Claim narrowing is such a common issue in Delaware that this blog has at least 431 entries with the tag.
(Eds. Note—I did not actually count, but you can click on the tag on the side and scroll down to prove me wrong).
Ironically this rich well of precedent can make it kind of hard to brief a dispute on claim narrowing. A dozen cases can be cited for any proposition you might want, which can make it hard to argue for one outcome over another -- especially to a judge that has seen similar disputes so many times before.
Judge McCalla's opinion last week in Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158-JPM (D. Del. Mar. 20, 2025), was thus a breath of fresh air as he writes unencumbered by a wealth of his own words on the issue.
In the opinion (which cites to a truly remarkable number of prior Delaware orders on the issue), he dealt with 3 relatively common questions in the district.
First, the parties disputed whether the plaintiff should narrow from 31 asserted claims down to 18 or 15 (I'll let you guess who was proposing which). Judge McCalla went with 18, citing Judge Fallon's Order in Twinstrand Bioscis., Inc. v. Guardant Health, C.A. No. 21-1126-GBW-SRF (D. Del. Oct. 18, 2022), which stated that “a reduction to approximately 20 claims by the deadline for service of final infringement contentions” is “consistent with other case narrowing order[s] from [the District of Delaware].”
Next the parties argued about whether the defendants' invalidity arguments should be counted on a per claim basis, i.e. "if Defendant asserts that prior art reference A anticipates claim 1 of a patent, and that prior art reference A also anticipates claim 2 of that patent, that will count as two total prior art arguments, one prior art argument per claim.” Id. at 5 n. 2 (quoting plaintiff's brief). Again both parties cited numerous orders from the district going every which way, but Judge McCalla ultimately sided with defendants finding their argument for not counting on a per-claim basis "more persuasive." Id. at 6.
Lastly, the parties disputed whether the Court should order a further narrowing before trial, or simply let the process occur naturally—blooming into the sweet flower of compromise as litigation so often does. Again, Judge McCalla agreed with defendants and ordered the parties to meet and confer on further narrowing at least 30 days before the pretrial conference (although not setting any particular limits on further narrowing yet).
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