A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2025

Court Suggests Stay of Discovery, Bifurcation of Trial After "Highly Concerning" Allegations in Rule 11 Motion

Andrew E. Russell, March 10, 2025
FRCP 11 Rule 11

I'm not going to blow the blog's budget on downloading all of the evidence in the 35 exhibits attached to the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Federal Rule of Civil Procedure 11'>Rule 11</a> motion. But it looked like a lot.
I'm not going to blow the blog's budget on downloading all of the evidence in the 35 exhibits attached to the Rule 11 motion. But it looked like a lot. Christa Dodoo, Unsplash

Federal Rule of Civil Procedure 11, as most readers likely know, says an attorney making a filing certifies that the filing has factual support:

(b) Representations to the Court. By presenting to the court a pleading, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney . . . certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances: . . .
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery . . . .

FRCP 11.

If the opposing party has reason to doubt that an attorney has met their burden, it can threaten a Rule 11 motion. The procedure gives parties an opportunity to cure, though, and parties sometimes do.

A Real Live Rule 11 Motion

Those motions are often threatened but, in practice, we don't see a ton of rulings on Rule 11 motions in the District of Delaware. So it was interesting to see the Court's ruling today in Central Santa Lucia, L.C. v. Expedia Group, Inc., C.A. No. 22-367-JLH (D. Del. Mar. 10, 2025).

That case involves a violation of a federal statute regarding the sale of certain property. To bring a case, the plaintiff must have acquired ownership of the property before a specific date: March 12, 1996.

The plaintiff in the case claimed it owned the relevant property as of the date. The defendant disagreed, and filed a Rule 11 motion seeking sanctions for filing a pleading that relied on fraudulently ...

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Court Faults Party for "Obviously Insufficient" Response to Contention Interrogatory, Offers Guidance on Resolving Discovery Disputes

Andrew E. Russell, March 7, 2025

I'm not sure that this is technically
I'm not sure that this is technically "bait"—much like an order from the Court is not "bait." But we'll run with it. Trophy Technology, Unsplash

I've heard certain kinds of orders from the Court be referred to as "blog bait"—things that you just know we are going to post about. A couple of topics fall into that category: Pennypack decisions, significant decisions on redactions, interesting § 101 opinions, and so on.

The common thread is that these are all things that come up a lot. They happen early in the case, before cases tend to settle or otherwise resolve. And they can have significant implications for the parties and the attorneys involved. You don't want to be the attorney …

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Promises, Promises

Nathan R. Hoeschen, March 6, 2025
Stipulation Pennypack

I am from Minnesota. Home of the noble loon, and dainty ladyslipper. It is a harsh place. I have read in books of lands where a person's word is all they have -- a sacred thing that must be protected at all costs. To barter it away is to invite the most dire peril.

I wasn't really using it much anyway...
I wasn't really using it much anyway... AI-Generated, displayed with permission

Minnesota is not such a place. The winds are fickle there, and everyone understands that most commitments are contingent upon a (sometimes unlikely) confluence of fortuitous occurrences. If you way, I'll visit Gramma this weekend, there's an implied "if it's not too cold." If you say "I'll bring the cheeseburger soup" it's understood that you …

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Tips on the Required Structure of a Brief in the District of Delaware

Andrew E. Russell, March 5, 2025
KB Legal Writing

Stay on the Path
Mark Duffel, Unsplash

This is something I've been thinking we should cover for long time. Here in the District of Delaware, the local rules set forth a required structure for every brief—but out-of-town counsel often seem to miss that.

Basically, Local Rule 7.1.3(a)(c) requires that an opening or answering "brief" contain seven specific sections in a specific order:

  1. A table of contents (TOC)
  2. A table of citations and authorities (TOA)
  3. A "statement of the nature and stage of the proceedings"
  4. A summary of argument
  5. A "concise statement of facts"
  6. An argument
  7. A short conclusion.

These look simple, but they trip people up sometimes. Here are some tips for each section.

Required Sections for Every Opening and Answering Brief

TOC …

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The Very Worst of the Worst

Nathan R. Hoeschen, March 4, 2025
101

OOOF!
OOOF! Zachary Kadolph, Unsplash

As I was reading through Judge Andrews' opinion in Election Systems & Software, LLC v. Smartmatic USA Corporation, C.A. No. 18-1259-RGA (D. Del. Feb. 28 , 2025)—a fairly standard opinion denying a motion for attorney's fees—I noticed an interesting callout:

It is within my discretion to find a case exceptional on the grounds of a plaintiff's meritless section 101 argument so as to "deter similarly weak arguments in the future."On the rare (and I believe only) occasion that I have done so, however, the patent asserted was obviously unpatentable. See Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *l (D. Del. Mar. 18, 2019) ("I have rarely been more confident …
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Plaintiff Succeeds at Forcing Discovery Pending a Motion to Dismiss Before Judges Connolly and Tennyson

Andrew E. Russell, March 3, 2025
Motion to Stay Motion to Dismiss

Discovery in D. Del.: this train ain't stoppin! Probably.
Discovery in D. Del.: this train ain't stoppin! Probably. Alistair MacRobert, Unsplash

When I started practicing here in the District of Delaware (the decade before last), the typical advice was that a patent case would proceed to scheduling and discovery even if the defendant files a motion to dismiss. Lately, though, several of the District of Delaware judges have been holding off on initiating the FRCP 16 scheduling process when the defendant files a motion to dismiss.

Often, as we've discussed, a smart plaintiff in that situation will file a letter asking the Court to direct the parties to conduct an FRCP 26(f) conference, so that discovery can move forward. Most often that seems to work. …

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Judge Andrews Awards More Than Half a Million Dollars in Litigation Costs After 10-Year-Long Litigation

Andrew E. Russell, Feb. 28, 2025
Costs Bill of Costs

"I asked plaintiff to pay the cost award, and he just said 'Come at me, bro!' What do you think he means?" AI-Generated, displayed with permission

FRCP 54 provides that the prevailing party is entitled to recover its costs, not including attorneys fees.

In practice, though, that's easier said than done. Recovery of costs is limited both by statute and local rule. Beyond that, plaintiffs in particular may not have a lot of assets, and it may take serious collection effort to get anything out of them. As you can imagine, parties sometimes decide that the likely cost in attorneys fees outweighs what they are likely to actually recover.

But not always! Today, Judge Andrews issued a memorandum order reviewing …

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Representativeness By Other Means

Nathan R. Hoeschen, Feb. 27, 2025
101 Doctrine of Equivalents

Representativeness is the bête noir of almost every § 101 motion. This is especially true early in the case, when the Court might rightly ask why it should bother invalidating 1 of 2,312,419 currently asserted claims.

This quandary is especially troublesome for defendants because it's often quite difficult to brief representativeness of a large number of claims in the necessary detail.

If you can tell me what claim 9 adds to to claim 8, I will literally eat my own cufflinks and then wear them again! Algorithm? More like Smellsbadgorithm!
If you can tell me what claim 9 adds to to claim 8, I will literally eat my own cufflinks and then wear them again! Algorithm? More like Smellsbadgorithm! AI-Generated, displayed with permission

Later in the case, things are a bit different. For one, there's a lot fewer claims at issue (hopefully) so knocking out just a few can make a big difference. Moreover, having a bit of discovery under your belt can make those representativeness arguments easier to make.

Caddo Systems, Inc. et al v. Jetbrains Americas, Inc., C.A. No 22-1033-JLH-LDH (D. Del. Feb. 25, 2025) (Report and Recommendation) had an interesting bit of argument along these lines that I hadn't seen before. The patents at issue there were all directed for a system to "allow a user to more easily navigate a file structure that may have many layers and options."

The parties disputed representativeness (quelle surprise!). One of the disagreements was whether certain claim limitations required a user to select (or have preselected) a menu item by different means. Plaintiff argued that these different means added something to claims that affected the § 101 analysis.

Unfortunately for plaintiff, their expert had submitted an expert report on the doctrine of equivalents, where he had opined that all of these different means actually performed the same function, in the same way, to reach the same result. Judge Hatcher, granting the motion for summary judgment, found this fact persuasive and cited it as an example of how the differences between the claims "do not prevent the Asserted Claims from being conceptually equivalent."

It's a possible contradiction that hadn't occurred to me before, and something to keep in mind when working with your own experts.

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Judge Williams Declines to Exclude Expert Opinions on the Law by a Law Professor and a Lawyer (for a Bench Trial)

Andrew E. Russell, Feb. 26, 2025
Expert Witness Expert Discovery

"Your honor, in my expert opinion, the law says we win. Their expert is wrong, because he thinks the law says we lose." AI-Generated, displayed with permission

The Court often excludes experts who offer opinions regarding U.S. law itself—but there are some gray areas and circumstances where the Court has permitted such testimony. In patent cases, for example, the Court has typically excluded expert testimony about substantive issues of patent law, but has sometimes permitted experts to testify on PTO procedures (and sometimes not).

This week we got some more guidance, specifically in the context of a bench trial. In Upsher-Smith Laboratories LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW, the Court unsealed an order from last year …

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Judge Connolly Grants Written Description JMOL

Nathan R. Hoeschen, Feb. 25, 2025
JMOL Written Description

You can tell that I (and pretty much every other lawyer) learned JMOL in a specific and nerdy context.

Pretty much every other collection of letters are pronounced as either an acronym—NASA, SONAR, LOL (this one's a matter of preference)—or an initialism like LMAO, CIA, PB&J.

JMOL, stands proudly atop the divide, too unwieldy to pronounce in either regime.

AI-Generated, displayed with permission

None of this is legally relevant (yet!), but it leads neatly into yesterday's decision in Natera, Inc. v. CareDx, Inc., C.A. No. 20-38-CFC-CJB (D. Del. Feb. 24, 2025). The defendant there made the bold decision of moving for J-MALL that both of the asserted patents were invalid for lack of written description, which the plaintiff naturally opposed.

In support of the motion, defendant pointed to the testimony of its expert to the effect that the specifications failed to disclose all of the various elements of the claimed method being performed together, "as an integrated whole." The plaintiff in response, pointed to the testimony of their expert, but notably ...

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