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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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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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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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Judge Noreika Tries New Summary Judgment Procedure in Light of Trend Towards "Shotgun Theories and Voluminous Submissions"

Andrew E. Russell, Jan. 21, 2022
Summary Judgment FRCP 56

Visualization of the average D. Del. judge's <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Summary Judgment'>SJ</a> motion pile (circa 2021, pre-Judge Stark departure)
Visualization of the average D. Del. judge's SJ motion pile (circa 2021, pre-Judge Stark departure) Christa Dodoo, Unsplash

Last month Judge Noreika issued an order praising Chief Judge Connolly's ranking-based summary judgment procedure, and imposing a similar procedure—at least for one case.

Under his SJ procedures, Chief Judge Connolly addresses each party's motions in their ranked order, and if a single motion is denied, he may decline to consider all remaining motions.

Judge Noreika issued her order after the parties in the case, Dali Wireless, Inc. v. Commscope Techs. LLC, C.A. No. 19-952-MN (D. Del.), sought …

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Court Rejects State Law Claims That Defendant Stole Cryptocurrency Mining Idea

Andrew E. Russell, Jan. 18, 2022
State Law Claims Preemption

Bitcoin
Dmitry Demidko, Unsplash

Judge Burke issued an R&R today on two things we don't see very often: a successful motion for judgment on the pleadings, and preemption of state law claims by federal patent law.

The case, Bear Box LLC v. Lancium LLC, C.A. No. 21-534-MN-CJB (D. Del.), involves a patent on more-energy-efficient cryptocurrency mining systems. One of the plaintiffs claims to have met one of the defendants at a conference and, later, confidentially disclosed his ideas for improved cryptocurrency mining. Then, he says, the defendants patented his ideas.

According to the Court, plaintiffs brought two correction-of-inventorship claims, plus three state law claims:

  • Conversion ("theft of inventions")
  • Unjust enrichment (claiming inventorship of plaintiff's invention) …
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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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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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