A Blog About Intellectual Property Litigation and the District of Delaware


The Rule 12 Conundrum

Nathan R. Hoeschen, July 17, 2025
Motion Practice

If you ask the defendant, pretty much every complaint should be dismissed on half a dozen grounds, from 101, to lack of detail, to poor penmanship.

AI-Generated, displayed with permission

The rules being what they are, you only have 20 pages for a motion to dismiss and so you may be tempted to just leave out the penmanship thing to make room for your better motions.

Under 12(g)(2), however, you only get the one motion to dismiss:

a party that makes a motion under this rule must not make another motion under this rule raising a defense or objection that was available to the party but omitted from its earlier motion.

So you've got to wait for a 12(c) motion or SJ for your ham-handed opponents to get what they've got coming to them. That's just how it goes.

But what happens if, after you file your motion, the plaintiff amends shoring up the issues you briefed, but maintaining the same woefully deficient script. Can you now move to dismiss on that issue, now that your prior grounds are a bit shakier?

No, no you can't.

That was the holding in OpenTV, Inc. v. Pinterest, Inc., C.A. No. 24-1301-JCG (D. Del. July 16, 2025). Pinterest had moved to dismiss the complaint on a ...

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Court Denies Request to Limit Scope of DJ Claims Via Motion to Dismiss for Subject Matter Jurisdiction

Andrew E. Russell, July 16, 2025
Motion to Dismiss Declaratory Judgment

Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance.
Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance. Delorean Rental, Unsplash

In CogniPower LLC v. Fantasia Trading LLC, d/b/a AnderDirect, C.A. No. 19-2293-JLH-SRF (D. Del.), a patent suit, the Court granted a third-party supplier's motion to intervene back in 2020. Since then, based on the docket, the patentee has been trying to dismiss the intervenor from the case.

Today, the Court issued its order denying a motion to dismiss by the patentee, and it addresses to interesting issues regarding an effort to limit the scope of the Court's judgment based on subject matter jurisdiction.

First, the patentee tried to dismiss the claims based on an argument that, five years after …

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A Matter of Rank

Nathan R. Hoeschen, July 15, 2025
Summary Judgment

Pictured: a francophone. also, its good to know that chatgppt doesn't know how a rotary phone works (4,b,c,?)
Pictured: a francophone. also, its good to know that chatgppt doesn't know how a rotary phone works (4,b,c,?) AI-Generated, displayed with permission

As a devoted francophile (and middling francophone), I'm ever intrigued by the concept of rank. One cannot watch the plays of Moliere or the films of Renoir without getting a sense for the pervasive role that rank plays in every aspect of society, amongst both the proud and the petty.

This of course brings me to the place I most commonly rub against the rigid hierarchies of rank—summary judgment motions. Long time readers will of course be aware that Judges Connolly and Williams require litigants to rank their summary judgment motions, so that once one is denied, the …

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Judge Williams Issues Detailed Opinion Regarding Default Standard's Six-Year Discovery Bar

Andrew E. Russell, July 14, 2025
Default Standard Document Production

Time to go digging...
Time to go digging... Andres Siimon, Unsplash

We're back! It looks like a fair number of opinions and orders have accumulated during out hiatus, and we're looking forward to digging into them (seriously—the hardest part of writing the blog is finding things to write about).

Last week, Judge Williams issued a fairly lengthy opinion on a motion to compel production of documents from before the Default Standard's 6-year discovery provision.

For those who are not aware, the District of Delaware's Default Standard limits "follow-up" discovery in patent actions, with some exceptions, to a period of six years prior to the complaint (tracking the limitation on patent damages under § 286) absent a showing of good cause:

Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.

This can be a real limitation on discovery for cases in which the Default Standard applies (which is not all cases). And while parties occasionally reach the Court with a dispute where one party is trying to make the required showing of good cause to get around it, it's not as common as you might think.

But it is an issue that applies to just about every patent case, so it is great to see a detailed opinion from the Court about it. In Roche Diabetes Care, Inc. v. Trvidia Health, Inc., C.A. No. 24-668-GBW (D. Del. July 9, 2025), Judge Williams addressed a motion to compel production of various discovery prior to the six-year cutoff under the default standard.

The Court addressed four categories of documents and interrogatory responses, and ordered production of most of them. The Court ordered production of:

  • Development documents
  • First sale / demonstrate / manufacture / launch documents
  • Documents regarding knowledge of the asserted patents, and the plaintiff's products and methods

The Court denied the motion to compel production as to:

  • Damages and reasonable royalty documents

The Court's reasoning for each category provided some useful insights.

As to development information, the Court ...

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Judge Burke Errs on the Side of Admissibility for "Close Call" Daubert Motion

Andrew E. Russell, June 20, 2025
Damages Apportionment

Even though Daubert is
Even though Daubert is "not that high" of a bar, some experts still fail to clear it. National Library of Scotland, Unsplash

I always find that it can be helpful to see how judges rule on things, even if the rulings are kind of fact-specific, because it can still give you a sense of how they will rule on other things. (Thus, we have a blog.)

In Attentive Mobile Inc. v. Stodge, Inc., d/b/a Postscript, C.A. No. 23-87-CJB (D. Del. Jun. 12, 2025), Judge Burke addressed a Daubert motion to preclude a damages opinion that included revenue from non-infringing functionality in its royalty base, on the basis that it failed to apportion damages.

The patentee argued …

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Court Rejects Attempt to Evade Service of Process By (Allegedly) Not Opening the Door

Andrew E. Russell, June 18, 2025
Service of Process Multimedia Filing

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 ...

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The Kobayashi Maru

Nathan R. Hoeschen, June 17, 2025
Indefiniteness

ne of my many litigation dreams is to develop an inescapable trap for my opponent. A no-win situation in which to prevail on infringement, they must lost validity or vice versa. In Insoluble dilemma that can only lead to their resigning the case.

AI-Generated, displayed with permission

On this note, I present to you the novel indefiniteness theory presented in Kaneka Corp. v. Designs for Health, Inc., C.A. No. 21-209-WCB (D. Del. June 16, 2025). The claims at issue there were your garden variety claims to a solution that specified at least X% of unobtanium, Y% of salt, etc. The claims did not specify the precise parameters under which one was to measure these percentages.

(Eds. Note—Always fun to see some analytical chem in an opinion. Shout out to my HPLC and HPLC-MS peeps, ride on)

The defendants' expert had apparently measured the percentages of their product using his preferred method, and found that it was outside of the claimed percentages. The defendants then made the unusual move of submitting a conditional expert report on indefiniteness, arguing that if the plaintiff's expert found that the product did infringe, it meant the claims were indefinite because different methods for analyzing the percentages could yield different results, and thus that a POSA would not know whether a given product infringed.

Judge Bryson rejected this theory, and granted a motion to strike the report:

The defendants’ theory of indefiniteness is that if different testing methodologies produce different results, such that one testing protocol shows infringement and another shows no infringement, the claim language at issue must be indefinite. That theory is fundamentally flawed. As long as the claim defines infringement according to a single measurable standard, the fact that two different testing protocols may produce different results creates only an issue of infringement. It does not create an issue of claim indefiniteness.
In such a case, if two measurement techniques produce different results—one infringing and the other not—the task of the litigants and the fact-finder is to determine which of the two techniques is the more accurate, and to base a judgment of infringement on that finding. In this case, the limitation at issue requires Kaneka to prove that “the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %.” That is a fixed ratio with a single value for a specific chemical compound. Different testing methods, or testing done at different times and under different conditions, may produce varying results, either above or below the 90 wt % figure. But that is just to say that different testing procedures may be more or less accurate, and that particular samples of the accused product may infringe or not infringe depending on the conditions under which they are tested. But inconsistency in the results does not indicate that the claim limitation is indefinite, as 90 wt % of reduced coenzyme Q10 has only a single meaning, even though different tests at different times and under different conditions may produce results on either side of the 90 wt % value, which is fixed and definite.

Id. at 8-9 (internal citations omitted).

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Court Dismisses TGL Golf DJ Trademark Action (And Cites Caddyshack, Tin Cup, and Happy Gilmore)

Andrew E. Russell, June 16, 2025
Declaratory Judgment

The Cliffs of Insanity (from The Princess Bride)
The Cliffs of Insanity (from The Princess Bride) Saad Chaudhry, Unsplash

I saw this opinion last week and figured it would make for a nice lighthearted Friday post, but it got bumped to today when I decided to instead post about parties consenting (or not) to hearings and trial in E.D. Tx. So this is now a lighthearted Monday post.

Decades ago, former Chief Judge Robinson was known to occasionally include Princess Bride movie references in her opinions. See, e.g., Adkins v. E.I. du Pont de Nemours & Co., C.A. No. 95-315-SLR, 1995 U.S. Dist. LEXIS 17707, at *19 n.5 (D. Del. Nov. 21, 1995) (after a party called offering a more specific amended pleading …

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Visiting Judge Barker Asked Parties Whether They Consent to Hearings or Trial in the Eastern District of Texas Rather Than the District of Delaware. Here Is What They Said.

Andrew E. Russell, June 13, 2025
Visiting Judges

Texas
Micah Boswell, Unsplash

We noted last month that there have been more assignments to visiting judges lately, including to visiting Judge Campbell Barker of the Eastern District of Texas.

Later last month, Judge Barker issued an order in 17 cases asking parties to let the Court know whether they consent to hearings or trial in the Eastern District of Texas:

Within 28 days . . . . each party shall file a notice stating whether the party consents to trial, see 28 U.S.C. § 1404(a), hearings, see Fed. R. Civ. P. 77(b), or both in the Eastern District of Texas, Tyler Division.

Yesterday was the deadline to respond for most cases. We put together some quick, rough statistics of …

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