The Court seems to be trending towards holding that patent claims dropped during the claim narrowing process are gone for good.
Yesterday, in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), Judge Williams held that a patentee cannot re-assert claims that it dropped prior to trial:
[T]his Court . . . finds that the case narrowing process in the instant action was even-handed and fair since it required Nexus to narrow its asserted claims and required Exela to narrow its asserted defenses. The fact that Nexus was unsuccessful at trial should not allow Nexus to get a second bite at the apple by now asserting those claims that it dismissed prior to trial. That would undermine the certainty of the trial process and lead to endless litigation. Thus, the Court concludes that the claims that Nexus dismissed prior to trial and the defenses and counterclaims that Exlea dismissed prior to trial were dismissed with prejudice.
Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW, at 6-7 (D. Del. Oct. 21, 2025).
The Court rejected a request from the patentee that it hold that the claims the patentee had voluntarily withdrawn were withdrawn with prejudice, but that those withdrawn under the court-ordered narrowing process were not.
Is Four Cases a Trend?
As the Court noted (and as we've covered in the past), Judges Andrews and Connolly had previously addressed this issue and had come to the same conclusion. We also reported last year how Judge Noreika likewise dismissed claims with prejudice, after those claims were withdrawn minutes before trial.
(The judges have sometimes noted due process concerns with dismissing such claims with prejudice—but have also sometimes held that due process is not an impediment to dismissal with prejudice).
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
