A Blog About Intellectual Property Litigation and the District of Delaware


As we've mentioned, Judge Connolly uses a different system of patent contentions than the other District of Delaware judges. The other judges generally use the system set forth in the Default Standard, while Judge Connolly's approach is modeled after the more restrictive method used in the Northern District of California.

Because he uses a unique system, parties often wonder just how much (or how little) is needed to offer sufficient contentions in Judge Connolly's view.

Judge Connolly offered some insight on that point today, when he overruled a patentee's objections to an accused infringer's invalidity contentions. Here is one of the contentions at issue:

Claims 1, 2, and 4 of the ’489 patent are invalid under 35 U.S.C. § 112 because the term “substantially all of the unreacted di(1-benzotriazolyl) carbonate is substantially consumed” is indefinite.

That's it, as to indefiniteness of that language. Judge Connolly confirmed that such language is sufficient, at least to avoid a motion to strike:

I reject Nektar's contention that "[i]f [the accused infringer's] barebones contentions are deemed sufficient under [my] Scheduling Order to disclose invalidity theories, then [my] Scheduling Order is effectively no different than the District's Default Standard for Discovery." . . . Plaintiffs' contentions were not "barebones." And I note in that regard that proving a negative (e.g., indefiniteness) is different than affirmatively establishing something (e.g., obviousness).

Judge Connolly also affirmed Judge Hall's decision not to preclude later amendment of those contentions, but the exact circumstances of that ruling are not clear, as the transcript has not made it to the docket.

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