A Blog About Intellectual Property Litigation and the District of Delaware


LPS
The Honorable Leonard P. Stark

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

Video From Judge Stark's Recent Appearance Before the Senate Judiciary Committee

Andrew E. Russell, Dec. 6, 2021
Fed. Cir. Congestion

As we've mentioned, Judge Stark has been nominated to the Federal Circuit. He had his nomination hearing before the Senate Judiciary Committee last week. The full video is available on the Judiciary Committee web site: Link to Video.

In the video, Judge Stark's introduction by Delaware Senators Carper and Coons starts at 49:27, and Judge Stark himself appears at 1:04:42. The introductions are about 7 minutes long, and the questions run for about 30 minutes.

Some highlights about Judge Stark, mostly from the introductions:

  • 14 years on the bench
  • 6000 civil and criminal cases
  • 2400 patent cases
  • 93 trials (63 patent trials)
  • 2100 written opinions
  • Only 2% of his opinions reversed or affirmed with criticism

As …

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

Five Claims Across Four Patents Held Indefinite Because "Aesthetic" Is Subjective

Andrew E. Russell, Nov. 22, 2021
Indefiniteness Claim Construction

"Moon flask with Aesthetic bird motif" The Met

Judge Stark today issued an opinion holding five claims across four patents indefinite, based on two terms: "aesthetic" and "similar to a light house." The Court held that both terms indefinite because they are subjective. As to "aesthetic," the Court rejected an argument that "aesthetic" merely differentiated between artistic and functional aspects of light:

The Court . . . agrees with [accused infringer] HeathCo that "aesthetic" is subjective and, accordingly, the claim term is indefinite. [Patentee] Vaxcel insists "aesthetic" is not subjective because it relates to the "philosophy" or "science" of "beauty and ugliness," not to whether something is pleasing or displeasing. . . . This is unpersuasive, in part …
View

Judge Stark Denies PI Motion on the Papers

David M. Fry, Sept. 24, 2021
Preliminary Injunction Oral Argument

Oral argument is never guaranteed in D. Del. This means you need to be careful in paring back your briefs—anything that ends up on the cutting room floor might never see the light of day.

Case in point: On Friday, Judge Stark issued an order denying a motion for a preliminary injunction in a competitor case (seeking to require the defendant to withdraw several pending IPR petitions). Both sides requested oral argument, and the plaintiff requested an expedited hearing.

Instead of holding argument, Judge Stark summarily denied the motion on the papers. In a single paragraph, he held that the plaintiff "failed to persuade the Court" on any of the preliminary injunction factors, and noted that a full …

View

Some Helpful Rulings on 30(b)(6) Objections

Andrew E. Russell, Sept. 22, 2021
Discovery Dispute Discovery

Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:

He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":

The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.

He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the …

View

Take What You Want and Pay for It

Nathan R. Hoeschen, Sept. 9, 2021
Fees

alexander-mils-lCPhGxs7pww-unsplash.jpg
Girl holding American Dollar Bills, Alexander Mils, Unsplash

Those with a habit of perusing these posts (thank you, persons of class and distinction) may recall the interesting case of Almirall, LLC v. Torrent Pharmaceuticals Ltd., C.A No. 20-1373-LPS, D.I. 50 (D. Del. July 13, 2021) where Judge Stark granted a 12(c) motion after ruling that the plaintiff had waived various arguments by failing to raise them until oral argument.

I, for one, expected that to be the last we heard of that case for some time. Last Friday, however, Judge Stark granted Almirall's motion to amend the complaint to reassert these same claims, based on new allegations similar to those the Court previously found waived. Judge …

View

Judge Stark Awards Post-Claim-Construction Fees

Jeff Castellano, Sept. 7, 2021
Disclaimer Fees

Late last week, Judge Stark granted defendant's request for litigation fees under 35 U.S.C. § 285 in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, following an award of summary judgment of non-infringement to the defendant and a summary affirmance at the Federal Circuit.

Plaintiff PDIC's patents are directed to virtual reality programs controlled by music or control tracks created from music. Defendant Ubisoft asserted that the accused games manually synchronized the video, soundtrack, and other effects on a timeline, and were not controlled by music or a control track created from music.

During claim construction, Judge Burke found that plaintiff had disclaimed certain subject matter during IPR proceedings...

View

Judge Stark Declined to Limit a Plaintiff to Fewer than 27 Asserted Claims for a Jury Trial

Andrew E. Russell, Aug. 16, 2021
Claim Narrowing Case Narrowing

Narrows
Karan Chawla, Unsplash

Case narrowing is an issue that eventually comes up in most patent cases—the idea that each party should have to reduce the number of claims and prior art references at points during the case.

How Claim Narrowing Usually Goes in a Patent Action

If parties want to avoid a dispute down the line, they can include case narrowing in the scheduling order. More often, however, it comes up at some point after the plaintiffs makes its initial election of asserted claims, and the parties start to get an understanding of the scope of the case.

Typically the initial narrowing occurs before claim construction, and a second round occurs afterwards, sometimes around the time of final contentions. …

View

How Many Hours of Trial Time Do You Get For a Five-Day Jury Trial? Fewer Than You Might Think

Andrew E. Russell, Aug. 6, 2021
Trial KB

Chalkboard Math
Roman Mager, Unsplash

By default, patent cases in Delaware are typically scheduled for a five-day jury trial in the initial scheduling order. Sometimes, however, it seems that parties don't give any further thought about what the actually means until they need to file a pretrial order much later in the case.

Delaware jury trials are strictly timed. Those who are less familiar with how jury trials typically go may expect that they'll have more time than they really will. A simple back-of-the-envelope calculation by someone who is not in-the-know might be:

40 hours per week / 2 sides = 20 hours per side

That would be wrong. The actual, practical number of hours per side for a five-day patent …

View
Newer
Older

Archive