A Blog About Intellectual Property Litigation and the District of Delaware


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The Honorable Maryellen Noreika

O2 Micro? More Like No2 Micro

Nathan R. Hoeschen, June 24, 2021
O2 Micro Claim Construction

We at IPDE have chronicled the Court's efforts to limit the number of terms it construes pretty extensively. Just last month, we discussed Judge Noreika's opinion in Sentient Sensors, LLC v. Cypress Semiconductor Corp., C.A. No. 19-1868-MN (D. Del. May 17, 2021) where she shot down the plaintiff's motion to reconsider one of her claim construction rulings, citing O2 Micro.

This week, there are some further claim construction developments worth talking about—but we'll start first with some interesting history that we overlooked last time around.

A Difficult Claim Construction Journey

Although we didn't discuss it in our previous post, this case had already had a tempestuous claim construction process. The parties had initially submitted 8 disputed …

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Judge Noreika Permits Service on Foreign Defendant by E-mail; Holds That Hague Convention Does Not Prohibit E-mail Service

Andrew E. Russell, June 13, 2021
Hague FRCP 4

You've got . . . 2 new complaints!
You've got . . . 2 new complaints! Brett Jordan, Unsplash

We talked earlier this year about how Judge Hall permitted e-mail service of a complaint to a Taiwanese corporation under FRCP 4(f)(3), and we wondered whether this may be a reliable way to skirt cumbersome foreign service issues going forward.

As of Friday, the answer is still trending towards "yes." The previous case involved Taiwan, which is not a party to the Hague Convention. On Friday, Judge Noreika permitted service via e-mail on the U.S.-based counsel of a Korean entity—a party to the Hague convention—sidestepping the need to engage in cumbersome and time-consuming international service procedures:

Pursuant to Rule 4(f)(3), the Court may order that …
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The Intersection of Marking and Pleading

Nathan R. Hoeschen, June 10, 2021
FRCP 12 FRCP 12(c)

It's fairly common for plaintiffs in Delaware to plead infringement by alleging that the defendant infringes "at least claim x," of the relevant patent—leaving the question of what other claims might be asserted until later in the case.

In line with the Federal Circuit decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018), many of our Delaware judges have explicitly endorsed this practice. See, e.g. Promos Techs., Inc. v. Samsung Elecs. Co., Civil Action No. 18-307-RGA, 2018 U.S. Dist. LEXIS 186276, at *6 (D. Del. Oct. 31, 2018) ("Plaintiff does provide details of at least one claim allegedly infringed under each asserted patent. Therefore, Plaintiff's identification of infringed …

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Judge Noreika Points Out Nuance in O2 Micro, Declines to Construe Term

Andrew E. Russell, May 17, 2021
Plain Meaning Claim Construction

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …
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Judge Noreika's Construction Limits, Revisited

Nathan R. Hoeschen, May 6, 2021
Markman Briefing 10 Terms

danist-8Gg2Ne_uTcM-unsplash.jpg
Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …

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Here Is an Overview of the Changes in Judge Noreika's New Form Scheduling Orders

Andrew E. Russell, April 6, 2021
Scheduling Orders Scheduling Order

Form Scheduling Order
The Honorable Maryellen Noreika

Judge Noreika updated her form scheduling order yesterday. Here are the changes:

  • Separate deadlines for fact and expert discovery cut offs. Judge Noreika's old form orders, and several other judges' form scheduling orders, set a cut off date for "all" discovery and a deadline for substantial document production. But parties often also set a separate deadline for fact discovery, so that there is a clear delineation for when fact depositions and any remaining document production need to end before expert reports occur. This resolves that issue.
  • Joint claim chart changes. Intrinsic evidence must now be submitted in an appendix rather than with the joint claim chart. This may help with the common issue that …
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Claim Construction After Trial Results in Non-Infringement

Jeff Castellano, March 30, 2021
Post-trial Motions Claim Construction

Before the Supreme Court held in Markman v. Westview Instruments that claim construction is an issue of law to be decided by the judge, and not the jury, parties would often build alternative theories of infringement and invalidity into their contentions and expert reports to take into account the different claim construction positions being argued. Because they couldn't know which position would be accepted, they were forced to plan for both, and present theories under both at trial.

Markman changed that practice. Now that claim construction is almost always decided before trial (and usually before expert reports), parties can focus on the judge's construction while building their trial presentation. However, it is worth remembering that pretrial claim construction is not set in stone, and that the judge can modify that construction based on any number of inputs, including the evidence at trial and the parties' evolving arguments.

Judge Noreika did exactly that in a ruling issued earlier this week, leading to a non-infringement finding for the defendant, and eliminating the need for a post-trial opinion on the evidence and argument submitted during trial.

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Patentee Survives Section 101 Motion; Fails to Clear "Low Bar" for Pleading Direct Infringement

Jeff Castellano, March 2, 2021
MTD Direct Infringement

Terracotta revetment with a griffin
The Met

Yesterday, Judge Noreika denied an early Section 101 challenge to two patents-in-suit, in light of a factual dispute regarding unconventionality of certain aspects of the claimed invention.

Although plaintiff managed to survive the § 101 motion, it failed to meet the relatively un-demanding standard for pleading direct infringement – a test that would have been satisfied if the plaintiff had simply "identified the . . . accused products and alleged that the accused products met 'each and every element of at least one claim' of the asserted patents, either literally or equivalently." ...

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Two Years In, Section 101 Days Continue

Jeff Castellano, Feb. 2, 2021
Section 101

Nearly two years after the first "Section 101 Day" was held before Judge Stark and Judge Burke, Judges in this District continue to hold multi-motion, multi-case, all-day hearings on patent eligibility under 35 U.S.C. § 101.

When Judge Stark launched the hearings in early 2019, he expressed hope that they would make resolving the unending crush of Section 101 motions faster and more efficient. The hope for efficiency seems to have been borne out.

Judge Stark noted in a December 2020 order (see below) that "the Court continues to find that its experimental procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving …

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Court Rejects § 101 Motion Due to Lack of Detail in Specification: Is This the Way of the Future?

Andrew E. Russell, Jan. 4, 2021
MTD § 101

GPS Navigation
Alvaro Reyes, Unsplash

Judge Noreika issued an opinion today denying a § 101 motion on a patent that covers delivering GPS navigation information to a vehicle in a "short burst."

As to Alice step 1, the Court found that the claims were "do it on a computer" claims directed to the abstract idea of sending and receiving navigation data:

[A]t step 1, claim 1 seems focused on using computers to perform a human activity more efficiently.

At step 2, however, the Court found that the patent's bare-bones specification saved it from § 101—it's hard to find that any particular solution was conventional at the § 101 motion-to-dismiss stage when the specification simply does not discuss the prior …

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