A Blog About Intellectual Property Litigation and the District of Delaware


IP
Intellectual Property

Is Receipt of a Letter Listing Only the Patent and Accused Product Enough to State a Claim for Willfulness?

Andrew E. Russell, Jan. 5, 2022
Willfulness MTD

Envelope with Letter
Brando Makes Branding, Unsplash

That is the question Judge Andrews addressed yesterday. He found that yes, a letter listing a patent and accused product is enough to state a claim in a complaint for pre-suit willfulness—the letter need not include things like claim charts or specific descriptions of product features:

I find that the notice letter sufficiently pleads knowledge for the eight patents-in-suit listed in the letter. The letter lists many LG products and states, " These products, and others made, used, sold, offered for sale, or imported into the United States by LG, infringe many of the patents in [Bench Walk's] portfolio." (D.I. 25-1 at 1-2). The letter then enumerates eleven patents, including eight of the ten …
View

Court Denies Stipulated Five-Month Adjustment to Patent Case Schedule, Requires Parties to Proceed with Multiple Alternative Constructions

Andrew E. Russell, Dec. 20, 2021
Stipulation Claim Construction

robert-anasch-ZFYg5jTvB4A-unsplash
Robert Anasch, Unsplash

As we've discussed at length, judges in the District of Delaware will usually let parties stipulate to reasonable adjustments to the case schedule, within certain limitations (including that stipulating to change the dispositive motion deadline may in some instances lead to the loss of the parties' trial date).

So it's always interesting to see when a stipulation is denied. In Osteoplastics, LLC v. Conformis, Inc., C.A. No. 20-405-MN-JLH (D. Del.), just before the close of fact discovery, the parties stipulated to a roughly 5 month delay in the remainder of the case. As the parties explain in the stip, the purpose of the delay is to provide the Court time to rule …

View

The Scope of "Substantially Similar" Product Accusations

Emily S. DiBenedetto, Dec. 14, 2021
Accused Products Contentions

Shades of Coffee

Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?

Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):

(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.

In an order last week, Judge Fallon denied ...

View

No Likelihood of Success = No Injunction, Despite Strong Showing on Harm and Public Interest Factors

Andrew E. Russell, Dec. 13, 2021
Preliminary Injunction TRO

Broken
CHUTTERSNAP, Unsplash

We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.

Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:

ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …
View

A New Front in Patent Litigation? Accused Infringer Seeks Temporary Restraining Order to Reverse Product Delisting on Amazon.com

Andrew E. Russell, Dec. 8, 2021
Preliminary Injunction UPNE

Warehouse
Adrian Sulyok, Unsplash

Here's one I haven't seen before. In EIS, Inc. v. Intihealth GER GmbH, C.A. No. 19-1227-LPS (D. Del.), the counterclaim-defendant filed a motion for a TRO to force the patentee defendant to withdraw infringement notices it provided to Amazon.com regarding the counterclaim-defendant's products, and to force them to request that Amazon restore the product's ranking and reviews on the site:

Plaintiff EIS Inc. (“EIS”) respectfully moves the Court to grant a temporary restraining order to enjoin Defendants, requiring them to withdraw their patent infringement notice(s) to Amazon that reference EIS’s “Satisfyer” products, and ordering that the withdrawal shall request that Amazon restore EIS’s product listings with the same rankings and customer reviews …
View

What Is "Plain and Ordinary Meaning," Anyway? And Why Do Plaintiffs Want It?

Andrew E. Russell, Dec. 1, 2021
KB Plain Meaning

We mentioned earlier this week that "plain and ordinary meaning" (sometimes shortened as "plain meaning" or "ordinary meaning") is the default in claim construction. But what is it?

As the Federal Circuit has said, plain and ordinary meaning is the meaning of a phrase to a person of skill in the art:

The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. . . . The inquiry into how a person of ordinary skill in the art understands a claim term provides an …
View

Chief Judge Connolly Cautions Plaintiffs on the Risks of "Plain and Ordinary Meaning" Constructions, Asks Local Counsel to "Get the Word Out"

Andrew E. Russell, Dec. 1, 2021
Plain Meaning Claim Construction

Caution
Scott Rodgerson, Unsplash

At a claim construction hearing earlier this month, Chief Judge Connolly noted some concerns with parties who offer "plain and ordinary meaning" constructions without explaining what that meaning is:

THE COURT: And going forward, Mr. Oakes, Mr. Russell, I am tempted to say the next time I get this situation [where] one side, the plaintiff[,] says, oh, plain and ordinary meaning and offers no alternative definition and all it does is criticize the defendant['s construction], which there's some actual[ly] support for, [then] I don't hold a hearing. I'm just going with the defendant. I was really tempted to do that in this case. So get the word out.

Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, at 22:22-23:7 (D. Del. Nov. 12, 2021) (transcript).

Chief Judge Connolly also pointed out a "new trend" of parties ...

View

Six Patents Survive Judge Stark's Section 101 Day

Jeff Castellano, Nov. 30, 2021
§ 101 Days MTD

All six challenged patents survived Judge Stark's most recent § 101 Day, held on November 22, 2021. The six patents were spread across three cases. Continuing his usual practice, Judge Stark ruled from the bench after hearing argument in all three cases, and then issued a written order (see below) incorporating the transcript of his bench ruling and the formal orders on the pending motions.

DNA
DNA DNA, ANIRUDH, Unsplash

In the first case, considering Step One of the Alice framework, Judge Stark found that the challenged patent was not directed to the abstract idea posited by the defendant ("an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set") and instead "enables the identification of mutations with positional accuracy in a computationally tractable manner," solving a prior art problem - notably, that sequence assembly providing for accurate detection of variants was often computationally intractable for high-throughput analysis.

Judge Stark denied the motion to dismiss based on the Step One analysis.

In the second case, Judge Stark took the somewhat unusual path of deciding Step Two of the Alice test before Step One. He explained:

The Federal Circuit has employed a similar approach and resolved 101 issues at Step Two in several of its cases, ...
View

Judge Andrews Declines to Adopt Proposed Constructions, Construes Term as Plain Meaning

Andrew E. Russell, Nov. 29, 2021
Plain Meaning

At a claim construction hearing the week before last, Chief Judge Connolly discussed the pitfalls of a party proposing "plain meaning" as a construction without specifying what the plain meaning is, and how that may just end up deferring disputes until later in the case. We'll have a post about that once the transcript is available.

In the meantime, I thought it was interesting that Judge Andrews this month declined to adopt opposing proposed constructions from the parties in an action, and construed the term as "plain and ordinary meaning":

Plaintiffs expert Dr. Robert Ruffolo asserts that a person of ordinary skill in the art would have understood the term "pharmaceutical batch" to incorporate [a] regulatory definition . . . …
View

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 …
View
Newer
Older

Archive