A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

An Unusual Posture

Nathan R. Hoeschen, May 23, 2024
101 § 101

Section 101 Motions are common as dirt, and as likely to be trod under the judicial foot (although the last time we checked they had a decent win rate in Delaware).

You lose at least as often as you win, and even if you win there's a fair chance the patentee will get a chance to amend to add in new facts relevant to the analysis -- particularly as to step two's conventionality/inventiveness inquiry.

This weeks decision from Judge Williams in Dish Techs. LLC v. FuboTV Media Inc., C.A. No. 23-986 (D. Del. May 21, 2024), shows us an intriguing third way.

A most unusual posture . . .
A most unusual posture . . . AI-Generated, displayed with permission

The complaint listed just a bare handful of claims and the Defendant, Fubo, moved to dismiss under 101. The parties fully briefed the motion, and there was even an oral argument before Judge Williams. Judge Williams is historically a bit more likely than most to grant a 101 motion, so perhaps the plaintiff was feeling the heat after that hearing.

So, rather than wait to see how it all panned out, the plaintiff preemptively moved to amend the complaint both to specify more asserted claims, and to add in some allegations about how inventive and unconventional it all was. Fubo called foul (#sportspun) arguing that the proper time to move to amend was before the parties and the Court went to all this trouble, especially when plaintiffs had all the relevant information beforehand and had previously litigated these patents.

Judge Williams, although noting that the request was late, granted the motion to amend:

[T]he Court finds that Dish delayed in seeking leave to amend to assert new allegations for the subset of allegations that are based on facts that Dish knew, or should have known, as of the filing date of the original complaint.
The Court also finds, however, that Dish's delay in seeking leave to amend its complaint to include those allegations was not "undue." When the Court dismisses without prejudice a party's complaint for pleading deficiencies, that party can attempt to re-plead by adding additional factual allegations. Because "delay alone is generally an insufficient reason to deny leave to amend," that party has some leeway in attempting to re-plead by asserting facts that they knew, or should have known, as of the filing date of the initial complaint.

Id. at 5-6 (internal citations omitted)

The court then addressed futility under the usual Rule 15 standard and allowed the amended pleading. More interestingly, the Court addressed the obvious question of ...

View

A Trial Too Confusing For This World

Nathan R. Hoeschen, May 21, 2024
JMOL New Trial

Sometimes I wonder what it might have been like to be on a patent jury in 1840. The claim at issue is 12 words, something like "a machine for curing drunkenness through violent shaking, operated by a crank."

(Eds. note - is that a haiku?)

A be-wigged and mustachioed defense lawyer argues that it was really more of a swivel than a crank, and anyways it was well known in the prior art that drunkenness could be cured by shaking the inebriated patient manually, and thus no patent should have issued.

Pictured: Sobriety
Pictured: Sobriety Tadeusz Lakota, Unsplash

The jury nods in agreement at these self-evident truths, and then goes on to deliver a verdict after a brief luncheon of organ meat pies. Justice, like lunch, is served.

Those halcyon days are, of course, long gone as evidenced by Judge Andrews' opinion in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del. May 17, 2024) (Mem. Op.), which dealt with a claim (one of many) that was 424 words long.

The opinion on the various post-trial motion goes into great detail about the difficulties of presenting a coherent trial on such complicated software claims:

Much of the trial testimony on infringement can only be understood, if at all, with great effort. The claims are very long and complicated. For example, claim 1 of the '287 patent is 424 words long. At trial, Express Mobile divided the claims into four parts, which it color-coded as red, green, gold, and blue. The testimony of Plaintiffs technical expert about how Shopify's system worked was intermingled with references to its meeting, e.g., the "red group of limitations." The testimony at times lacked the usual one-to-one correspondence with the specific limitations in the claims, and that combined with the color-coding means that trying to figure out whether there was sufficient evidence to show infringement is difficult.

Id. at 9 (internal citations omitted).

Given that description, I was surprised to see that the patentee had actually prevailed at trial to the tune of $40,000,000. Judge Andrews apparently agreed because he ...

View

Cross Briefing On Discovery Disputes Is Not an Opportunity to Pre-Brief the Other Side's Motion

Andrew E. Russell, May 20, 2024
Discovery Disputes Letter Briefs

"Guys, if we write our own opening brief on their issue, we'll get more than twice the page limit! The Court loves extra briefing, right?" ron dyar, Unsplash

I've had this come up a couple of times lately, and an opinion came out on Friday that addresses it.

Here is an example scenario: Each side has a discovery dispute. The Court sets a briefing schedule with opening, answering, and reply 3-page briefs. Can each side spend half of its opening brief pre-briefing the other side's issues? Should they?

Judge Fallon resolved this on Friday with a clear "No". You wait for the other side to file their brief, and then respond:

ORAL ORDER re 49 Joint Motion for Discovery …
View

Court Denies Motion to Dismiss That Was Contingent on a Claim Construction Issue

Andrew E. Russell, May 17, 2024
MTD FRCP 12(b)(6)

Trash Can Basket
Gary Chan, Unsplash

If you file a motion to dismiss and it's contingent on resolution of a claim construction issue in your favor, you're at risk of being denied. We saw that yesterday in a case before Judge Hall, where she denied a motion to dismiss in advance of the Markman hearing:

ORAL ORDER: Having been reassigned this case, having reviewed the briefing filed in connection with Medacta's pending Motion to Dismiss Count III (regarding infringement of the '678 patent) for Failure to State a Claim (D.I. 12 ), and it appearing that the outcome of the Motion depends on the Courts claim construction of a particular term, and in light of the fact that claim construction disputes are …
View

Rule 50(a) Motions Are Terrifying and You Should Be Concerned at Trial

Andrew E. Russell, May 15, 2024
FRCP 50(a) FRCP 50(b)

"That's Jim. He's been like that since he forgot to mention our fifth non-infringement argument in the JMOL after he was up until 4am doing exhibit objections. Turns out that's the one we needed to preserve." Sabina Music Rich, Unsplash

Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.

Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.

But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.

The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.

Trial teams handle this many different ways, but the most common seems to boil down to ...

View

Graham Factors Are Crackers

Nathan R. Hoeschen, May 14, 2024

Motions for summary judgment that a particular patent is "not invalid" (why can't we just say valid? I think the patents would like that better) are generally pretty winnable.

Why do they have to say it like that doc? Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me!
Why do they have to say it like that doc? Why can't I just be valid? Do you know what it's like knowing the exact moment I'll expire? The anticipation's killing me! AI-Generated, displayed with permission

A brief survey of the last 10 such decisions found that fully half were granted. Most of those decisions, however, dealt with 112 or 101 issues. If you're moving on your more classic obviousness and anticipation issues, however, you've got a pretty rocky row to hoe. A look back at those opinions finds that only 30% of the last 10 were granted, at least one of which appeared to deal with a defense that was largely abandoned.

Today's opinion in Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 (D. Del. May 2, 2024), is a good example of a situation where such a motion is worth shooting for (and possible ordering higher in your list). The plaintiff, Qorvo (pronounced just like it looks), complained that the defendant's obviousness expert had failed to present any testimony on the motivation to combine. Defendant countered that their expert had done the appropriate analysis, but had simply failed to use various "buzz words" from Graham, KSR, and the like.

Judge McCalla agreed with ...

View

Fixing a Judgment: Rule 59 vs. Rule 60

Andrew E. Russell, May 13, 2024
FRCP 59 FRCP 60

I know which one I'd prefer.
I know which one I'd prefer. AI-Generated, displayed with permission

Because cases tend to go away rapidly over time, either through settlement or on the merits, attorneys tend to be less experienced with motions that come up later in the case, particularly things that come up after the judgment (other than post-trial motions), or even after appeal.

One example is a motion to alter or amend a judgment under FRCP 59(e). You just don't see them that often. So I thought it was worth talking about a Rule 59(e) motion that the Court addressed last week.

In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103 (D. Del.), the plaintiff argued that the …

View

Judge Noreika Denies § 101 Motion Without Addressing Merits Where Scheduling Order Permits Assertion of Additional Claims

Andrew E. Russell, May 10, 2024
MTD Motion to Dismiss

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

Judge Noreika issued an interesting order yesterday denying a § 101 motion to dismiss. According to the docket, shortly after the defendant filed its motion to dismiss—and contrary to what we found when we last looked at this—the Court directed the parties to meet-and-confer on a proposed schedule.

While the motion to dismiss was pending, the Court held a scheduling conference and issued a scheduling order. In it, the parties agreed to a real case narrowing proposal (without court intervention!), with plaintiff to initially cut back to 20 asserted claims per patent and 50 total by initial contentions, and then further cut back to 25 total just before final contentions.

After the Court entered the schedule, …

View

Delay Is a Motion Killer: Part Two

Andrew E. Russell, May 8, 2024
Discovery Disputes Motion Practice

Do It Now
Brett Jordan, Unsplash

Last month we wrote about how delay is a motion killer. Procrastination is a problem most of us litigators share. But if you want your discovery motion granted, it's best to move now not later. Keep up the pressure.

We got another example of that yesterday in Tot Power Control, S.L. v. LG Electronics Inc., C.A. No. 21-1304-MN (D. Del. Apr. 23, 2024) (unsealed May 7, 2024). Tot is an opinion by Judge Fallon on several discovery motions, and two of them were denied due to delay.

First, the Court denied a request to compel plaintiff to produce communications related to valuations it received. Back in June 2023, the plaintiff had agreed …

View

Judge Hall Cancels Markman, Defers SJ After Parties Propose 18 Terms

Andrew E. Russell, May 4, 2024

Eject Button
Brian De Groodt, Unsplash

We post often about how the Court handles Markman, and how much leeway the judges will give parties in seeking to construe terms (hint: it's usually 10 terms or less—and, these days, that's the total number, not the 10 terms per patent of old.).

This week, after parties in a case before Judge Hall sought construction of 18 terms, the Court vacated the Markman hearing and briefing schedule, and deferred all construction to the case dispositive motions stage (seemingly without additional pages):

ORAL ORDER: The parties have submitted a joint claim chart (D.I. 105 ) with 18 terms in dispute including, for example, "calculate" and "random." Defendants contend that 9 of the 18 disputed …
View
Newer
Older

Archive