A Blog About Intellectual Property Litigation and the District of Delaware


RF-A-OK!

Nathan R. Hoeschen, May 27, 2025

The difficulty with a request for admission is right there in the name. When someone asks you to admit that you did something, it's only natural that you push back a bit, whatever the admission may be.

Admit that you were the one who brought the potato salad!

Admit that you were wearing a striped suit!

Admit that you love conures!

Ummm ... no
Ummm ... no AI-Generated, displayed with permission

But even if one overcomes these hurdles, there are further difficulties in RFA practice, waiting under every upturned rock. For instance, many scheduling orders place a limit on the number of RFAs that can be propounded, and so, like with rogs, there may be a dispute over whether a given RFA covers too much ground. Such was the case in Friday's decision in Scale Biosciences, Inc. v. Parse Biosciences, Inc., C.A. No. 22-1597-CJB, D.I. 410 (D. Del. May 23, 2025).

In that case, the plaintiff sent RFAs asking the defendant to "Admit that the following graphic illustrates, at least in part, the operation of the Parse Mini, Parse Mid Products, and Parse Mega Products," and several similar RFAs directed to several products. Defendant objected that ...

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So You Want to Be a Legal Blogger? (Or: The State of IP/DE After 5 Years)

Andrew E. Russell, May 23, 2025
IPDE IP/DE

Sad Lawyer Clown
AI-Generated, displayed with permission

Blogging about legal topics as an attorney can be tough. We at IP/DE post very frequently for a legal blog written by active, practicing attorneys, and I've occasionally been asked by other attorneys how it's going. I thought I'd offer some thoughts on legal blogging here at IP/DE, after 5 years of it, and about the successes and challenges we've faced.

(This was originally part of our Celebrating 5 Years post, but it was honestly kind of a buzz kill. So I followed my wife's wise advice to "split that part into its own post and add a sad clown face.")

One post per day adds up

IP/DE started as a personal project during the initial …

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Celebrating 5 Years of IP/DE!

Andrew E. Russell, May 23, 2025
IPDE IP/DE

Birthday Balloons
Adi Goldstein, Unsplash

Happy birthday to us! Believe it or not, IP/DE launched on May 25, 2020, so as of Sunday, this blog will be 5 years old.

Many many thanks to all of our contributors—both to our authors (Nate, Emily, and Lindsey, and former writers Jeff Castellano and David Fry) and to all of those in the community who have sent in post ideas and other thoughts over the last five years. We couldn't have done it without you!

As we discuss in today's post about the state of IP/DE, we hope to keep it up!

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This Could Have Been An Email

Nathan R. Hoeschen, May 22, 2025
Hague Service

The service rules are relics of a different time. A time when New York and Vermont would occasionally shoot half-heartedly at one another over the land between the Connecticut and Hudson rivers—an area now mostly known for being the world's most boring drive.

Welcome to the Merritt Parkway! It's ever so long!
Welcome to the Merritt Parkway! It's ever so long! AI-Generated, displayed with permission

In any event, the requirements remain and thus we are occasionally forced to make some poor courier drive to someplace terrible (see above) to drop off a paper packet. That's rule 4, for ya.

But the rules get a bit squishy if your defendant is foreign-based. FRCP 4(f)(1) initially suggests you might want to use the Hague convention, which is a great idea if you are a meticulous masochist. FRCP 4(f)(3) is where things get a bit more interesting, allowing service by "other means not prohibited by international agreement, as the court orders."

Naturally, very few means of service are specifically prohibited by international agreement. Yodeling, smoke signals, a swarm of vicious bees—all are typically fine under the relevant treaties.

This leads us to the case of the intrepid ...

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How Easy Is It to Irrevocably Waive Your Right to a Jury Trial in the Third Circuit? Pretty Easy

Andrew E. Russell, May 21, 2025
Jury Demand Jury Trials

Try not to forget that jury demand.
Try not to forget that jury demand. AI-Generated, displayed with permission

Other than in ANDA cases, most (but not all) patent cases these days involve a demand for jury trial. FRCP 38 sets a deadline for requesting a jury trial within 14 days after the last pleading directed to the issue is served:

On any issue triable of right by a jury, a party may demand a jury trial by . . . serving the other parties with a written demand—which may be included in a pleading—no later than 14 days after the last pleading directed to the issue is served; and . . . filing the demand . . . .

FRCP 38.

This rule includes a few interesting things, just from the text:

  • It sets out the demand requirement by issue, not by action
  • It says parties "may" include the jury demand in a pleading, not that they must
  • A party gets 14 days after service of the "last pleading directed to the issue" to serve a jury demand

District of Delaware Local Rule 38.1 also covers this issue, and defines the acceptable language for a jury demand in a pleading:

If a party demands a jury trial by endorsing it on a pleading, as permitted by Fed. R. Civ. P. 38(b), a notation shall be placed in the caption of the pleading stating "Demand For Jury Trial" or the equivalent. This notation will serve as a sufficient demand under Fed. R. Civ. P. 38(b).

D. Del. LR 38.1.

In my experience, parties who want to request a jury trial almost always ...

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A Very Late Markman

Nathan R. Hoeschen, May 20, 2025
Markman O2 Micro

It has been pointed out that many of my references are so oblique as to be indecipherable. Rather than improve the practice, I have resolved to simply include a footnote at the bottom of each post, lest they go unappreciated.

The best and worst artists please themselves first.

AI-Generated, displayed with permission

Anyway, today's case is Cosmokey Solutions GmbH v. Duo Security, Inc., C.A. No. 18-1477-JLH-CJB (D. Del. May 19, 2025).

The defendant there brought a Daubert motion to preclude the plaintiffs' experts testimony on the grounds that he offered a "legally wrong construction" of one of the claim terms. Naturally, this motion was brought long after the Court issued its Markman order. Neither party had proposed …

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Judge Bryson Addresses Whether Parties Must Seek a Protective Order to Narrow 30(b)(6) Topics

Andrew E. Russell, May 19, 2025
30(b)(6)

This is basically what I imagine when I hear about a
This is basically what I imagine when I hear about a "corporate deponent" Chris Barbalis, Unsplash

On Friday, the Court unsealed an interesting Judge Bryson opinion on 30(b)(6) depositions.

As we've noted, Rule 30(b)(6) now parties to meet-and-confer prior to the deposition to resolve the scope of the testimony. But the rules leaves out the exact parameters of how and when parties object, and what happens when they do.

Judge Bryson's opinion addresses an instance where a responding party objected to a 30(b)(6) notice, designated witnesses on only portions of the noticed topics, and offered to meet-and-confer (an offer the noticing party never accepted).

As promised, the deponent was prepared to testify on only a portion of the …

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Visiting Judge McCalla Adopts Chief Judge Connolly's SJ Page Limits After Party Files Lengthy Opening Briefs

Andrew E. Russell, May 16, 2025
Page Limits Visiting Judges

Paper
ron dyar, Unsplash

When it comes to summary judgment and Daubert motions, the local rules here in D. Del. set a limit for the number of pages, but don't set a limit for the number of motions. Our judges' form scheduling orders for patent actions address this, and set length limits for brifing dispositive motions (and sometimes for combined SJ/Daubert briefing).

Sometimes, however, parties end up with scheduling orders that place no limits on the number of motions. In that case, in theory, a party can file as many SJ motions as it wants under the rules, with 20 pages for each motion. In practice, that may not pan out so well.

We saw …

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Semi-Super Snap Removal

Nathan R. Hoeschen, May 15, 2025
Snap Removal Removal

I don't think I'm speaking out of turn when I say that snap removal is a patently ridiculous concept. Whatever lawyer first decided to float this argument deserves all of the praise I can heap upon them, both for the inventiveness and sheer audacity. In fact, lets take a moment to snap for them now:

Some say he's still writing that brief. . .
Some say he's still writing that brief. . . AI-Generated, displayed with permission

In any case, snap removal has been the law in the Third Circuit since Encompass Ins. Co. v. Stone Mansion Rest. Inc., 902 F.3d 147, 152-53 (3d Cir. 2018), where the Court held that the plain language of the removal statute required snap removal even though the "result may be peculiar." Id. at 153-54.

But real snappies will be aware of the next big thing—"super snap" removals, which the Third Circuit has yet to address. A super (duper) snap removal (expialadocious) is where the plaintiff electronically submits the complaint, the defendant becomes aware of it through their docket-monitoring service of choice, and then removes the case before the filing has even been accepted by the clerk.

Snappy.

The Ninth Circuit—the first to address this growing class of removals—held that they "had a foundational defect—the absence of an existing civil action in state court—that rendered them not just defective but legally null and void." Casola v. Dexcom, Inc., 98 F.4th 947, 963 (9th Cir. 2024).

Judge Noreika had a decision yesterday on a middle-ground between regular and snap removal, which I have chosen to call semi-super snap removal (expialadocious). The plaintiff in Higgins v. Novartis Pharms. Corp, C.A. No. 25-245-MN (D. Del. May 14, 2025) filed ...

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Judge Fallon Holds That a Narrative Description of a Reference Can Be Sufficient Disclosure—Even Absent a Claim Chart

Andrew E. Russell, May 14, 2025
Pennypack Invalidity Contentions

This is not the level of disclosure at issue here.
This is not the level of disclosure at issue here. AI-Generated, displayed with permission

Most readers who are patent litigators will know this already, but a "claim chart" is a table with two columns. The column on the left lists claim elements, and and the column on the right lists the portions of something—typically a product, system, or disclosure—that meets the elements on the right.

The chart shows the reader how the thing (whatever it may be) meets the elements of a claim or claims.

Detailed claim charts sometimes include figures with arrows pointing to the relevant claim elements, quotes of relevant text (if applicable), and/or a narrative description of how the cited material meets the element.

Of course, one …

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