A Blog About Intellectual Property Litigation and the District of Delaware


The Hazards of Coordination

Nathan R. Hoeschen, Oct. 9, 2025
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Coordination is a difficult concept to quantify. It's pretty easy to measure speed or strength or flexibility. But coordination is more domain dependent. As an example, I would bet that I am not the fastest, strongest or tallest lawyer in Delaware—but I will place $20 on myself in a game of horse against any DE lawyer. I extend this to a game of make it take it to any lawyer over 30 who promises they cannot dunk. DM me for deets.

Not you.
Not you. august phlieger, Unsplash

In the patent law context, coordination is similarly vague. A plaintiff accuses multiple defendants with somewhat different products of infringing the same patents. It makes sense to have discovery all go together, but come trial, things often fall apart a bit as the parties argue over how distinct the cases really are.

Today's case is one of the few I've seen where the Court sua sponte raised the issue of how similar 2 related cases really are. TOT Power Control, S.L. v. Samsung Electronics Co., Ltd., C.A. No. 21-1305-MN, D.I. 290 (D. Del. Sep. 29, 2025), was related to a very similar case against Apple that had recently gone to trial and was currently in the midst of the usual JMOL/New trial briefing. Although trial was already scheduled in the Samsung case, Judge Noreika entered an order ...

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Court Denies Motion to Redact Names of Non-Party from Counterclaims, Notes Issues with Briefing

Andrew E. Russell, Oct. 8, 2025
Motion to Seal Third Party Discovery

Just your typical light redactions, from a real case (but not this one).
Just your typical light redactions, from a real case (but not this one). Public Filing

Last week in Voxtur Analytics Corp. v. Haldane, C.A. No. 25-742-GBW-SRF (D. Del.), the Court addressed a plaintiff's request to redact some information from the defendant's counterclaims.

It's hard to tell from the docket (most of the filings are still sealed), but it appears that the plaintiff was under an NDA with a third party regarding some information that may have been produced in the case. The defendant's counterclaims included that information.

The Court held that the fact that plaintiff was subject to an NDA, alone, was not sufficient to support a motion to seal:

ORAL ORDER re 130 Joint Motion for …
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"Those Words Don't Mean Much to the Court"

Nathan R. Hoeschen, Oct. 7, 2025
Contentions

Contentions are often contentious. The parties argue about how much detail is included, they argue about how to count references and accused products, they argue about what's actually disclosed and what's implied. My conservative estimate is that there are over 10 trillion opinions on contention topics issued every week in the district of Delaware.

Christa Dodoo, Unsplash

Given the fact-specific nature of all these decisions, its often hard to draw bright line rules. Instead, you must engage in the tedious business of explaining why your contentions are really more like the ones in this case, and not at all like the ones in that case, because yadda, yadda, yadda.

But we got a nice neat rule from Judge Burke …

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Heads Up: Upcoming IP Litigation CLE with Former, Current, and Visiting D. Del. Judges on Oct. 30, 2025

Andrew E. Russell, Oct. 6, 2025

Media, PA
Media, PA Smallbones

Someone asked me to help get the word out about this CLE that is being hosted by the Delaware County (not state) Bar Association at the end of this month in Media, PA.

The topic is "Advice and Guidance on IP Litigation," and the panelists include Third Circuit Judge Restrepo, Federal Circuit Judge Stark (who is the former Chief Judge of the District of Delaware, and a current visiting judge), frequent District of Delaware Visiting Judge Goldberg of E.D. Pa., and current D. Del. Magistrate Judge Burke.

The panel is set for October 30, 2025 from 6-8 pm, and the event is free. You can register here. The CLE will be in Media, PA, which …

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Court Grants-in-Part Motion to Compel Sales Documents, After E-mails Indicate Defendant May Be "Playing Word Games"

Andrew E. Russell, Oct. 6, 2025
Discovery Disputes Motion to Compel

Scrabble
Phil Hearing, Unsplash

Last week in Eagle Pharmaceuticals, Inc. v. Apotex Inc., C.A. No. 24-64-JLH (D. Del.), the Court partially granted a motion to compel production of sales documents in a patent case.

The plaintiff moved to compel production of communications between the defendant's "sales force":

The Court should order Apotex to produce communications among its sales force regarding the sale, marketing, pricing, and promotion of Apotex’s NDA product. Eagle’s RFP No. 57 seeks: “All communications between Your sales force, sales personnel, or marketing personnel that refer or relate to the sale, marketing, pricing, and/or promotion of Your NDA [New Drug Application] Product, including but not limited to by way of any group chat, texts, text …
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Some Quick Data Points on Sufficient Facts to Allege Willfulness in a Complaint

Andrew E. Russell, Oct. 3, 2025
Willfulness MTD

I have no idea what image would go with this, so here is a mildly interested chipmunk.
I have no idea what image would go with this, so here is a mildly interested chipmunk. Andrew E. Russell, displayed with permission

Yesterday, Judge Andrews granted two motions to dismiss willfulness allegations for a failure to allege knowledge. The orders are short and sweet, and provide some examples of the kinds of allegations that are not sufficient to allege knowledge of the asserted patent in support of a willfulness claim.

First, in New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA (D. Del.), the Court granted the willfulness portion of a motion to dismiss in just three sentences:

The motion to dismiss the willfulness allegations is GRANTED. Alleging that employees of Defendants attended a 2016 presentation on the topic of "Benefits of IP Partnering for Drug Delivery Telemanagement" provides no factual basis for an allegation of willfulness. Nor does the allegation that in 2021 an online article "Patents are Important for Smart Healthcare Products"-- described the patents and that Defendants subscribe to the online publication.

New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA, D.I. 18 (D. Del. Oct. 2, 2025).

This decision was quick, issuing less than two motions after the motion to dismiss, although it only addressed the motion in part. The Court referred the motion's remaining allegation re: § 101 to Magistrate Judge Tennyson.

The Court also issued an uncommonly ...

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Biologic, My Shipmate

Nathan R. Hoeschen, Oct. 2, 2025
Biologics Safe Harbor

Sailing is one of those endeavors that really make you respect the ancestors. As a kid (and indeed, a thirty-something) it seemed like a simple matter or pointing a sheet in the wind to go forward. Then you actually go on one of these crazy things and—even setting aside the knots—there's this mad calculus that goes into what turns where when that somehow makes you best off when you're perpendicular to the actual wind. Real witchcraft.

Ludomil Sawicki, Unsplash

This, of course, brings us to one of my favorite areas of patent law, the safe harbor provision. For those, less familiar, Judge Barker's opinion this week in Merus N.V. v. Xencor, Inc., C.A. No. 24-913-JCB, D.I. 35 (D. Del. Sep. 30, 2025), gives a good overview.

Briefly, 35 U.S.C. § 271(e)(1) allows one to make/use/etc, a patented invention "solely for uses reasonably related to the development and submission of information under" a qualifying regulatory regime. This most often comes into play in the ANDA context where the generic manufacturer can use the otherwise patented drug to perform the necessary studies to submit their ANDA to the FDA.

The situation is somewhat more complicated in Merus. The patents there

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“Whoops, we forgot to put the basis for the motion in the brief.”

Andrew E. Russell, Oct. 1, 2025
Letter Briefs Legal Writing

"Did I forget to say why we should win the motion?" AI-Generated, displayed with permission

When you're drafting a brief, it can easy to get bogged down in all of the in-the-weeds counter-arguments and surrounding issues, and to kind of forget about the main point you need to make.

Years ago, in a patent case, I wound up needing to write three initial drafts of three summary judgment briefs in a week. Fun, right? The first two came together OK. The third one, not so much. It was a complicated motion involving many potential counter-arguments.

I remember thinking the initial draft was pretty good when I clicked send on the e-mail attaching it. How could it not be? In just …

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Made Special, Just For You

Nathan R. Hoeschen, Sept. 30, 2025
Contributory Infringement

Anyone who's been a lawyer long enough to read blogs about will have purchased some custom-made legal accessories. A monogrammed briefcase is a classic, as are cuff links and (for the daring) a bolo tie. The especially theatrical amongst you might get a cape, walking stick or dark altar. The important thing is that it fits, and is monogrammed.

I wasn't sold on the dark altar, but it actually came with a monogrammed cape, so...
I wasn't sold on the dark altar, but it actually came with a monogrammed cape, so... AI-Generated, displayed with permission

This of course, naturally leads me to contributory infringement and especially whether a product is "especially made or adapted for use" in an infringing process and not "suitable for substantial non-infringing use."

This analysis is often factually intense, but it doesn't …

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Opinion: Why You Usually Shouldn't Accuse Opposing Counsel of Dishonesty or Bad Faith

Andrew E. Russell, Sept. 29, 2025
Letter Briefs KB

Lying
Joshua Hoehne, Unsplash

As we mentioned recently, there was some discussion at the 2025 D. Del. Bench and Bar about the role of Delaware counsel. We may have a more detailed post about that at some point in the future. But today I wanted to offer some thoughts on one specific thing that good Delaware counsel does: avoiding allegations of dishonesty or bad faith.

Most Delaware counsel tend to be involved with filings of one type or another. Under the Local Rules, association with Delaware counsel is required, and Delaware counsel must be the registered users of CM/ECF.

In practice, that means we handle a ton of filings, typically drafted by out-of-state co-counsel. Delaware counsel's level of involvement …

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