Although this blog typically focuses on decisions rendered in intellectual property and/or antitrust cases currently in or that originated in the United States District Court for the District of Delaware or are in the Federal Circuit, every now and then there is a decision rendered in another federal trial or appellate court that is significant enough it warrants going beyond the normal boundaries.  The recent decision rendered by The Honorable Leonie M. Brinkema, of the United States District Court for the Eastern District of Virginia, in Thaler v. Hirshfeld et al., Civil Action No. 1:20-cv-903-LMB (E.D.Va. September 2, 2021), is such a decision.

In Thaler, the Court confronted, analyzed and answered the question of “can an artificial intelligence machine be an ‘inventor’ under the Patent Act?”  Id. at *1.  After analyzing the plain statutory language of the Patent Act and the Federal Circuit authority, the Court held that the “clear answer is no.”  Id.  In reaching its holding, the Court found that “Congress intended to limit the definition of ‘inventor’ to natural persons” which means humans – not artificial intelligence.  Id. at *17.  The Court noted that, “[a]s technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship.  But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”  Id. at *17-18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Express Mobile, Inc. v. Squarespace, Inc., Civil Action No. 20-1163-RGA (D.Del. August 25, 2021), the Court, inter alia, denied Defendant’s motion to dismiss Plaintiff’s claims of direct infringement.

By way of background, Plaintiff’s complaint alleges that Defendant infringes U.S. Patent Nos. 6,546,397 (“the ‘397 patent”), 7,594,168 (“the ‘168 patent”), 9,063,755 (“the ‘755 patent”), 9,471,287 (“the ‘287 patent”), and 9,928,044 (“the ‘044 patent”) (collectively, “the Asserted Patents”) through its use of certain website building tools.  Defendant, among other things, moved to dismiss Plaintiff’s allegations of direct infringement.  Id. at *2-3.  In short, Defendant asserted that Plaintiff’s complaint does not contain sufficient factual allegations to plausibly allege that the accused instrumentalities – primarily, the Squarespace website builder platform – meet the limitations of the asserted claims.  Id. at *4.  Defendant also argued for some claims that Plaintiff has not alleged that the claim limitations are met under certain claim constructions.  Id.

In response, Plaintiff argued that its complaint does meet the plausibility pleading standard as set forth in Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).  Id.  Plaintiff explained that the level of detail that Defendant was attempting to require from it is not required at the pleading stage and that Defendant was “prematurely seeking detailed infringement contentions” at the pleading stage.  Id.

In denying Defendant’s motion to dismiss Plaintiff’s allegations of direct infringement, the Court agreed with Plaintiff.  Id.  The Court explained that “[t]he Complaint identifies the patents at issue, details how the Accused Instrumentalities build a user’s website, and explains how the actions infringe on each Asserted Patent.  The Complaint need not allege “specific facts” to meet the plausibility pleading standard, but must put the alleged infringer on fair notice of the claim of infringement and the grounds upon which it rests.”  Id. (citing Disc Disease Solutions Inc. v. VGH Solutions, Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018)).

The Court further explained that the complaint need not explain how each element of an asserted claim is met by the accused instrumentalities.  Id. at *5.  The “purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits.”  Id.  The merits of Defendant’s arguments concerning claim construction and specific details of how the accused instrumentalities map to each claim element are properly tested at future stages of the litigation (e.g. summary judgment).  Id.

A copy of the Memorandum Opinion is attached.     

By Memorandum Opinion entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Alvogen Pine Brook LLC et al., Civil Action No. 19-0434-CFC-CJB (D.Del. August 19, 2021), the Court set forth its findings of fact and conclusions of law on the asserted infringement claims and invalidity defenses with respect to U.S. Patent Nos. 8,008,309 (“the ‘309 patent”), 8,754,090 (“the ‘090 patent”), 9,655,857 (“the ‘857 patent”), and 9,725,455 (“the ‘455 patent”) following a seven-day bench trial.  Plaintiffs’ claims centered under the Hatch Waxman Act, 21 U.S.C. § 355(j), and arose out of Defendants’ submission of an Abbreviated New Drug Application (ANDA) to the U.S. Food & Drug Administration (FDA) seeking approval to market generic versions of Plaintiffs’ brand-name drug Imbruvica®.  Plaintiffs asserted infringement of the four patents-in-suit by Defendants’ ANDA product and Defendants asserted numerous invalidity defenses for the patents asserted against them.

Among its numerous findings of fact and conclusions of law contained in the Opinion, the Court concluded that the ‘309 patent is not invalid due to anticipation by the Pan article.  Id. at *13-31.  In reaching that conclusion, the Court found that claim 10 of the ‘309 patent has a priority filing date of September 22, 2006 – the date of the #720 provisional application; is presumed to have been invented on that date; and, therefore could not have been anticipated by the Pan article, which was published on December 12, 2006.  Id.

A copy of the Memorandum Opinion, which is comprehensive, is attached.  

By Memorandum Order entered by the Honorable Leonard P. Stark in SZ DJI Technology Co., Ltd. et al. v. Autel Robotics USA LLC et al., Civil Action No. 16-706-LPS (Consolidated) (D.Del. August 4, 2021), the District of Delaware granted Plaintiffs’ motion in limine No. 1 to preclude the trial testimony of certain fact witnesses for Defendants, including the current Chief Executive Officer of Defendants who is a former employee of Plaintiffs.  The Court found that exclusion of the testimony of the witnesses is appropriate because the witnesses were not timely disclosed, and Defendants’ delay was neither substantially justified nor harmless.  Id. at *2.  The Court also analyzed the Pennypack factors and found those factors fully support the Court’s conclusion to preclude the trial testimony of Defendants’ Chief Executive Officer and the other excluded witness.  Id.

A copy of the Memorandum Order is attached.

The general takeaway is the importance of counsel and the parties timely disclosing the identity of potential fact and expert witnesses in accordance with the Federal Rules of Civil Procedure and the applicable deadlines set forth in the Scheduling Order in a given case in the District of Delaware.  This ruling shows that, when a party fails to timely comply with deadlines to disclose the identity of fact witnesses and/or expert witnesses, even the testimony of its own Chief Executive Officer may be excluded from trial in a given case.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. 2Wire, Inc., Civil Action No. 13-1835-RGA (D.Del. July 14, 2021), the Court denied Defendant’s motion to exclude the testimony of Plaintiff’s expert witness relating to the testing of the accused infringing products with regard to the Family 4 Patents.  In support of its motion, Defendant argued that (1) Plaintiff’s expert tests are not relevant to the question of infringement because the tests on which the opinions are based do not show how the accused products process a bit stream; and (2) Plaintiff expert’s opinions on the testing are unreliable because he did not perform or observe the tests.  Id. at *4.

Upon evaluation of Defendant’s arguments, the Court found that Plaintiff’s expert tests are relevant to the issue of infringement, the fact that Plaintiff’s expert did not perform the testing himself does not make his opinions on the tests inherently unreliable, and the reliability of Plaintiff expert’s testimony can be tested during trial through cross-examination and other methods.  Id. at *4-8.  Thus, the Court denied Defendant’s motion.  Id. at *8.

A copy of the Memorandum Opinion is attached.

Effective July 1, 2021, the Honorable Colm F. Connolly became Chief Judge in the United States District Court for the District of Delaware.  Chief Judge Connolly assumed the role from the Honorable Leonard P. Stark, who served the District of Delaware well as Chief Judge since 2014.

Thank you Chief Judge Stark for your leadership, dedication, innovation and hard work during your term as Chief Judge!  The District remains at the front of the pack and you passed the baton to a very capable leader in Chief Judge Connolly.  May GOD continue to bless you both!


By Memorandum Order entered by The Honorable Maryellen Noreika in Sentient Sensors, LLC v. Cypress Semiconductor Corp., Civil Action No. 19-1868-MN (D.Del. June 24, 2021), the Court denied Defendant Cypress Semiconductor Corporation’s motion seeking further construction of the claim term “embedded” which appears in numerous claims of the patent-in-suit, U.S. Patent No. 6,938,177 (“the ‘177 patent”).  Plaintiff Sentient Sensors, LLC was opposed to Defendant’s motion.

In denying the motion, the Court noted that “District courts have ‘considerable latitude in determining when to resolve issues of claim construction’ [and]  . . .  [t]he Federal Circuit has repeatedly upheld a district court’s decision to revisit claim construction as the case progresses, including at trial.”  Id. at *1-2.  In this instance, the Court explained that it had already expended extraordinary resources to address numerous issues and decide motions related to claim construction and infringement in the case and Defendant had ample opportunity, including when the Court previously construed the term “embedded” to raise its proposed construction of “embedded” included in its latest motion.  Id. at *2-3.

Accordingly, the Court denied the motion for further construction at the current time but advised the parties that, during the pretrial conference, the Court will address whether additional construction of the term “embedded” is necessary and, if so, how it should be accomplished.  Id. at *3.  The Court also instructed the parties that they should be prepared to go to trial without delay, including having their experts prepared to opine on infringement and validity issues using any of the constructions of “embedded” proposed by either party during the litigation including the latest construction offered by Plaintiff in its motion for further construction.  Id.

A copy of the Memorandum Order is attached.