Looks like someone got a hole in one. On Friday, Judge Hall issued a relatively short memorandum order granting a § 101 summary judgment motion, and it neatly encapsulates what § 101 analyses seem to be trending towards.
The Court found that the 10 asserted claims, across three patents, are all directed to a simple abstract idea:
I agree with Netflix that each and every one of the asserted claims is directed to “the abstract idea of collecting, organizing, and automatically displaying content (e.g., a playlist of Internet content).” . . . The asserted claims contain a lot of words, and some of those words sound complicated.[] But what the claims cover is not complicated. …
Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it.Kelly Sikkema, Unsplash
Yesterday, Judge Hall granted a post-trial JMOL motion in Taiho Pharmaceutical Co., Ltd. v. MSN Laboratories Private Ltd., C.A. No. 19-2342-JLH (D. Del.), finding no infringement as a matter of law.
The motion resolved a relatively straightforward claim construction issue: what the word "purity" means in the claims.
The patentee said it meant chemical purity, while the accused infringer argued it meant "polymorphic" purity. The patent as a whole is directed towards crystal forms of a drug, and discussed purity of the crystal form—"polymorphic" purity—but also mentions chemical purity. The patenteee agreed that, if "purity" means polymorphic …
It's easy to forget. But really, really really, you should move to seal the courtroom when either side is discussing your client's confidential information.
As we've discussed before, the standard for sealing information is harsh. Under the Third Circuit's Avandia opinion, in order to show good cause for a protective order to seal, a party must show "with specificity" that “disclosure will work a clearly defined and serious injury to the party seeking closure.” In re Avandia Mktg., Sales Practices & Prods. Liab. Litig., 924 F.3d 662, 671 (3d Cir. 2019). That can be toughtodo.
But you know what is even tougher? Redacting information discussed in open court. Then …
Back in 2021 the Federal Circuit issued an opinion in Bot M8 LLC v. Sony Corp. of Am. that raised the standard for granting a motion to dismiss in a patent action. C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021). The Federal Circuit held that "[a] plaintiff is not required to plead infringement on an element-by-element basis"—which was news to the patent practitioners who had filed (and won) motions on that basis.
We haven't written much about that decision in the time since, but it's still out there, and it's something to keep in mind as you weigh your options in response to a patent infringement complaint.
Yes, real jurors would not be dressed like this. You'll have to use your imagination.AI-Generated, displayed with permission
I think most attorneys admire counsel who can think outside-the-box and push the law forward.
I still remember the original, magistrate-judge-level oral argument in TC Heartland, where the Court asked counsel "if your argument is correct . . . there's really only two venues in which the suit can go forward, am I right?" and counsel answered with the oral argument equivalent of "yup"—even though that outcome was directly contrary to controlling Federal Circuit precedent and how everyone had done things for decades.
Then they appealed all the way to the Supreme Court, and changed the law for everybody. Mic …
ChatGPT's images are getting pretty good. But this DOES NOT show Judge Hall, the attorneys, a real courtroom, or anything that actually happened. Please don't sue us.AI-Generated, displayed with permission
Well this is a new one. In Apple Inc. v. Masimo Corp., C.A. No. 22-1377-JLH (D. Del.), the parties dispute whether the patentee, Apple, has a right to a jury trial. That hinges on whether Apple is seeking damages—if it can only get an injunction, it has no right to a jury trial. Id., D.I. 745 at 5.
The Court found that Apple had, in fact, asked for a total of $250 in damages for infringement of four design patents and five utility patents, and that it was therefore entitled to a jury trial. That's two-hundred and fifty dollars—you're not missing any zeros or a "k" afterwards.
(By my math, assuming at least five attorneys and two paralegals are involved, I'd guess that Apple's total damages figure is equal to the cost of about four minutes of trial time by Apple's trial team, or less. It's probably less.)
Apparently, Apple's damages figure results from the fact that $250 is the statutory minimum damages for infringement of a design patent under 35 USC § 289. According to the Court, Apple's experts testified that the $250 statutory minimum for the design patents under § 289 also constituted the entire damages award for the utility patents under § 284. Id., D.I. 745 at 4-5 n.1. Apple also wants the Court to treble that to $750. Id.
But Masimo really doesn't want a jury trial here. It pushed hard for a bench trial, to the point where its counsel apparently brought $900 in cash to court and ...
We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.
Sometimes a Reservation of Rights Actually Works
There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!
This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …
Earlier this year Judge Hall bifurcated the upcoming patent trial in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.), keeping Apple's patent claims, the related invalidity and unenforceability defenses, and a portion of a Walker Process anti-trust counterclaim—but moving other claims to a later trial:
ORAL ORDER: Having held a case management conference on March 20, 2024, . . . IT IS HEREBY ORDERED that a 5-day jury trial is scheduled beginning October 21, 2024, with a pretrial conference scheduled for October 4, 2024 at 11:00 AM in courtroom 6D. The remaining claims and defenses in C.A. No. 22-1377 and C.A. No. 22-1378 shall be joined and/or bifurcated for trial such …
Yesterday, the Court dismissed a case where the plaintiff failed to list a related case involving one of the same patents in the civil cover sheet (one of several documents required for a new case). Witricity Corp. v. Ideanomics, Inc., C.A. No. 24-895-JLH, D.I. 15 (D. Del. Aug. 22, 2024).
The first case was assigned to visiting Judge Goldberg, who had stayed it. When the plaintiff filed the second case, it did not list the first case in the cover sheet, and the Court randomly assigned the second case to Judge Hall.
The defendant in the second case smartly informed the Court of the issue by filing a short "Notice Regarding Related Case" …
It's hornbook law that demonstratives are not evidence. Nevertheless, you'll sometimes see parties file some or all of them on the docket, if for no other reason than to explain a portion of the transcript where an expert is otherwise gesturing vaguely at a powerpoint.
AI-Generated, displayed with permission
Unfortunately, there's no rule squarely addressing when it is appropriate to lodge these demonstratives with the Court. Fortunately, Judge Hall gave us all a bit of guidance last week in Ferring Pharms. Inc. v. Finch Therapeutics Group, Inc., C.A. No. 21-1694-JLH, D.I. 494 (D. Del. Aug. 28, 2024).
In that case, both parties filed their trial demonstrative a few weeks after the verdict (via notices of lodging). Just …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
