former counsel, who "purportedly reviewed, drafted, and edited the settlement and license agreements that are at the center of this …

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Court Excludes "Cobbled Together" Damages Theory Days Before Trial; Plaintiff Wins Infringement But No Damages Award

Andrew E. Russell, Nov. 18, 2021
Trial Expert Reports

Ouch.
Ouch. Emil Kalibradov, Unsplash

Back in September we wrote about how Judge Andrews rejected an expert who relied on a 50/50 starting point to show damages in a patent case. We noted at the time that the defendant had moved to strike any follow-up theory by the plaintiff, and it wasn't clear that the Court had ruled on it before trial began.

Now we know what actually happened. Yesterday, the Court released its opinion on the motion to strike. In its opinion, the Court explained that after the plaintiff lost its damages expert, the plaintiff tried to "cobble together" a damages theory from various facts on the Friday before trial. The Court struck that new theory:

[Plaintiff] NexStep …
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When a "Means for" Claim Element Is Not a "Means-Plus-Function" Claim Element

Andrew E. Russell, Nov. 17, 2021
Means-Plus-Function § 112 ¶ 6

CIrcuit Board
Umberto, Unsplash

Most patent litigators are familiar with means-plus-function claims, which are defined by 35 U.S.C. § 112(f) (previously § 112 ¶ 6). They allow a patentee to write a claim limitation as a "means" or "step" for performing a function, which is performed by the corresponding structure (or material, or acts) within the specification.

Section 112 ¶ 6 can be a gold mine for accused infringers. If they successfully argue that a claim element falls under § 112 ¶ 6, they can then argue invalidity based on a lack of corresponding structure, or they can argue non-infringement if there is structure but their products lack any equivalent. Patentees usually don't want to construe their claims as § 112 …

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Patentees' Bid for Transfer to Texas Fails

Jeff Castellano, Nov. 16, 2021
First-filed MTD

Much has been written recently about the struggle between patentees who want their cases to be heard in Texas, and alleged infringers who want those cases to be heard elsewhere. But what happens when a patentee who has been sued in a declaratory judgment action tries to transfer its case to Texas?

Maybe next time.
Maybe next time. Threes Company, Vivian Arcidiacono, Unsplash

For the two defendants in Roku, Inc. v. AlmondNet, Inc., C.A. No. 21-1035-MN, who asked Judge Noreika to move Roku's DJ case to Texas or dismiss it in favor of a co-pending Texas suit involving the same patents and parties, the answer was straightforward: the case stays in Delaware.

Following unsuccessful licensing discussions, Roku filed suit in Delaware just six hours before the defendants filed their mirror-image case in Texas. The defendants then moved to transfer the Delaware case to the Western District of Texas.

Regarding the transfer motion, Judge Noreika found that the threshold requirement for transfer...

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Request for a Declaratory Judgment of Patent Exhaustion Remanded to State Court

Andrew E. Russell, Nov. 15, 2021
Remand FRAND

No Trespassing
Bruno Figueiredo, Unsplash

Here's something you don't see every day. Judge Noreika today remanded a case with a DJ claim seeking a “determination that Nokia’s patent rights are exhausted” back to the Delaware Court of Chancery where it was initially filed.

Continental Automotive Systems requested that determination in its breach of contract complaint, which it filed in the Delaware Court of Chancery. Continental claims that Nokia's patents are subject to FRAND obligations, and that it breached a contract by failing to offer licenses to patents on FRAND terms.

Judge Noreika held that because patent exhaustion is a defense, not an affirmative claim, it does not raise a question of federal law, and there is no subject matter jurisdiction ...

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How Not to Bring a Discovery Dispute in D. Del. (Judge Fallon Declines to Issue an Advisory Opinion on Deposition Conduct)

Andrew E. Russell, Nov. 12, 2021
Discovery Dispute Discovery

Checklist
Glenn Carstens-Peters, Unsplash

All judges in the District of Delaware have implemented discovery dispute procedures.

Under the procedures, instead of the parties engaging in lengthy briefing and the Court issuing a detailed opinion on a discovery issue—a process can take months—they meet-and-confer and raise it with the Court. The Court then schedules a quick hearing and sets deadlines for short discovery dispute letters from the parties.

After the Court receives the parties' letters, it either issues a short "oral order" on the docket resolving the dispute, or issues an order at the hearing, with the transcript serving as the opinion. This saves time for everyone involved, and is one of the methods that the Court uses to manage its …

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Disputing Your Own Facts

Nathan R. Hoeschen, Nov. 11, 2021
Summary Judgment

Chapter 8 of my personal favorite writing guide, Richard Wydick's Plain English for Lawyers, counsels against the use of elegant variation. For the uninitiated, elegant variation is the practice of using different words to express the same concept in order to spice up the writing. This tends to make things more confusing, especially in technical arenas. As an avowed logophile, it's one of the book's lessons that I struggle with the most.

I bring it up today, because I can't help but wonder if elegant variation played a role in the denial of a motion for summary judgment in Sprint Communications Company L.P. v. Charter Communications, Inc., C.A. No. 18-2033-RGA-MPT. Charter had moved for summary judgment of non-infringement, citing …

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