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Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

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Court Issues Permanent Injunction, Sidesteps Need for Analysis: "It Is Regrettable That the Parties Could Not Resolve This Without Me"

Andrew E. Russell, Jan. 14, 2022
Post-Trial Relief Congestion

Pipeline
Mike Benna, Unsplash

Judge Andrews resolved a request for a permanent injunction in a patent case today, in a way I haven't seen before.

In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the plaintiff won an infringement jury verdict in a trial last month.

The patents involve mixing gasoline with butane automatically, rather than through a process that involves manual intervention. The accused infringement involves the mixing of gasoline and butane on a pipeline.

Plaintiff immediately moved for a permanent injunction, and sought a hearing on the injunction on December 22 or 23, just before the holidays. The patent relevant to the permanent injunction expires in April …

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The Hazards of Proposing "Plain and Ordinary Meaning," Ctd.

Andrew E. Russell, Jan. 11, 2022
Plain Meaning Claim Construction

Stop
Markus Spiske, Unsplash

We've written before about why some parties—especially patentees—like to propose "plain and ordinary meaning" constructions for claim terms, and about the potential hazards of doing so. These include having to submit a new joint chart with proposed constructions or, more significantly, risking cancellation of the Markman hearing and a decision for the other side (as Chief Judge Connolly suggested).

But sometimes parties still decide to risk it. Last week Judge Noreika ordered the parties in two separate cases to articulate specific meanings after they proposed "plain and ordinary meaning" constructions:

ORDER re . . . Joint Claim Construction Chart - IT IS HEREBY ORDERED that: (1) The Markman hearing will be narrowed. On or before …
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Lack of Expert Testimony Causes Defendant to Narrowly Lose Summary Judgment of Indefiniteness

Andrew E. Russell, Jan. 10, 2022
SJ Indefiniteness

Last Thursday, Judge Burke issued an R&R on SJ in a patent action. The patent involved software for playing back audio, and the claims included means-plus-function claim elements where an action is triggered either by a single "Back" command or by two consecutive "Back" commands.

Defendant argued that the patent failed to disclose corresponding structure showing how to calculate whether the two button presses were "consecutive"—i.e., how to measure the time between clicks. Judge Burke agreed that the patent failed to disclose such a structure:

As an initial matter, the Court disagrees with Plaintiff that these limitations "do not recite any functional requirement to measure time[.]" . . . As Defendant notes, . . . in order to be able …
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No Venue in Delaware for Delaware LLCs?

Andrew E. Russell, Jan. 9, 2022
Jumara Transfer

Delaware Memorial Bridge
Chintan Jani, Unsplash

We didn't post about this Judge Connolly opinion when it came out back in October, but on revisiting it, I thought it was worth noting.

In deciding a transfer motion, Judge Connolly suggested in a footnote that, for Delaware LLCs, venue may not be proper in Delaware unless the individual members of the LLC are citizens of Delaware (which often may not be the case):

It's not clear to me that a Delaware LLC "resides" in Delaware for purposes of § 1400(b). Although residency is not synonymous with citizenship, the terms are related; and an LLC's citizenship for purposes of deciding whether diversity jurisdiction exists "is determined by the citizenship of each of its members," Zambelli Fireworks Mfg. Co., Inc. v. Wood, 592 F.3d 412,418 (3d Cir. 2010). In this case, I am unable to determine Den-Mat's state of citizenship because it has not expressly identified the persons and/or corporations who are its members.

The Court held that the analysis proceeds up the chain of ownership to include everyone with an interest in the LLC—so it sounds like simply being a subsidiary of a Delaware corporation may not be sufficient:

Den-Mat certified in its Rule 7.1 disclosure statement that its "parent company" is an LLC. . . . It seems likely to me that the parent LLC is Den-Mat's sole member, but I can't be sure of that. In any event, Den-Mat did not identify the members of its parent LLC, and to determine the citizenship of an LLC, courts proceed up the chain of ownership until they determine the identity and citizenship of every individual and corporation with a direct or indirect interest in the LLC . . . .

It's worth noting that the entity at issue ...

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Is Receipt of a Letter Listing Only the Patent and Accused Product Enough to State a Claim for Willfulness?

Andrew E. Russell, Jan. 5, 2022
Willfulness MTD

Envelope with Letter
Brando Makes Branding, Unsplash

That is the question Judge Andrews addressed yesterday. He found that yes, a letter listing a patent and accused product is enough to state a claim in a complaint for pre-suit willfulness—the letter need not include things like claim charts or specific descriptions of product features:

I find that the notice letter sufficiently pleads knowledge for the eight patents-in-suit listed in the letter. The letter lists many LG products and states, " These products, and others made, used, sold, offered for sale, or imported into the United States by LG, infringe many of the patents in [Bench Walk's] portfolio." (D.I. 25-1 at 1-2). The letter then enumerates eleven patents, including eight of the ten …
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Court Denies Stipulated Five-Month Adjustment to Patent Case Schedule, Requires Parties to Proceed with Multiple Alternative Constructions

Andrew E. Russell, Dec. 20, 2021
Stipulation Claim Construction

robert-anasch-ZFYg5jTvB4A-unsplash
Robert Anasch, Unsplash

As we've discussed at length, judges in the District of Delaware will usually let parties stipulate to reasonable adjustments to the case schedule, within certain limitations (including that stipulating to change the dispositive motion deadline may in some instances lead to the loss of the parties' trial date).

So it's always interesting to see when a stipulation is denied. In Osteoplastics, LLC v. Conformis, Inc., C.A. No. 20-405-MN-JLH (D. Del.), just before the close of fact discovery, the parties stipulated to a roughly 5 month delay in the remainder of the case. As the parties explain in the stip, the purpose of the delay is to provide the Court time to rule …

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The Scope of "Substantially Similar" Product Accusations

Emily DiBenedetto, Dec. 14, 2021
Accused Products Contentions

Shades of Coffee

Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?

Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):

(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.

In an order last week, Judge Fallon denied ...

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No Likelihood of Success = No Injunction, Despite Strong Showing on Harm and Public Interest Factors

Andrew E. Russell, Dec. 13, 2021
Preliminary Injunction TRO

Broken
CHUTTERSNAP, Unsplash

We wrote last week about an accused infringer's attempt to secure a TRO to force the patentee to undo their efforts to get the infringer's product de-listed from Amazon.

Judge Stark swiftly ruled on the TRO, ultimately denying it for failure to show a likelihood of success on the merits:

ORAL ORDER: Having considered all the briefing and other relevant materials . . . and having heard short oral argument yesterday, IT IS HEREBY ORDERED that [accused infringer] EIS's motion for a temporary restraining order and preliminary injunction (D.I. 139) is DENIED. EIS has not shown a likelihood of success on the merits. EIS's noninfringement argument (D.I. 140 at 7−9) turns on construction of the …
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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 …
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