A Blog About Intellectual Property Litigation and the District of Delaware


Earlier this month Andrew wrote a post on Judge Connolly's new standing order requiring pro hac applicants to state whether a non-lawyer owns a stake in their firm.

This will always be the picture when no picture makes sense
This will always be the picture when no picture makes sense AI-Generated, displayed with permission

We're posting this as a reminder (and because I am too busy to do a real post) because yesterday Judge Connolly denied a pro hac motion for failure to comply:

ORAL ORDER re 6 MOTION for Pro Hac Vice Appearance of Attorney Danielle Vincenti Tully, Michael B. Powell, John T. Augelli and Michael A. Russo, for whom payment has been received. The motion is DENIED without prejudice to renew for failure to comply with Judge Connolly's Standing …

AI image generation is getting really good.
AI image generation is getting really good. AI-generated, displayed with permission

Federal Rule of Evidence 408 is kind of a funny thing. It says that settlement conduct and discussions are inadmissible "to prove or disprove the validity or amount of a disputed claim" or for impeachment.

That's significant, but it leaves open a lot of potential uses of settlement communications throughout the case—not to mention in later cases, potentially on different claims. The rule explicitly sets forth that such communications and conduct are still admissible for other purposes:

(b) Exceptions. The court may admit this evidence for another purpose, such as proving a witness’s bias or prejudice, negating a contention of undue delay, or proving an effort to obstruct a …

Judge Wolson issued an interesting opinion last week on an issue I hadn't seen come up before -- are my fees a secret?

Don't at all remember whay I originally had this created, but I think it works
Don't at all remember whay I originally had this created, but I think it works AI-Generated, displayed with permission

The Defendant in Imaginear, Inc. v. Niantic, Inc., C.A. No. 24-1252-JDW (D. Del. Apr. 23. 2026) moved for fees following final judgment. In support of that motion, they included an attorney declaration that generally explained that the attorney's had agreed to some sort of discounted rates and that disclosing those rates, as well as the monthly billing amounts from which those rates could be determined, could harm both defendant and the attorneys in future negotiations.

I …

DALL·E 2024-07-12 20.23.34 - A simple drawing of a fence with a sign that says 'Danger Landmines'. The fence is made of wooden or metal posts with wire or planks between them. The
AI-Generated, displayed with permission

In an order on Thursday in Vifor (International) AG v. Apotex Inc., C.A. No. 25-211-WCB (D. Del.), visiting Judge Bryson set forth his views on stays in an ANDA action where the stay will impact the trial date in light of the 30-month stay and the time needed for post-trial briefing:

Apotex stated that the parties are engaged in settlement negotiations and asked that the proceedings be stayed “to allow the parties to focus on negotiating settlement” and to order that the parties pursue mediation “to resolve this matter efficiently.” . . . Apotex’s request for stay is denied. The fact that the parties are contemplating mediation suggests to the court that settlement, …

The patent generally relates to a data cable like this (shown in cross section).
The patent generally relates to a data cable like this (shown in cross section). U.S. Pat. No. 9,991,030

I admit that, before today, I had no idea how to distinguish between an "artifact noun" and a "natural kind noun." Nor did I know how such knowledge could ever be relevant to my interests. But now I do!

In ruling on claim construction in Belden Inc. v. CommScope, Inc., C.A. No. 22-783-RGA (D. Del.), Judge Andrews ended up delving into grammar to determine whether the term "non-conductively shielding" was indefinite.

The patent at issue related to high-performance data cables (for example, Cat 6A cables used for 10 GB Ethernet). The patent describes that these cables can have four …

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I Know you, dear loyal readers, depend upon us for your very sustenance. A week with IP/DE is like a week without the sun, a summer without ice cream, a concert with no encore. The life of a patent lawyer is gray enough without the small indignity of a blog break.

But we have begun our halting return! Andrew reminded me that we were back today, and following some initial cursing that cannot be repeated on even the most bawdy of blogs, we have again taken up the mantle of infotainment resource.

Rejoice!

AI-Generated, displayed with permission

Today's case is a fun one. Plaintiff in BE Tech. LLC v. Google LLC, C.A. No. 20-622-GBW, D.I. 348 (D. Del …

Maybe this slightly disturbing AI-generated arctic cat photo will remind us all to be careful with the Arctic Cat burden-shifting framework.
Maybe this slightly disturbing AI-generated arctic cat photo will remind us all to be careful with the Arctic Cat burden-shifting framework. AI Generated, displayed with permission

We're back! And we have a stack of opinions to look through. The first one that caught my eye is a summary judgment opinion from visiting Judge Murphy of the Eastern District of PA, in Monolithic Power Systems, Inc. v. Reed Semiconductor Corp., C.A. No. 23-1155 (D. Del.).

The Court addressed various summary judgment and Daubert motions by both sides, and denied them all. One denial in particular is worth discussing.

The accused infringer moved for summary judgment on pre-suit damages because the patentee failed to mark its products that …

DED

Alert
Hugo Jehanne, Unsplash

Nate and I are still either traveling or heads-down in work, and we won't be back until April 20th. But this is an important update that I wanted to pass along, at least for Delaware counsel who frequently handle pro hac motions.

Today, Chief Judge Connolly issued a new standing order that changes the pro hac vice procedures in his cases. As set forth in the order, in addition to filing the usual pro hac motion, the movant must attach one of two new form certifications to the submission.

In the standing order, the Court recognizes (as we've mentioned) that attorney conduct in the District of Delaware is governed by the ABA Model Rules. Those …

Spring Cherry Blossoms
Arno Smit, Unsplash

It's spring! The weather is great in Wilmington, the leaves are sprouting, and things are starting to bloom.

Nate and I will both be traveling next week, and very busy with case deadlines the week after that. So we're taking a blog spring break for two and a half weeks. We'll be back on April 20. Until then, enjoy spring!

Fork in the Road
Jens Lelie, Unsplash

It's well known that, in evaluating a motion to dismiss, the Court is limited on what it can consider to, e.g. the four corners of the complaint, documents incorporated therein, and things the Court can take judicial notice of.

Rule 12 sets out that a Court can convert a motion to dismiss to an SJ motion if it wants to consider matters outside of the pleadings:

Result of Presenting Matters Outside the Pleadings. If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity …