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Judge Fallon Stays Action Involving IPR on Just One of Two Asserted Patents

Andrew E. Russell, June 10, 2022
Stay Pending IPR IPR

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity …
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How Long Does a Markman (Claim Construction) Hearing Usually Go in the District of Delaware?

Andrew E. Russell, June 7, 2022
Markman Hearing Markman

Analog Clock
None, Ocean Ng, Unsplash

A recurring question here in D. Del. is "how long should we request for the Markman hearing?" (when such a request is required under the scheduling order).

Parties often request around 2-3 hours, depending on the number of terms. But I was curious how much time judges actually order for Markman, so we collected some statistics. Here is how many minutes each judge has permitted for Markman oral argument, on average, over the last year:

  • Judge Stark: 91 minutes on average (7 hearings)
  • Judge Andrews: 92 minutes on average (9 hearings
  • Judge Noreika: 102 minutes on average (18 hearings)
  • Magistrate Judge Burke: 170 minutes (9 hearings)
  • Magistrate Judge Hall …
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Update: After Testimony, Judge Andrews Permits Damages Theory Capturing 100% of Difference in Net Profit

Andrew E. Russell, June 2, 2022
Damages Daubert

Red Phone
Miryam León, Unsplash

We wrote back in February of an uncommon Daubert opinion from Judge Andrews where he asked for a hearing with testimony from the expert, and for an additional round of briefing on Daubert.

Judge Andrews' concerns stemmed from an apparent lack of apportionment in the damages analysis—something that often trips up damages experts:

No one would sell the [accused] product without its numerous necessary parts. But it does not follow that the value of each necessary part is the same as the value of the whole. And yet that is what it appears that Dr. Mangum is doing.

After hearing testimony from the expert, however, Judge Andrews today issued an opinion finding that is not …

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How Do You Drop Claims in a Patent Action, and Are They Withdrawn with Prejudice?

Andrew E. Russell, May 27, 2022
Claim Narrowing Case Narrowing

Drop
Andrew E. Russell, CC BY 2.0

In my experience, parties in patent actions in the District of Delaware (and elsewhere) routinely drop claims in the lead up to trial. "Dropping claims" includes withdrawing asserted claims (e.g. "Claim 1"), whole asserted patents (e.g., "the '123 patent"), infringement contentions (e.g., "direct infringement" or "infringement by product A"), and other claims (including non-patent claims).

Most often, in practice, this is accomplished via an e-mail to the other side or, if the parties want something on the docket, by stipulation. I don't know of a case where the Court here insisted that a plaintiff not drop claims (of course, a defendant may also have counterclaims).

Are the Claims Withdrawn with Prejudice?

But parties rarely …

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Special Master Williams, Nominated to Replace Judge Stark, Strikes Late Infringement Contentions

Andrew E. Russell, May 25, 2022
DOE Motion to Strike

Special Master Williams quoted Judge Andrews' recent holding that a new <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Doctrine of Equivalents'>DOE</a> argument
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.

Special Master Williams rejected …

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System Prior Art Strikes Again

Andrew E. Russell, May 24, 2022
Expert Discovery Pennypack

Copyright Symbol
Andrew E. Russell

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 …

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What Does a Party Need to Include in a Patent Complaint? Definitely All Asserted Patents...

Andrew E. Russell, May 18, 2022
Default Standard Twombly

Hawk
Mathew Schwartz, Unsplash

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 ...

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Chief Judge Connolly Warns ANDA Plaintiff to Cut Back from 16 to 4 Asserted Claims Before Trial or Face Consequences

Andrew E. Russell, May 16, 2022
ANDA Congestion

Four
David Pisnoy, Unsplash

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 …
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Judge Noreika Denies Some Voluminous § 101 Motions to Dismiss Without Reaching Merits, Citing Efficiency Concerns

Andrew E. Russell, May 11, 2022
MTD § 101

"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 …
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Wasted Effort? Court Denies Spoliation Sanctions After Prototype Goes Missing from Inventor's Home

Andrew E. Russell, May 9, 2022
Spoliation Sanctions

Fire Department
Mor Shani, Unsplash

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. …

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