You know what to do...AI-Generated, displayed with permission
Many District of Delaware scheduling orders in patent cases include deadlines for both "initial" and "final" infringement and invalidity contentions. In those cases, parties often argue that having a deadline for "final" invalidity contentions means there is no obligation to supplement in the period between initial and final contentions.
The obligation to supplement under Federal Rule of Civil Procedure 26, after all, states that it applies to Rule 26(a) disclosures, interrogatories, RFAs, and RFPs—but not explicitly to "contentions" required by a scheduling order.
I've seen the Court go both ways on this. The judges often seem willing to grant a motion to compel earlier responses, saying that early supplementation is required …
A 282 notice is a bit of an anachronism and a bit of a trap.
AI-Generated, displayed with permission
For those who don't read these latter sections of section 35 that often, it goes like this:
a party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit [or] as showing the state of the art
Obviously, in the modern world of contentions, expert reports, moving type, etc., the parties are usually …
This AI-generated image, used in one of our posts, also depicts my reaction to AI-generated writing.AI-Generated, displayed with permission
Here at IP/DE, we are big fans of generative AI. We've repeatedlywritten about AI cases, and I've been involved with speaking and writing about AI issues since 2018. We've also been using AI to create images for our posts for quite a while now, with varying levels of success.
That said, like everyone else, we're annoyed by the amount of AI-generated slop on the internet these days. The proportion of new original content seems to be rapidly shrinking, and eventually we'll be left with tiny little islands of actual material generated by living people with real feelings and experiences …
My feeling (informed, but not rigorously researched until a post later this week), is that enablement is slowly overtaking 101 as the vehicle of choice to attack the overreaching patent.
Preemption is no longer the watchword it once was in 101 jurisprudence (Impact Engine actually filed a petition for cert a couple months back asking "Whether the lodestar for determining patent eligibility under this Court’s two-step framework is whether the patent claims preempt basic technological or scientific building blocks").
Oh preemption, my guiding light. Lead me on the 101 inquiry.Casey Horner, Unsplash
At the same time, enablement is on a bit of an upswing following the Supreme Court's decision in Amgen Inc. v. Sanofi, 598 U.S. 594,610 (2023) which reaffirmed the general principle that "if an inventor claims a lot, but enables only a little, the public does not receive its benefit of the bargain."
A few weeks ago, Judge Connolly gave us one of the more interesting decisions in this vein, when he granted a motion for summary judgment of no enablement in Spinal Generations, LLC v. Depuy Synthes, Inc., C.A. No. 22-1368-CFC, D.I. 220 (D. Del. Apr. 11, 2025). The patents there covered a "method and device for delivering medicine to bone." (eds. note -- pretty cool title for a patent). In particular, the relevant claims required a "delivery pathway for [a] substance between at least one end of the insert and a portion of the bone."
It's relatively uncommon to see IP cases involving pro se litigants, given that corporations cannot appear pro se—but it does happen, such as when an inventor ends up being a party in a patent case.
If you find yourself as an attorney in a case involving a pro se party, it's worth remembering that a number of the District of Delaware rules include specific provisions for cases involving pro se litigants. Here are some examples.
Rule 5.2: Service
The first one is easy. Local Rule 5.2 says that, in cases involving parties that are not participants in the Court's electronic filing system (including pro se parties), you must file a certificate of service. This is …
Remember that this Friday, April 18, is a court holiday. For Delaware counsel in particular, it's worth considering whether that may impact any case deadlines.
Given the upcoming holiday, and that there is typically lighter-than-usual activity in those weeks, we're taking this week off from the blog. See you next week!
"In my expert opinion, the patents are really valuable. The plaintiff told me so!"AI-Generated, displayed with permission
Exclusion of damages opinions are a frequenttopicforourblog. Daubert motions to exclude expert opinions tend to have a higher success rate than other types of Daubert motions, and it's worthwhile to have a good understanding of where the pitfalls lie, whether you are helping an expert draft a damages opinion or considering challenging one.
Yesterday, the Court granted a Daubert motion to exclude a damages opinion in a patent case. The expert relied on prior licenses to other patents from the same inventor to support his reasonable royalty opinion for the patents-in-suit. That requires showing that the prior …
Anyone who's ever heard a judge speak, be it at the Bench and Bar conference, a luncheon, or in the drive-thru of your local Arbys, will have heard them say that a shorter brief is often better.
I only need one horsey sauce, any more is just gilding the lilyMahavir Shah, Unsplash
Law being what it is, however, this advice isn't often taken. Looking at the last 7 motions to dismiss filed in the district (look, I got bored)—with the usual 20-page limit—the average length was about 18 pages.
And so, on this slow news day, I bring you what may be the shortest successful motion I have ever seen, so that we may all be inspired to similar brevity:
Dear Judge Andrews:
We write on behalf of MSN to respectfully request an emergency teleconference and a temporary restraining order restraining Novartis from forwarding today's final judgment to the FDA. MSN' s motion to delist the '659 patent is scheduled for oral argument on April 29, 2025, and if the Court grants the motion, then Novartis' loses its pediatric exclusivity and there would be no basis to re-set MSN's ANDA's FDA approval date. If Novartis were to forward the order to the FDA, FDA re -sets MSN's ANDA's approval date, and MSN is successful on its motion, then MSN would be irreparably harmed because it would not be able to launch its ANDA product even though Novartis would lose its pediatric exclusivity. In that regard, there is no harm to Novartis by granting MSN's requested TRO because the final judgment enjoins MSN from launching its product.
We respectfully request interim relief at the Court's earliest convenience.
Novartis Pharmaceuticals Corporation v. Dr. Reddy's Laboratories, Inc., C.A. No. 19-2053-RGA. D.I. 518 (D. Del. Apr. 1, 2025).
That little motion—which was actually emailed to chambers—won the defendant a short-lived TRO that very day:
MSN's request for temporary emergency relief is granted. Novartis and its agents are ORDERED to maintain the status quo. That is, Novartis is directed not to provide the final judgment entered today to the FDA. I do not see any harm to Novartis from brief delay, because MSN cannot launch. But Novartis can certainly respond to MSN's letter, and I will reconsider the issue after receiving any response from Novartis.
A couple of weeks ago, in an opinion on a motion to dismiss, Judge Andrews mentioned the the defendant had filed a "speaking motion":
Curt and U-Haul now move to dismiss for failure to state a claim under Rule 12(b)(6) solely on the grounds that the statutes of limitations for the negligence and breach of implied warranties claims have run. . . . Curt argues that, under Delaware law, both claims are time-barred; its speaking motion makes no reference at all to Massachusetts law. (See D.I. 65).
Street Retail LLC v. Curt Mfg., LLC, C.A. No. 24-731-RGA, 2025 U.S. Dist. LEXIS 54442, at *2 (D. Del. Mar. 24, 2025).
Today's tale is of a stipulation, born of hope and an honest desire to streamline a case, that ended in acrimony and pain.
The parties in Roger P. Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 431 (D. Del. Feb 21, 2025), had long ago stipulated to several representative products for the purposes of infringement and invalidity across an otherwise vast swath of accused …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
