A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

Update on Upcoming D. Del. Trials [Updated]

Andrew E. Russell, Nov. 4, 2020
COVID-19 Trial Calendar

COVID-19
CDC / Alissa Eckert, MS; Dan Higgins, MAMS

Last week I summarized upcoming District of Delaware jury trials.

With the COVID-19 numbers surging nation-wide, I wanted to keep an eye on these. All told, five of the six jury trials are still on. One trial was continued, and the parties in another filed a letter yesterday asking to delay the trial due to COVID-19 concerns.

Here are the updates:

  • November 3: Judge Noreika's remote bench trial was canceled after the parties settled.
  • November 16: Chief Judge Stark's criminal jury trial is still scheduled to go forward, although there is a status call set for 5pm tomorrow.
  • November 30: Chief Judge Stark continued the civil jury …
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No Reasserting Dropped Claims Without Good Cause, Says Judge Andrews

Jeff Castellano, Nov. 3, 2020
Claim Narrowing Case Narrowing

In the most recent entry in the case narrowing saga in IPA Techs., Inc. v. Amazon.com, Inc., 16-1266-RGA (previously covered here and here), Judge Andrews addressed defendant Amazon's objection to the reassertion of previously dropped claims.

Earlier this year, Judge Andrews directed IPA to reduce its asserted claims to 30, and it did. Subsequently, nearly half of its asserted claims were invalidated in an IPR. Plaintiff IPA, no longer asserting the invalidated claims, then added (or "reasserted") seven of the previously dropped claims in place of the invalidated claims.

Amazon opposed the addition of the new claims because fact discovery was nearly complete and because it had crafted its invalidity case with the 30 asserted claims in …

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No Interlocutory Appeal of Contract-Based Patent Standing (Ever?)

Andrew E. Russell, Nov. 2, 2020
Standing MTD

Stop Sign
Luke van Zyl, Unsplash

Late last week, Judge Noreika denied a motion for interlocutory appeal of an denial of a motion to dismiss for lack of standing.

Security Interest Doesn't Prevent Suit After Debt Repaid

In moving to dismiss, defendant argued that the PTO assignment records show that the the patentee had assigned its patents to a lender as collateral and, after the debt was repaid, had never received an assignment back or any release of the security interest.

Plaintiff countered that the security interest was extinguished once the debt was repaid, regardless of any release or assignment specific to the patent. So no separate assignment back was needed.

Judge Noreika sided held that the judgment had been satisfied …

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Summary Judgment Granted Where Doctrine of Equivalents Analysis Merely "Repackaged" Literal Infringement Analysis

Andrew E. Russell, Oct. 30, 2020
DOE SJ

Chief Judge Stark this week granted a motion of non-infringement under the doctrine of equivalents due to the slim DOE analysis relied on by the patentee's expert.

Interestingly, the expert had offered some testimony framed in terms of the usual function-way-result DOE test:

[T]he Accused Products perform substantially the same function (producing densitometry/densitometric models for use in assessing bone density), in substantially the same way (determining linear attenuation coefficients of an object in several tomographic scans and combining this information using the Feldkamp algorithm to determine the grayscale values of voxels and the corresponding HU units thereof of a 3D CBCT volume of the object), to achieve substantially the same result (3D volumes that include information for depicting quantitative differences …
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Discovery Motions, Like Chocolate, Should Not be Kept in Your Back Pocket

Nathan R. Hoeschen, Oct. 29, 2020
Motion to Strike Discovery Dispute

You really have to use it soon
Brown Chocolate, Kaffee Meister, Unsplash

More often than not, when the Court has a hearing on discovery disputes, both sides bring competing issues. No one likes to be totally on defense for an entire hearing, and even bringing a marginal dispute allows you to undermine the opposing party by pointing out their own wrongdoing. And of course, there's always the chance that you'll win.

Judge Burke showed the limits of this calculus earlier this week—it only works if you convince the Court you've got a real dispute. And It's very hard to do that if you admit that you wouldn't have filed your motion if the other side hadn't moved first.

That's what plaintiff did in in …

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Does It Matter Whether a Patent Plaintiff Is Actually Located in Delaware?

Andrew E. Russell, Oct. 28, 2020
Jumara Transfer

Globe
Adolfo Félix, Unsplash

The short answer is: it depends on the judge.

These days, most Delaware patent plaintiffs are incorporated in Delaware but not located here. Different District of Delaware judges have gone different ways on the question of whether a plaintiff's location actually matters when considering whether to transfer a case out of Delaware.

Transfer motions are governed by the twelve "Jumara factors," and plaintiff's choice of forum gets "paramount" weight except—some judges have held—when the plaintiff is not actually located in Delaware.

Judge Connolly today answered this question with a resounding "no," holding that the location of plaintiff's principal place of business does not matter to whether it's choice of forum gets paramount weight: …

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Fees Motion Clears One Hurdle, Trips Over Another

Jeff Castellano, Oct. 27, 2020
Fees

Last week, Judge Noreika denied defendant Shopify Inc.'s motion for attorneys' fees under 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party."), holding Shopify partly accountable for the amount of fees it incurred during the relatively short pendency of the case. While the opinion is worth reading in its entirety, there are two particularly notable aspects to the decision.

What Shopify won't be getting
Sharon McCutcheon, Unsplash

First, Judge Noreika found that Shopify was the "prevailing party," on the basis of the plaintiff's voluntary dismissal of its case with prejudice. While the Court had not issued any merits-based decisions prior to the dismissal, and did not itself effectuate the dismissal (it was self-executing under Rule …

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This Is Why People Hate Having to Assert Prior Art Systems as References

Andrew E. Russell, Oct. 26, 2020
Claim Narrowing Contentions

Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:

  1. A U.S. Patent: Simple and easy.
  2. A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
  3. A journal publication: You may have to jump through some hoops, but no big deal.
  4. A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
  5. A book. Now you may be dealing with librarian declarations.
  6. . . . …
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Update on Upcoming D. Del. Trials

Andrew E. Russell, Oct. 25, 2020
Bench Trial Jury Trials

Calendar
Adam Tinworth, Unsplash

Here is a list of some of the upcoming jury/bench trials in the District of Delaware.

As you can see, aside from Thanksgiving, Christmas, and New Years', there is one jury trial per week starting 11/16 and continuing into next year.

  • November 3: Judge Noreika has a remote bench trial scheduled in W. R. Berkley Corporation v. Niemela, C.A. No. 17-32-MN (D. Del.), a non-compete case.
  • November 16: Chief Judge Stark has a criminal jury trial scheduled in U.S. v. Aaron Davis, C.A. No. 19-101-LPS (D. Del.), a fraud case. The Court issued an order last week finding that seven witnesses could testify remotely, and making some statements …
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Sometimes a Motion for More Pages Is More than Just a Motion for More Pages

Nathan R. Hoeschen, Oct. 22, 2020
Page Limits Claim Narrowing

Litigant requesting
Litigant requesting "extra pages" Belinda Fewings, Unsplash

This week saw the birth of a novel way to raise a claim narrowing dispute, and it strikes me as rather clever.

Typically the number of claims asserted gets raised as a discovery dispute or as part of the scheduling or status conference.

The plaintiff in TQ Delta, LLC v. Pace Americas, LLC, C.A. No. 13-1835-RGA (D. Del.), though, took a different tack and instead moved for extra pages for summary judgment briefing, explaining that it needed the extra pages because the defendant was asserting 18 invalidity defenses (against plaintiff's 2 asserted claims).

This resulted in the following turn of events:

  • Judge Andrews immediately issued an Oral Order requesting defendant …
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