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This Is Why People Hate Having to Assert Prior Art Systems as References

Andrew E. Russell, Oct. 26, 2020
Claim Narrowing Contentions

Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:

  1. A U.S. Patent: Simple and easy.
  2. A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
  3. A journal publication: You may have to jump through some hoops, but no big deal.
  4. A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
  5. A book. Now you may be dealing with librarian declarations.
  6. . . . …
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Chief Judge Stark Strikes Expert Opinions Under Pennypack

Andrew E. Russell, Oct. 21, 2020
Expert Discovery Motion to Strike

Pennies.
Pennies. Mark Bosky, Unsplash

I always find it interesting to see what kinds of facts that can succeed in a motion to strike. As I've mentioned, motions to strike in the Third Circuit are governed by the Pennypack factors, which can be tricky to meet and often favor lesser remedies (although the Court does strike things).

Here is what it took to warrant striking portions of an opening infringement report Arendi S.A.R.L. v. LG Electronics, C.A. No. 12-1595-LPS (D. Del.):

  • Disclosing infringement contentions against five new products for the first time;
  • Relying on previously undisclosed evidence;
  • Doing so in the 8th year of a case (albeit one currently without a trial date); …
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D. Del. Schedules November 30 Patent Jury Trial, Imposes Restrictions

Andrew E. Russell, Oct. 19, 2020
Scheduling Jury Trials

Chief Judge Stark on Friday scheduled the first post-COVID-19 patent jury trial that I've seen, in Guardant Health, Inc. v. Foundation Medicine, Inc., C.A. No. 17-1616-LPS-CJB, D.I. 487 (D. Del. Oct. 16, 2020). (The potential Judge Noreika trial I mentioned recently is not going forward).

The Court had offered the November 30 date late last month. The defendant objected to it due to a conflict. The defendant also argued that the jury pool will not be representative, lacking older jurors, and that holding a trial would go against CDC guidance.

The Court was not persuaded. It did, however, set the following restrictions:

  • No live witnesses: The Court accepted a proposal that since not all witnesses can …
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Court Orders "Unusual" Preliminary 30(b)(6) Deposition, Suggests Sanctions After Defendant Potentially "Hiding the Ball" on Damages

Andrew E. Russell, Oct. 18, 2020
Damages Sua Sponte

Google tells me
Google tells me "hide the ball" is a football thing. Dave Adamson, Unsplash

In Guest Tek Interactive Entertainment, Ltd. v. Nomadix, Inc., C.A. No. 18-1394-RGA (D. Del.), plaintiff sent RFPs for various financial documents, but defendant produced only a single page profit and loss statement for each year, claiming no more was available.

Plaintiff brought a discovery dispute and asked Judge Andrews to order production of any further documents in defendant's possession.

Judge Andrews declined. Instead, he sua sponte suggested that the parties resolve this via a 30(b)(6) deposition about the kinds of financial information that defendant keeps:

[D]o a 30(b)(6) deposition and find out if there are any other documents. And you know, …
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If You Do Not Plead Indirect Infringement, You Cannot Argue It (Without Amending)

Andrew E. Russell, Oct. 14, 2020
FRCP 15 Final Infringement Contentions

Judge Burke granted a motion to strike yesterday where the plaintiff attempted to add indirect infringement allegations in final infringement contentions, but had not pled them in the complaint.

Per Judge Burke:

It is undisputed that Plaintiffs have never pleaded indirect infringement of these patents, (D.I. 170 at 1), and so any portion of their [final contentions] that relate to that subject matter are simply about infringement claims that are not a part of this case.

He also preemptively denied any future request to amend the complaint as coming too late:

Although they have not filed a formal motion seeking to amend their currently operative complaint to include such [indirect infringement] claims, to the extent Plaintiffs suggest they would …
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We've Found the Bottom: A Claim Construction So Unsupportable that It Fails the Rule 12 Plausibility Standard

Andrew E. Russell, Sept. 30, 2020
MTD § 101

The most famous use of the phrase
The most famous use of the phrase "self-evident"? Engraving by William J. Stone

In ruling on § 101 motions to dismiss, the Court typically adopts plaintiff's constructions outright, if plaintiff offers any. Those constructions may or may not be enough to avoid dismissal, but I can't recall any instance where the District of Delaware actually had to reject a construction as implausible under the FRCP 12(b)(6) standard.

Until now. In Synkloud Tech. v. HP, Inc., C.A. No. 19-1360-RGA (D. Del. Sep. 28, 2020), plaintiff tried to bake the § 101 "non-conventional" standard into the proposed claim construction. Clever! But Judge Andrews described the problems with that approach as "self-evident":

Plaintiff states that a person of ordinary skill …
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Fed. Cir. Improves Cost / Benefit Calculus for Defendants Joining IPRs

Andrew E. Russell, Sept. 24, 2020
Estoppel IPR

Previous equations for deciding whether to join an existing IPR
Previous equations for deciding whether to join an existing IPR Roman Mager, Unsplash

Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.

Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.

The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.

It relied on the Facebook decision we talked about …

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Judge Bryson Issues 22-Page Opinion in Two Days, Stays Case Pending Re-Exam Just 11 Weeks Before Trial

Andrew E. Russell, Sept. 18, 2020
Re-exam Stay

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
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Judge Andrews Confirms Holding that Barred Full Prosecution History from Jury

Andrew E. Russell, Sept. 16, 2020
FRE 403 FRE

Judge Andrews yesterday issued his opinion denying all post-trial motions in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA (D. Del.). The jury had returned a verdict of infringement and no invalidity after a trial in January 2020.

One part of the opinion stands out—Judge Andrews discusses his decision to preclude the defendant from discussing the full prosecution history of the patent before the jury as prejudicial under FRE 403:

I ruled that 2Wire could elicit testimony about what prior art was in front of the patent examiner, but that testimony about a “lengthy history of cancelling claims, adding claims, rejecting claims, [and] rejecting new claims” was inadmissible under Federal Rule of Evidence 403 because …
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No expert? No problem. Maybe.

Andrew E. Russell, Sept. 7, 2020
Litigation Pennypack

Empty Chair
Giorgio Trovato, Unsplash

Sometimes people think that they have to offer expert testimony to rebut the other side's expert on every single issue. That's not true, at least when the other side has the burden of proof.

I've represented a defendant in a jury trial representing where we offered no damages expert at all, and it worked out well (under the circumstances—I'm definitely not saying it's a good general strategy). We poked holes in the opposing expert's theories, and the other side had no way to return fire and no reply report in which the fix the issues.

Judge Andrews addressed something like that last week in an opinion on a motion in limine. Defendant had offered expert …

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