A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2025

Together At Last

Nathan R. Hoeschen, Jan. 15, 2025

It's been some time since the Court discontinued its Court-sponsored ADR program, and cancelled all then-pending mediations in the wake of Judge Stark's elevation.

In the years since, we have seen occasional orders from the Court requiring parties to submit to private mediation. Typically, this has occurred in cases where the parties have indicated that they are already near settlement, and often on the eve of trial.

Chris Liverani, Unsplash

Last week's order in Delta Electronics, Inc. v. Vicor Corporation, C.A. No. 23-1246-JLH, D.I. 70 (D. Del. Jan 9, 2025), was a bit different.

There, two days after the Markman hearing and well before any scheduled trial, Judge Hall issued an order compelling in-person mediation …

View

District of Delaware Moves All Sept. 25-26 Filing and Service Obligations To Make Room for D. Del. Bench and Bar

Andrew E. Russell, Jan. 14, 2025
Bench and Bar DED

Bench
Simon Berger, Unsplash

The District of Delaware's 2025 Bench and Bar is set for September 25-26, 2025. Yesterday, as we predicted, the Court issued an order moving all filing and service deadlines for those days to the following Monday, and directing the Court not to set deadlines on those days:

WHEREAS, the Court having announced that it will host its biennial District of Delaware Bench and Bar Conference on September 25 and 26, 2025, and the Court wishing to promote the participation of as many members of the Bar as possible;
IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and Bankruptcy Judges - will, to the greatest extent possible, cancel and refrain …
View

Court Grants Rule 12(c) Judgment on the Pleadings of No Contributory Infringement

Andrew E. Russell, Jan. 13, 2025
FRCP 12(c) Motion for Judgment on the Pleadings

Pills
HalGatewood.com, Unsplash

Defendants are always on the lookout for ways resolve patent cases (and other cases) early. One potential avenue is an FRCP 12(c) motion for judgment on the pleadings—but it only works in uncommon circumstance that the pleadings themselves show a lack of infringement or validity.

It's an uncommon circumstance—but not unheard of. Last week, the Court granted an FRCP 12(c) motion of no contributory infringement in Boehringer Ingelheim Pharma. Inc. v. Apotex Inc., C.A. No. 23-685-CFC (D. Del.), after a plaintiff's own complaint showed a lack of infringement.

Boehringer is an ANDA action. The patent claims a drug used to treat a disease in patients who—critically—are ineligible to receive a second drug. The label …

View

Public Safety Advisory: Move to Seal the Courtroom When Discussing Confidential Information

Andrew E. Russell, Jan. 10, 2025
Sealing Trial Practice

Caution Warning
Bernd Dittrich, Unsplash

It's easy to forget. But really, really really, you should move to seal the courtroom when either side is discussing your client's confidential information.

As we've discussed before, the standard for sealing information is harsh. Under the Third Circuit's Avandia opinion, in order to show good cause for a protective order to seal, a party must show "with specificity" that “disclosure will work a clearly defined and serious injury to the party seeking closure.” In re Avandia Mktg., Sales Practices & Prods. Liab. Litig., 924 F.3d 662, 671 (3d Cir. 2019). That can be tough to do.

But you know what is even tougher? Redacting information discussed in open court. Then …

View

Keep It In The Ring

Nathan R. Hoeschen, Jan. 9, 2025
101 Waiver

It's become fairly common to see opinions in Delaware noting that an argument has been waived when presented only in passing. The classic example is something discussed only in a footnote.

This of course leads to the question of which other bits of a brief are too scanty to hide an argument. Might there be other spots we should know to avoid?

AI-Generated, displayed with permission

Judge Williams' opinion last week in Game Play Network, Inc. v. Lien Games Racing LLC, C.A. No. 23-323-GBW-CJB, D.I. 34 (D. Del. Jan 3, 2025) gave us just such an example of a place an argument can not be placed.

As a bit of background, local rule 7.1.3 lists a series of sections required for briefs including "nature and stage of the proceedings," "conclusion," and—important here—"argument." The plaintiff there had lost a 101 motion and moved for reconsideration, alleging among other things, that the Court had neglected to address several claim construction issues. In particular, the motion for reconsideration argued that the "statement of facts" portion of their original opposition brief had discussed several relevant terms and the need for construction.

Judge Williams found that the passing reference to claim construction in the argument section was ...

View

Something to Consider When Considering a 12(b)(6) Motion to Dismiss a Patent Case

Andrew E. Russell, Jan. 8, 2025
MTD FRCP 12(b)(6)

Robot
AI-Generated, displayed with permission

Back in 2021 the Federal Circuit issued an opinion in Bot M8 LLC v. Sony Corp. of Am. that raised the standard for granting a motion to dismiss in a patent action. C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021). The Federal Circuit held that "[a] plaintiff is not required to plead infringement on an element-by-element basis"—which was news to the patent practitioners who had filed (and won) motions on that basis.

We haven't written much about that decision in the time since, but it's still out there, and it's something to keep in mind as you weigh your options in response to a patent infringement complaint.

Last month, during our …

View

Like Flour For Sugar

Nathan R. Hoeschen, Jan. 7, 2025
Pennypack

I'm a baker. I was born of flour and heat and fermented in this big jar we call life. My original starter, Yeasty Boy, has sired many children that live lives of plenty. His grandchild, breAD-Rock, sits upon my counter as I type, growing fat on apple peels.

AI-Generated, displayed with permission

One of the first lessons of baking is that some ingredients can be modified or omitted without any real worry. You trade rosemary for thyme in your focaccia and everything's honky dory. On the other hand, if you switch the strong bread flour to whole wheat, you have crossed a moral line from which there may be no return. Some ingredients are simply more important, and some substitutions …

View

Ruling on Post-Trial Motions Shows What Not to Do

Andrew E. Russell, Jan. 6, 2025
Trial Trial Practice

Snow day!
Snow day! Hide Obara, Unsplash

We're back! Just in time to be snowed in—the Court is closed today due to inclement weather.

While we were out last week, Chief Judge Connolly issued an interesting opinion on post-trial motions in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38-CJB (D. Del.).

That case went to trial in January 2024, with plaintiff Natera winning a $96 million verdict on the first of two patents, but receiving a verdict of no infringement of the second patent. The Court's opinion addresses their motion for JMOL of infringement on the second patent.

Did a Poorly Phrased Question Doom JMOL of Infringement?

The arguments turned on a single claim limitation. The Court found …

View
Newer

Archive