A Blog About Intellectual Property Litigation and the District of Delaware


IP
Intellectual Property

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

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

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

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

Early Candidate for "Most Interesting Opinion of the Year": Judge Connolly Rejects Fees, Finding Both Sides Misled the Court and Engaged in Vexatious Conduct

Andrew E. Russell, May 1, 2024
Attorney's Fees

Stick Figures Fighting
AI-Generated

For attorneys who practice in D. Del., Judge Connolly's opinion yesterday in Pharmacyclics LLC v. Alvogen Pine Brook LLC, C.A. No. 19-434-CFC (D. Del. Apr. 30, 2024) is a real page turner, and well worth reading. If you want to avoid spoilers, go read it now! It's attached below, and it's only 11 pages.

Spoilers below:

It's rare for a judge to conclude that either side—let alone both—misled the Court and litigated vexatiously. But that's just what Judge Connolly found here, after the plaintiff moved for fees under 35 U.S.C. § 285.

In holding that the defendants litigated vexatiously, the Court offered two primary examples of their misdeeds. The first relates to unsupportable allegations …

View

Ironing Out the Details

Nathan R. Hoeschen, April 23, 2024
Pennypack Contentions

There are a few words I dread seeing in an order. Some are obvious—"egregious," "sanctions," "nonsensical," "balding," etc. Others I only learned to fear after seeing them used in an opinion—"valiant," "sporting," "leakage" (don't ask).

In an opinion issued over the blog's break, Judge Williams gave new fuel to the pyre of woe that is my subconscious, and added a new word to my list: IRONY

Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly.
Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly. Filip Mroz, Unsplash

Even without the irony, Chervon (HK) Ltd. v. One World Techs., Inc., C.A. No 19-1293-GBW, D.I. 394 (D. Del. Mar. 26, 2024) was an unusually interesting discovery dispute. In that case, the parties agreed to a case narrowing procedure wherein, after final contentions, the defendant was to elect no more than 3 grounds per asserted claim. When the defendant served that election, plaintiff complained that it included grounds that were not charted in the final contentions. In an apparent attempt to moot the issue, the defendant then served (without seeking leave) new contentions that did chart all of the elected grounds. The plaintiff then moved to strike the portions of the election not previously charted and the new contentions in their entirety.

Judge Williams granted that motion, striking most of the elected grounds and all of the new contentions, in particular noting that the defendant had not sought leave to serve them. Unfortunately this left the defendant without any elected grounds for several claims, and so they served a new election of asserted grounds including only grounds which were charted in the original, unstruck contentions (with a bit of a fudge factor). Shortly after service they moved for leave to submit the new contentions, and plaintiff cross-moved to strike them.

Which is where we get to the IRONY of it all ...

View

Nine Motions to Strike Is Seven Too Many

Andrew E. Russell, April 22, 2024
Motion to Strike Congestion

"They brought four motions to strike? We better bring 5!" AI-Generated, displayed with permission

There was an interesting order last week in Cleveland Medical Devices Inc. v. ResMed Inc., C.A. No. 22-794-JLH (D. Del.).

The parties filed a letter initiating a discovery dispute conference with the Court. These letters must include non-argumentative descriptions of each dispute the parties raise with the Court. Here, the letter listed a total of nine motions to strike expert reports, including five from the plaintiff and four from the defendant.

Typically the Court reviews these letters and sets a date for a conference and for briefing on each sides' issues. Here, however, the Court took issue with the extraordinary number of …

View

Judge Williams Sustains Objections to R&R, Dismisses Complaint Under § 101

Andrew E. Russell, April 20, 2024
MTD Motion to Dismiss

Scanning a Network Printer
AI-Generated, displayed with permission

In some ways, the title says it all—but here is a bit more detail. In Throughtek Co., Ltx v. Reolink Innovation Inc., C.A. No. 23-218-GBW-SRF, D.I. 60 (D. Del. Apr. 19, 2024), the patent at issue claimed a system for identifying a networked device in order to establish a connection to it, by scanning a bar code or other image patter on the device.

The defendant moved to dismiss under § 101, arguing that the patent was directed to an abstract idea.

Judge Fallon issued an R&R holding that using the bar code for the connection information solved a problem necessarily rooted in computer technology, and was a specific improvement to computer …

View
Newer
Older

Archive