A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Original Complaint Supports Post-Suit Inducement and Willful Infringement, Finds Judge Burke

Jeff Castellano, Feb. 9, 2022
Willfulness MTD

It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.

In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...

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Your IPR Succeeded? Congrats! Now Go to Trial on Infringement, But You're Estopped from Claiming Invalidity

Andrew E. Russell, Feb. 8, 2022
Collateral Estoppel IPR

PTAB trailhead
PTAB trailhead Joshua Sukoff, Unsplash

During some research the other day, I came across the below order that Judge Noreika issued last summer.

A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?

No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:

Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …
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Finding Parties' Daubert Briefing Insufficient, Judge Andrews Asks to Hear from the Expert Himself Regarding His Apportionment Analysis

Andrew E. Russell, Feb. 7, 2022
Daubert

Turn around.
Turn around. Jim Wilson, Unsplash

Motions to disqualify experts under Daubert come up frequently in patent cases. After all, expert work can be difficult and prone to error, and scoring the disqualification of another parties' expert can be a huge blow (although sometimes it has less of an impact than the moving party may expect).

Judges in Delaware often hold oral argument on Daubert motions, typically at the same time as they hear case dispositive motions. But it's uncommon for the Court to hear testimony directly from an expert at a Daubert hearing.

That's exactly what Judge Andrews ordered last week in Sprint Communications Co. v. Cequel Communications, LLC, C.A. No. 18-1752-RGA (D. Del.), however. There, …

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Judge Stark Awards Attorneys' Fees in Two Cases

Jeff Castellano, Feb. 4, 2022
Fees

This week, Judge Stark granted defendants' motions for attorneys' fees in two separate cases. Although the cases are unrelated, there is nonetheless a fair amount of overlap in what the Court found persuasive in granting fees.

Money
Pepi Stojanovski, Unsplash

The defendants in both cases - Wi-Lan v. Sharp Electronics Corp., C.A. No. 15-379-LPS and Belcher Pharmaceuticals, LLC v. Hospira, Inc., C.A. No. 17-775-LPS - moved for fees under 35 U.S.C. § 285, arguing that the cases were exceptional.

So what helps convince a judge that a case is exceptional, and what are some other through-lines in these rulings?

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Claims Return From Dead in Harrowing New Action!

Nathan R. Hoeschen, Feb. 3, 2022
Claim Narrowing

Clllaaiiiimmmmss!!!! claaaaiiiiiimmmmssss!!!
Clllaaiiiimmmmss!!!! claaaaiiiiiimmmmssss!!! An old asylum near Berlin, Nathan Wright, Unsplash

When the Court orders a patentee to reduce the number of asserted claims -- what happens to the ones that are dropped? Are they truly gone, or might they still maintain some sort of cursed half life -- banished from the case yet hungering to be asserted anew?

As we've discussed in the past, patentees will often argue that due process requires they be allowed to assert each of their claims, regardless of the Court's case management concerns. Since, however, a patentee maintains only their best claims, the issue typically becomes moot before it prompts an opinion squarely addressing the due-process issue.

Fortunately (for bloggers) the issue came to a head in Vaxcel Int'l Co. Ltd. v. HeathCo LLC, C.A. No. 20-224-LPS, D.I. 122 (D. Del. Feb. 2, 2022). There, Judge Stark had ordered the plaintiff to reduce its asserted claims down to 21 (from 167 initially asserted). Id., D.I. 48. After this narrowing, Judge Stark held several of the remaining claims invalid for indefiniteness. The plaintiff thus sought to replace the invalidated claims with ones that it had previously jettisoned (that allegedly lacked the indefiniteness problem).

Noting that the narrowing order stated that it would be modified only for "good cause," Judge Stark found that it was lacking here, especially in light of the fast approaching close of fact discovery. ...

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Special Master Orders Plaintiff to Produce Expert Reports From Previous Cases That Include Previous Targets' Confidential Information

Andrew E. Russell, Feb. 2, 2022
Protective Order Confidential Information

Treasure
Ashin K Suresh, Unsplash

Yesterday, Special Master Gregory B. Williams issued an order in TQ Delta, LLC v. Dish Network Corp., C.A. No. 16-614-RGA (D. Del.) requiring the plaintiff to turn over unredacted copies of its expert reports, declarations, and testimony from prior cases. These materials contain the confidential information—possibly even source code—of prior defendants.

As set forth by the Special Master, this information is relevant to the plaintiff's current cases, because it involves related patents with similar issues:

[T]he Prior Litigation Materials are relevant to the claims and defenses in the present action. Specifically, [the expert] Dr. Madisetti's prior opinions concern other "phase scrambling" patents in the same patent family as the '158 and …
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Court Declines to Adopt Report & Recommendation, Grants Early Summary Judgment of Non-Infringement

Andrew E. Russell, Feb. 1, 2022
SJ Summary Judgment

Clients and co-counsel often ask whether it makes sense to object to an R&R issued by a Magistrate Judge. The answer depends on many factors. For example, why was motion denied? What are the chances it will be reversed? What is the client's commitment level to the case? What is the impact of the motion on the case? Etc.

Sometimes, though, what people really want to know is "would the district judge ever decline to adopt an R&R?" The answer to that is that yes, the court will sometimes declines to adopt an R&R, but it is definitely the less common outcome.

Yesterday, Judge Andrews did just that: he declined to adopt an R&R on a motion …

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Court Strikes Answer, Orders Default for Unrepresented Corporate Defendant

Andrew E. Russell, Jan. 31, 2022
Motion to Strike Answer

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Generally, corporations have to be represented to appear in Federal Court, or they are at risk of default. This is something that comes up surprisingly often, including when corporate defendants try to file their own filings without an attorney (by mailing them to the clerks' office), or when counsel for a corporate defendant seeks to withdraw mid-case.

Judge Fallon issued an opinion today showing the consequences of a corporation failing to retain counsel. Plaintiff brought suit and, requested entry of default after a corporate defendant failed to answer. That corporate defendant then filed an "answer"—which, based on the docket, was not an answer at all, in that it did not respond to plaintiff's claims. Plaintiff then moved …

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Visiting Judge Wolson Denies Motion to Exclude Jurors Without "Up to Date" COVID-19 Vaccines

Andrew E. Russell, Jan. 28, 2022
COVID-19

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

Today, visiting Judge Wolson issued an opinion and order declining to exclude jurors without up-to-date COVID-19 vaccines. The government had requested to exclude those jurors to prevent trial disruptions due to COVID-19.

The opinion was issued in a criminal case, but the language would seem to apply to civil cases as well; the denial was based largely on the difficulty of assembling jury pool in Delaware who are current on their vaccines:

A vaccination requirement along the lines the Government proposes could hamper the Court’s ability to assemble a jury. Current statistics suggest that only 34% of Delaware residents over the age of 18 have received booster shots. 1 That includes 65% of those who are over the age of 65, many of whom are not part of the jury pool because of their age. The result of excluding from the jury pool a large number of people with a high vaccination rate will be to lower the rate of people over the age of 18 in the remaining pool. There could be additional members of the jury pool who are eligible because they received their vaccinations recently. But in any event, the numbers suggest that a vaccine requirement along the lines the Government proposes would exclude nearly 2/3 of potential jurors from the jury pool.

The Court also noted that jury service is an important right ...

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Section 284 Does Not Actually Say "Willfulness": Court Dismisses Willfulness Claim, Allows § 284 Treble Damages Claim to Proceed

Andrew E. Russell, Jan. 28, 2022
Willfulness § 285

Triple Damages
Marcel Eberle, Unsplash

We've written a lot on the developing case law in Delaware around willfulness and motions to dismiss. Willfulness requires knowledge of the infringement, and some of our judges have dismissed willfulness claims because the filing of a complaint for patent infringement cannot serve as the basis of knowledge of infringement.

Today, Judge Andrews followed that case law, and dismissed a willfulness claim in an amended complaint, stating that the original complaint cannot serve as a basis for establishing knowledge:

iFIT also alleges that Peloton knew of the '407 patent as of the filing of its original complaint. . . . I think this is irrelevant. My view is that an amended complaint cannot rely upon the …
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