The Wayback Machine can be incredibly helpful in all kinds of cases. It allows you to pull previous copies of a website, seeing how it looked months or years ago. You can pull old local rules from circa 2007 and see the actual PDF; you can find out if that prior art product was on sale back in 2010; you can you can see exactly when the opposing party started (or stopped) marking their products.
But can the Court take judicial notice of a Wayback machine page? Judge Fallon addressed that …
The District of Delaware local rules prohibit additional briefing on motions beyond the opening, answering, and reply briefs permitted by the rules, and the "citation of subsequent authorities":
Except for the citation of subsequent authorities, no additional papers [beyond the response to a motion and a reply brief] shall be filed absent Court approval.
D. Del. Local Rule 7.1.2(b).
It's clear that the "citation" of subsequent authorities is permitted, but what about substantive argument regarding those new authorities?
Personally, I think the rule is clear, and a proper notice of subsequent authority should include a citation but no argument.
(If the Court had expected argument in …
When a magistrate judge makes a ruling on a non-dispositive issue in a case, and a party objects, the ruling controls and remains effective until the objection is resolved:
8. Effect of Magistrate Judge Orders and Recommendations. Until a District Judge has completed his or her review of an objection to a Magistrate Judge's order or ruling on a nondispositive matter, such order or ruling shall govern further proceedings.
That means that, when you object to a notice of deposition of two of your own inventors on the basis of "burden" (and other grounds), and your burden objection unsurprisingly fails, the depositions have to go forward—even if you then file written objections to the magistrate judge's ruling.
That is, of course, unless the Court grants a motion to stay. That's what a patentee tried last week in Pierre Fabre Medicament SAS v. Rubicon Research Private Limited, C.A. No. 24-811-JLH-SRF (D. Del.).
After the Court ordered the patentee to make its inventors available for deposition by December 5, the patentee filed objections under FRCP 72, and simultaneously filed a motion to stay the order pending resolution of the objections.
However, all motions in the case were referred to Magistrate Judge Fallon, the judge to whom they were objecting. And the standard for a stay under these circumstances requires satisfying several factors, one of which is a likelihood of success on the merits. The "merits" of the objections, here, require showing that the Judge's holding is "clearly erroneous or contrary to law."
As you have probably guessed, the judge ...
Last week in Pierre Fabre Medicament SAS v. Rubicon Research Private Ltd., C.A. No. 24-811-JLH-SRF (D. Del.), Judge Fallon ruled on a set of discovery disputes involving a motion to compel the patentee to make its inventors—who are employees residing in France—available for fact depositions under FRCP 30(b)(1).
In this case, it looks like the accused infringer has a an improper inventorship defense—which sounds like a very good reason to want to depose the inventors.
The interesting thing, to me, is that the patentee tried to fight these depositions at all. The Court easily (and unsurprisingly) batted away each of their objections.
The …
As a young lad, analytical chemistry was my jam. I liked big cool machines with lasers and flames. I liked dissolving things in acid. I liked anything that gave off a swirly gas when heated.
For that reason, I have a special empathy for the plaintiffs in Harmony Biosciences, LLC v. Lupin Ltd., C.A. No. 23-1286-JLH-SRF (D. Del. Oct. 27, 2025), and their poor, overworked experts.
The patent there was for a specific crystalline form of a drug. Typically, you would figure out this form via X-ray diffraction (XRD), which involves shooting X-rays at a crystal (typically powdered) from different angles. Via science too involved to get into here, you get a series …
Last week in Voxtur Analytics Corp. v. Haldane, C.A. No. 25-742-GBW-SRF (D. Del.), the Court addressed a plaintiff's request to redact some information from the defendant's counterclaims.
It's hard to tell from the docket (most of the filings are still sealed), but it appears that the plaintiff was under an NDA with a third party regarding some information that may have been produced in the case. The defendant's counterclaims included that information.
The Court held that the fact that plaintiff was subject to an NDA, alone, was not sufficient to support a motion to seal:
ORAL ORDER re 130 Joint Motion for …
Wow. In Belvac Production Machinery, Inc. v. Adonis Acquisition Holdings, LLC, C.A. No. 25-166-JLH (D. Del.), the plaintiff moved to compel the defendant to preserve all random access memory ("RAM") copies of certain copyrighted software that is apparently used to operate equipment.
To me, this is a wild motion—although it takes a bit of knowledge about computer memory to show why.
Unlike Nate, who wisely avoided expounding on analytical chemistry, I feel like some background on how computer memory works is needed here, to help understand just what plaintiff is asking for. The parties didn't include this in their briefing—but they probably should have explained things a bit …
We missed this when it came out, but Judge Fallon issued an opinion in March that addressed whether a defendant could evade service of process by, he claims, not opening the door when the process server tried to serve him.
In Pelham v. Vbit Techs. Corp., C.A. No. 23-162-JLH-SRF (D. Del.), a securities action, the plaintiff filed a Return of Service from their process server stating that they had served one of the defendants by personally delivering the complaint to the defendant at home—but the defendant disagreed:
On March 17, 2023, Plaintiffs filed a Return of Service, of the original summons and complaint. (D.I. 6) The affidavit of the process server states that on March 7, 2023, he personally served Jin Gao at his residence. . . . Subsequently, on April 5, 2023, Gao's counsel emailed Pelham's counsel, who filed the Return of Service, informing counsel that Gao was not personally served. . . . Gao's counsel did not receive a response from Pelham's counsel.
Id., D.I. 70 at 13.
The defendant submitted what he claimed was doorbell camera video to rebut the claim that he was served—but the Court did not consider that video, because ...
Federal Courts is one of those classes that everyone has a tumultuous relationship with. My own professor on the subject continues to vex me by running a rival legal blog. Like Boat News before them, they shall be long forgotten to history whilst IP/DE reigns ascendant. Their name spoken only by those frightened few who stumbled upon their dark and damp remains.
In any event, while issues of federalism, preemption, and the like do not often rear their heads in my practice, they often spawn an interesting opinion when they do. Case in point, Judge Fallon's opinion in Convatec, Inc. v. HR Pharms., Inc., C.A. No. 24-1248-RGA-SRF (D. Del …
We missed an interesting decision from Judge Fallon last month. In Marquinez et al v. Dole Food Company Inc., C.A. No. 12-695-RGA-SRF, D.I. 582 (D. Del. Apr. 24, 2025), Judge Fallon rejected an attempt to "recycle" an expert opinion from a prior, related action.
Apparently the plaintiff had previously retained the experts, and attempted to re-use their prior expert opinions, by admitting the transcript of their prior testimony:
The Hendler Declaration confirms that both witnesses were formally retained as expert witnesses in a prior litigation, they served expert reports in the prior litigation, and both were asked but declined to serve as retained expert witnesses in this case. (D.I. 580 at ¶¶ 9-13) Plaintiffs …
