Earlier this week, Judge Burke unsealed an opinion on what appears to be an issue of first impression for the district.
Biohaven Therapeutics LTD v. Avilar Therapeutics, Inc., C.A. No. 23-328-JLH-CJB (D. Del. Apr. 10, 2025) (R&R) is a trade secret case where the plaintiffs alleged that the defendants ... stole ... their trade ... secrets. The issue was that one of the plaintiffs, Biohaven, only had a non-exclusive license to the alleged trade secrets and thus defendant argued that they lacked standing to assert them.
Unlike in patent law, where dense treatises have been written about which types of license confer standing, the question of whether a bare non-exclusive license …
We haven't written about pre-institution IPR stays in some time. Defendants generally know that they are tough to achieve. You can try it but, unless there is something special about your case, pre-institution stays are rare. Most of our judges view the chances of institution as too remote to support a stay, and want to evaluate the situation after institution.
Judge Andrews issued a short oral order last week consistent with that view, denying a pre-institution in a way that suggests, unsurprisingly, that getting a pre-instutition stay remains difficult:
I read the briefs in connection with the motion to stay. Each side's positions are clear. Oral argument would not change the outcome. Therefore, the oral argument …
As the wise man said, pobody's nerfect. Although it may be hard to fathom, even I dear, reader have made a typo once or twice. I recall clearly the last time, it was autumn of 2003 . . .
(Eds. Note -- he goes on like this for a while, so I cut it out. his actual last typo was in this blog on Tuesday.)
Pictured: the authorAI-Generated, displayed with permission
Even in the law this is usually no big deal -- you realize you submitted the wrong exhibit Q, or you forgot the signature line, or whatever, and as long as you catch it early it tends to be fixable with a call to opposing counsel and the …
This post falls in a category we could broadly refer to as "ouch, that hurts." Maybe we can all learn from times when things go wrong.
In Alnylam Pharma., Inc. v. Pfizer, Inc., C.A. No. 22-336-CFC (D. Del.), the plaintiff asked—as plaintiffs often do—for a "plain and ordinary meaning" construction of a key term in all asserted claims, "cationic lipid," and spelled out that plain meaning in general terms. Id., D.I. 63. The defendants proposed a much longer and more specific construction. Id.
At claim construction, the Court mostly adopted plaintiff's proposed construction, holding that a "cationic lipid" is a lipid that, under its plain and ordinary meaning, is …
I've been a Delaware lawyer for a while now, but today is the first time I've seen a case where a party submitted video evidence of a deponent acting suspicious.
Pictured: The deponent, probablySergiu Nista, Unsplash
I gather from the briefing that the case was already quite contentious, as the plaintiff in Inpria Corporation v. Lam Research Corporation, C.A. No. 22-1359-CJB, D.I 506 (D. Del. Apr. 28, 2025) had requested a deposition "focused solely on document creation, retention and storage." Id. at D.I. 293. According to the briefing, the deponent "referenced another screen, positioned to his left, after questions were asked but before providing an answer," but when asked about what was on the screen, he testified …
Never-before-seen photo of Mark Twain issuing his famous quote about statistics.Emily DiBenedetto, displayed with permission
The Administrative Office of the U.S. Courts prepares various statistical reports on behalf of the Federal Judiciary, including the Federal Court Management Statistics, which are released quarterly. The most recently released batch of data comes from December 31, 2024. You might see these data cited occasionally in motions to transfer, as I happened to notice in a District of Utah opinion denying a motion to transfer to the District of Delaware.
The first trend is that—surprise!—our judges are very busy.
There have been an average of nearly 2,400 pending cases at any given time over the last six years, and total District of …
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."
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.
