Special Master Williams quoted Judge Andrews' recent holding that a new DOE argument "creates a new balgame."Caitlin Conner, Unsplash
Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.
In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.
We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.
Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.
On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …
One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"
It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.
Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .
The Court normally permits parties to later add or remove asserted claims or accused products as ...
On Friday, Chief Judge Connolly issued an order in the lead-up to an ANDA bench trial compelling the plaintiff to reduce its number of asserted claims by 75% to 4 claims, or face consequences:
ORAL ORDER: WHEREAS, the parties filed the proposed pretrial order (D.I. 225) on May 10, 2022; WHEREAS, the bench trial in this case is 24 days away, and, according to the pretrial order, Plaintiffs are still asserting 15 claims across eight patents . . . ; and WHEREAS, Plaintiffs' assertion of 15 claims across eight patents at this juncture makes clear that Plaintiffs have yet to focus adequately on the relative strength of their various infringement claims, the limited resources of …
"The white one in the middle is representative..."Andrew E. Russell, CC BY 2.0
This week, Judge Noreika denied a § 101 motion because it challenged more than 60 claims, and because the parties disagreed as to whether any claims were representative:
WHEREAS, Plaintiff’s [§ 101] motion does not precisely specify which claims’ eligibility it is challenging . . . , but in any event details challenges to more than sixty claims’ eligibility . . . without any agreement about representativeness . . . ;
WHEREAS, should this case proceed to trial, the asserted claims will be narrowed through the parties’ disclosures and discovery and, as such, most of the claims subject to the Plaintiff’s § 101 motion will not …
In IOEngine v. Paypal Holdings, Inc., C.A. No. 18-452-WCB (D. Del.), the inventor kept a box of 33 prototypes for his invention in his basement "laboratory."
One of the prototypes—the "MediKey device"—had been the subject of intense dispute in a previous case on his patent. It had been analyzed by experts for both sides, who disputed its functionality and whether he had accurately described it to the PTO (as part of an inequitable conduct claim).
After a series of electrical incidents and fires in his laboratory, involving visits from various electricians and fire control personnel, the inventor discovered that the prototypes were in a new box and that the MediKey device was missing. …
As we've recognized before, motions for reconsideration can be tough.
First, the deadline to move for reargument or reconsideration is fairly easy to miss. It's just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.
Second, the standard for reconsideration is fairly narrow. As we've discussed, you can't rehash arguments you already made—but you also can't make new arguments you could have raised earlier.
What does that leave? New arguments that youcouldn't have raised earlier. And those typically result from something unanticipated in the Court's ruling or order.
This week we had a good example of a worthwhile motion for reconsideration. In …
As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.
However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.
Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.
The Court found that the Initial Invalidity Contentions were sufficient in most respects:
In general, they provide real detail, including significant specificity as to ...
In rejecting a motion to amend a complaint almost two weeks ago (while we were indisposed), Judge Andrews held that a defendant's own importation under 35 USC 271(g) cannot serve as a basis for induced infringement:
Defendant argues Plaintiffs’ proposed amendment to assert induced infringement is futile, because Plaintiffs do not plausibly allege any of the three elements required for a claim of induced infringement – direct infringement, knowledge, and specific intent. . . . I find that because Plaintiffs have not alleged any acts of direct infringement by a third party in the United States, Plaintiffs have not stated a claim of induced infringement under § 271(b). . . . Plaintiffs’ argument that their …
"Pick a card, any card . . . that's our secondary obviousness reference."Aditya Chinchure, Unsplash
Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.
The analysis apparently sorted the prior art into categories:
The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”
As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:
My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be ...
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