A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: September 2023

We're running out of good
We're running out of good "the court is split" images. Alice Yamamura, Unsplash

The scope of IPR estoppel is a tricky issue that courts have gone different ways on. Everyone agrees that a party cannot argue invalidity in an IPR based on a prior art product (as opposed to reference), and that IPR estoppel extends to art the petitioner "reasonably could have raised" during the IPR.

Courts have gone different ways, however, when it comes to whether a party can assert invalidity at trial based on a product that embodies a reference that was asserted or could have been asserted at an IPR. In D. Del., as we've discussed, Judge Stark held that a …

Judge Andrews appeared to break new ground in ODTP law yesterday with his post-trial opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023).

AI-Generated, displayed with permission

(eds. note - I refuse to abbreviate it "Lab'ys." The legal profession has committed more than its fair share of dark linguistic sins, but if Shakespeare wasn't long dead this would have killed him. Actually, check on your favorite author to make sure they survived this edition of the bluebook).


The issue arose in the unusual case where a patent issued and received a term extension of a few hundred days. The patentee filed a continuation which issued a few years later. Because the continuation did not receive a term extension it actually expired before the first patent. Plaintiff (Allergan) submitted this helpful chart with the briefing:

Seriously, it's a nice chart!
Seriously, it's a nice chart! Allergan

Id., D.I. 428 at 4 (Joint Status Report, Plaintiffs' position)

The parties agreed the relevant claims of the two patents were not patentably distinct—the issue was, does ODTP apply in where the first-filed, and first-issued, patent is the one being invalidated?

The Federal circuit had recently answered part of that question in In re Cellect, LLC, 2023 WL 5519716, at *9 (Fed. Cir. Aug. 28, 2023), where it held that OTDP applied to patent term extensions generally. Cellect, however, did not involve ...

"Could we do it in a few days? Eh, let's stip it out by six weeks." AI-Generated

We've talked before about how, in the District of Delaware, the Court usually grants stipulated extensions of upcoming deadlines, as long as those deadlines don't impact the Court.

Today I noticed an order from last week that goes against that trend. In Mallinckrodt Pharmaceuticals Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA-LDH (D. Del.), before Judge Andrews, the parties filed a straightforward stipulation extending the deadline to file redacted versions of a number of pleadings:

IT IS HEREBY STIPULATED AND AGREED, by and between the parties hereto, and subject to the approval of the Court that the time for …

It's my dear hope that this post will be one of the few that appeals to muggles. Please, if you see one, thrust your phone at them proudly and demand they read it. Watch their terrified eyes scan over every word. Do not allow them to flee. Repeat. Repeat. Repeat!

We call this SEO in the biz
We call this SEO in the biz AI-Generated, displayed with permission

Judge Bibas gave us this gift of a general interest (comparatively) post with his decision yesterday in Thomson Reuters Enterprise Centre GmbH v. ROSS Intelligence Inc., C.A. No. 20-613-SB (D. Del. Sept. 25, 2023) (Mem. Op.).

The case deals with the exceptionally buzzy issue of AI data scrubbing. Thompson Reuters runs the hugely popular Westlaw legal research platform. As part of that service they provide they provide vaguely useful "headnotes" describing the holdings of the cases.

(Eds. Note - Westlaw, if you are reading this, we can be bought. Every 10% you discount our service will result in an improvement of the adjective above. We can go all the way from "vaguely", to "quite", to "masterfully." It's about time this blog started paying the bills).

Ross is attempting to start some sort of AI-driven competitor where you just type in a question and receive a plain language legal answer. No Booleans, no problem.

To accomplish this, they ...

I was not expecting book recommendations—fiction and non-fiction—from the conference!
I was not expecting book recommendations—fiction and non-fiction—from the conference! saracohenn, Unsplash

Following up on our post last week, here is part 2 of our notes about the District of Delaware Bench and Bar. As we mentioned, these are all without attribution under the Chatham House Rule, and we won't be discussing any specific panels:

Magistrate Judge Tips

  • For discovery disputes, judges want to see what the moving party wants, why, and what law or regulation justifies the request.
  • The party opposing a discovery dispute should focus on the real reason for opposing the request
  • The court appreciates honesty and the parties having some level of restraint in arguing discovery disputes
  • Timing of discovery dispute motions is important. …

Why did I try to take notes by hand?!
Why did I try to take notes by hand?! Luke Southern, Unsplash

The 2023 District of Delaware Bench and Bar wrapped up today. It was really great to see everyone in person again. It's hard to believe it, but the last D. Del. Bench and Bar conference was back in May 2018 - over five years ago!

Everyone seems to agree the conference was a huge success. Thank you to the organizers and the Court, who put in a ton of work to make it happen!


The conference is conducted under the Chatham House Rule—which, honestly, we had forgotten. That means we "are free to use the information received, but neither the identity nor the affiliation …


District Court Seal

I imagine all of our Delaware readers already know this, but the District of Delaware Bench and Bar conference starts tomorrow and runs through Friday.

The District of Delaware bench-and-bar is an excellent event that runs all day tomorrow (Thursday) and Friday, including an evening event on Thursday. It is the product of a huge amount of work put in by the District of Delaware FBA as well as many other attorneys, judges, and staff member, for which we are all thankful!

As we mentioned earlier this year, the Court has already issued an order modifying case deadlines that would otherwise fall tomorrow and Friday:

IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and …

Paul Kramer, Unsplash

One of the early questions in many cases (particularly NPE cases) is whether the defendant can move to dismiss the complaint under 12(b)(6) for lacking sufficient detail under Twombly/Iqbal.

The answer is yes: You can, as long as there is insufficient detail. But what is the cutoff? How bad does it have to be?

We got an example of that on Monday, when Chief Judge Connolly dismissed a complaint for lacking detail. According to the Court, all the plaintiff did was say that the defendant's product infringes the claim:

"[A] plaintiff cannot assert a plausible claim for infringement under the Iqbal/Twombly standard by reciting the claim elements and merely concluding that the accused …

Inequitable conduct is, in my humble opinion, the most disappointing claim. Whenever I see it in a pleading, I have a fleeting moment of excitement—maybe the patentee kidnapped the examiner's dog, maybe hypnotism will play a roll, maybe just a classic honeypot?

Roof of rife!
Roof of rife! AI-Generated, displayed with permission

But it's never that. 9 times out of 10, its a reference that wasn't disclosed, but it probably should have been disclosed, yadda, yadda, yadda.

Despite the high standard for pleading IC (and how boring I find it), the claim tends to be fairly resilient. A quick look at recent opinions shows that Delaware Courts have denied the last 7 motions for summary of judgment of no inequitable conduct. You have to go all the way back to February of 2022 to find a success (Extang Corp. v. Truck Accessories Group, LLC, C.A. No. 19-923-KAJ (D. Del. Feb. 8, 2022) (Order)).

Judge Williams' decision last month (unsealed last week) in EIS, Inc. v. Intihealth Ger GmbH, C.A. No. 19-1227-GBW (D. Del Aug. 23, 2023), shows just hard it can be to get rid of inequitable conduct. The inequitable conduct claim there was based on the failure to effectively disclose an allegedly material reference. The reference was in a foreign language, but the applicant had only translated the abstract for the examiner.

The plaintiff moved for summary judgment of no inequitable conduct alleging all of the usual grounds—insufficient evidence of intent to deceive, lack of materiality, all the elements. The argument on lack of materiality was particularly strong because ...

"Do we want to bring this discovery dispute, or do we want to cross their corporate rep at trial? Choices, choices..." Vladislav Babienko, Unsplash

We've written before about how the Court sometimes sets up escalating obstacles for parties who are insensitive to the Court's time and bring too many discovery disputes. In that case, the Court gave the parties "homework" (writing letters to the Court) after their seventh discovery dispute.

In Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-MN-JLH (D. Del.), the Court referred all pre-trial matters up until dispositive motions to Magistrate Judge Hall.

Judge Hall took action after the parties brought what looks like seven discovery disputes. The docket shows the Court's escalating response to the parties disputes:

  • June 1 - First teleconference
  • June 16 - Second teleconference
  • July 7 - First in-person hearing
  • July 14 - Second in-person hearing
  • August 3 - Third in-person hearing
  • September 1 - Fourth in-person hearing; Court warns that future disputes will be charged to trial time
  • September 14 - Fifth in-person hearing; Court charges the parties' trial time

Guessing from the docket, it looks like the parties brought a number of rapid-fire discovery disputes starting on June 1. For the third dispute in about a month, the Court increased the friction on the parties by forcing them to come to Delaware to argue the disputes.

That doesn't seem to have slowed them down at all. After three in-person disputes ...