As we bid good riddance to another year, things tend to slow down in DE, with motions and briefs being stipped out to accommodate the many upcoming holidays. Rather than spend this time with our own families, we here at IP/DE like to spend the month going over various stats for the past year.
Today we have a little rundown of 101 motions in the district.
For instance, you might be interested to know that the Court has decided 17 motions to dismiss based on 101 this year, not counting identical motions filed in related cases. (eds. note -- it occurred to me after compiling this data that it would have made sense to include …
Legal practice in the District of Delaware tends to involve filing a lot of stipulations, particularly stipulations to adjust deadlines. Most often (but not always), these are "so ordered" shortly after they are filed.
Every once in a while, though, the Court will "so order" a stipulation but also modify the PDF to add a note or adjust something.
For practitioners, honestly, these modifications can be very hard to catch. If the Court types something into the "so ordered" PDF, in the same font as the original, it can be almost invisible unless you have a lawyer or paralegal do a careful line-by-line comparison of the original and the new PDF.
For years now I've been working on a double-dutch rhyme for the Pennypack factors. A Miss Merry-Mack for elderly nerds, if you will. It shall be my crowning achievement as a Delaware lawyer, and the work that I shall be remembered for.
AI-Generated, displayed with permission
But until that Glorious work is unveiled at the 2038 Bench and Bar conference, I can present you with just another Pennypack opinion for your portfolio. This one follows the recent trend of a slightly harsher application of the factors.
The Plaintiff in Agilent Techs., Inc. v. Axion BioSystems, Inc., C.A. No. 23-198-CJB, D.I. 456 (D. Del. Nov. 25, 2025) had responded to an interrogatory asking for which elements were not …
PACER is moving towards multi-factor authentication (MFA). I've seen the popups, and I've heard from others that they have as well (although I've also heard that the rollout is being delayed due to "issues").
This new policy has induced some concerns among attorneys because, in many firms, multiple paralegals manage the PACER accounts for multiple attorneys, and use them for filings. The thought of juggling MFA codes under those circumstances sounds kind of horrifying.
But fear not! It's actually super simple if you are already using a password management app like 1Password, as many are.
You Should Probably Be Using a Password Management App Regardless
I am not a cyber-security expert by any stretch, but the commonadvice is …
Happy Thanksgiving, all! In observation of the holiday—and because the Court doesn't usually issue a lot of decisions this week—we'll be taking some time off from the blog. Keep in mind, if you have cases here in the District of Delaware, that the Court is closed on both Thursday and Friday. See you next week!
The blog was on hiatus for a few weeks back in early September while I was out for a brief baby break, a period which included an important opinion from Judge Andrews. He granted a motion to dismiss a DTSA claim that relied on inevitable disclosure, holding that inevitable disclosure is not a cognizable harm under the DTSA:
I find that, to the extent FICO relies on the inevitable disclosure doctrine to plead threatened misappropriation, FICO has failed to state a claim under the DTSA. Dr. Bastert is bound by multiple agreements that bar him from disclosing FICO's trade secrets to his new employer. (D.I. 1 131). That Dr. Bastert only provided FICO with a …
Fun fact, I just spent about 20 minutes trying to get this post to go live, while the server gave me an obtuse error message. It was only after I got frustrated enough to actually restart my computer that I realized the problem was I had already used my stupid pun title in another post.
So I apologize for the inferior pun, it was all I had left to give.
Today's case is a rather unusual stay opinion in Sphere USA, LLC v. The Gillette Company LLC, C.A. No. 23-1093-CFC, D.I. 32 (D. Del. Nov. 6, 2025). We've mentioned in the past how IPR stays are becoming increasingly common,Ex parte reexam stays, …
Fun fact! If your attorney bills $450/hr in .1 hr increments and does nothing but take your $40 and hand it to a deponent, the bill to do so may cost you more than the $40 fee itself.AI-Generated, displayed with permission
When it comes to IP cases in federal court, dealing with subpoenas can be a bit out of the ordinary.
It's not that they never come up. It's normal to have a couple of subpoenas per side in cases that make it to the close of fact discovery (e.g., for prior art, third party inventors, etc.), sometimes more. But not all cases make it to that stage, and many cases don't involve any subpoenas at all.
It also doesn't take much manpower to fill out a form subpoena. It's a task often given to newer associates or paralegals. More senior attorneys may not get involved in the service process at all, unless something goes wrong.
That said, it's easier than you might think for something to go wrong. The rules governing subpoenas are pretty archaic and weird compared to the rest of the federal rules. FRCP 45, for example, requires "tendering the fees for 1 day's attendance and the mileage allowed by law" when serving a subpoena.
Often this payment is handled by a process server. But, sometimes, they don't handle the payment. What happens then?
Many (2) years ago, we (Andrew) wrote a (comparatively) riveting post about the Court denying a stipulation to extend redaction deadlines (insert witty parenthetical). In that post we speculated that the denial may have been due to either the number of documents affected (10) or the long length of the extension (6 weeks). No firm conclusion could be reached without greater powers of divination.
Yesterday we had another denial of a stip to extend redaction times in Qualcomm Inc. v. ARM Holdings PLC, C.A. No. 24-490-MN. D.I. 494 (D. Del. Nov. 17, 2025), that I think was a bit less mysterious.
The stipulation related to redacted SJ filings—openings, oppositions, and replies with all the accompanying papers.
The parties had already extended the deadlines for everything by several weeks when they filed a new stipulation seeking to move back the redaction deadlines for just the exhibits by a few more weeks.
I am no augur (that's Andrew's beat), and my powers to pierce the veil of the Court's reasoning are only of for mundane sort. But for my money, the key reason this stip was denied can be found in the following passage—I dare you to read it without your eyes glazing over:
the deadline for the parties to file redacted versions of their respective declarations and exhibits associated with opening (D.I. 410-413, 416-418, 422-424, 427-429, 432, 435-436, 439-440, 444-445), opposition (D.I. 448-450, 452, 454-455, 457, 459, 465-470), and reply (D.I. 479-480, 483, 485, 487, 491-492) summary judgment and Daubert papers is here by extended to December 1, 2025.
I tried to count how many docket items this is like 3 times before giving up. I can tell you it's on the order of 50, shoot me an email if you've got what you think is the real number (I promise I won't even try to check your math!).
This is a magnolia flower, apparently, if (like me) you were curious.Erda Estremera, Unsplash
I always think there is something to be learned when the Court is critical of the parties' briefing on an issue.
Today in Magnolia Medical Technologies, Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC (D. Del.), Chief Judge Connolly had strong words for both parties in response to the briefing on a motion to strike.
In its motion, the accused infringer sought to strike the patentee's supplemental interrogatory response served almost five months after the close of fact discovery. The interrogatory response disclosed that one of the patentee's products practices the asserted claims, and the patentee served it three weeks after the FDA approved the patentee's request to market the product.
The accused infringer first argued that the Court should strike the supplemental interrogatory responses based on the language in Chief Judge Connolly's scheduling order requiring a patentee asserting practicing products to identify them in its infringement contentions:
Disclosure of Asserted Claims and Infringement Contentions. Unless otherwise agreed to by the parties, no later than 30 days after the date of this Order, a party claiming patent infringement shall serve on all parties a "Disclosure of Asserted Claims and Infringement Contentions." Separately for each opposing party, the Disclosure of Asserted Claims and Infringement Contentions shall contain the following information:
. . .
If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own or its licensee's apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim ("Embodying Instrumentality");
Chief Judge Connolly's Form Scheduling Order for Non-Hatch-Waxman Patent Cases in Which Infringement Is Alleged.
In moving to strike, the accused infringer alleged that the amended responses violated this provision. The Court called that "classic legerdemain" because ...
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