You don't get to pick your jobs in the P.I. biz. A good gumshoe takes what walks in the door, and the only questions he asks are "how much?" and "permanently?" The only answer he'll take is a raised eyebrow and and that money gesture when you rub your thumb against two fingers.
Hamburglar was of the old school. 40 years ago he had a reputation that could make a clown go back into his little car with all his friends and drive off without so much as a honk. When the doc said his arteries were starting to look looked like string cheese, he put that all behind him - hung up his shingle and started trying to solve …
I have a feeling that, when the question of "how many RFAs can we serve if there is no limit" comes up going forward, we are all going to remember this case.
In FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-WCB (D. Del.), plaintiff apparently served 23,688 RFAs on the defendant, each one requesting an admission that a document produced by the defendant was authentic.
You may be thinking "Was this all in one set of RFAs?? Did they type this all out?!?" and it appears that the answer is "yes." According to the Court, the plaintiff served a "3,604-page document entitled 'First Requests for Admission of Authenticity.'" That's 9.1 RFAs per page.
I have to imagine they used a computer script or something similar to draft these. I hope they didn't condemn a poor associate or paralegal to their office for a week to type these out.
In any case, the defendant—shockingly!—objected that having to respond to 23,668 individual RFAs was "abusive, unreasonable, and oppressive." Judge Bryson ...
This is something you don't see often. In Kaneka Corporation v. Designs For Health, Inc., C.A. No. 21-209-WCB (D. Del.), the plaintiff contacted the Court after defendant's counsel offered only a single potential date for the deposition of the defendant's expert, and that date was just five days (and three business days) after the expert's non-infringement report.
The case has been going since 2022, with many twists and turns and amended scheduling orders. One of the most recent scheduling orders set deadlines of May 16 for opening expert reports and May 30 for responsive reports, with the close of expert discovery to close on June 13.
In a modern patent case—with dozens of claims and zillions of similar accused products—there are innumerable possible permutations of infringement and invalidity outcomes.
This can make it pretty difficult to craft a stipulation on undisputed issues.
The image generator I was using is now behind a paywall so I'm trying out new ones. Expect some more cursed illustrations like this for the next little whileAI-Generated, displayed with permission
This was the hard lesson in Janssen Pharms, Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB, D.I. 198 (D. Del. June 13, 2024). In that ANDA case, the defendant had stipulated that "if any of claims 1–7, claim 15, and claims 17–21 (as dependent from claims 1 and 4) of the ’906 patent are not found to be invalid in this Action, Tolmar will agree to entry of a judgment of infringement and order pursuant to 35 U.S.C. 271(e)(4)(A) with respect to such claim.” Id. at 7 (quoting D.I. 86).
The whole thing went to trial and all of those claims were found not to be invalid. However, each of the above claims required a specific dosage strength, while Tolmar's ANDA covered several other doses in addition to the claimed ones. So, after trial they amended their ANDA to remove the infringing dosage and subsequently moved to amend the judgment to all the FDA to approve the amended ANDA for the (allegedly) non-infringing dosages.
Judge Bryson denied the motion however, holding that ...
When you think about it, pleading on the basis of "information and belief" is sort of funny. What else are you going to plead on? Hopes? Dreams? The lost souls of wayward lawyers past?
I just can't get the timing right on these Halloween posts . . .AI-Generated, displayed with permission
In any case, its something you see all the time, and it usually goes unchallenged. Today though, Judge Bryson issued an opinion explaining the situations where such pleading is appropriate, and those where doing so is grounds for dismissal.
The test boils down to, are the facts you plead "on information and belief" uniquely within the defendant's possession, or are supported by other factual allegations (plead not on information and belief, but on immutable and unchallengeable fact known amongst the plaintiff's brood for countless generations, all hail facts, all hail allegations)?
The use of “information and belief” pleading in the complaint is consistent with the purposes previously approved by the Third Circuit and other courts. The “information and belief” allegations relate to limitations that address the process for manufacturing the accused products, information to which DSM is not privy, or details regarding the composition of Honeywell’s products that may be difficult to ascertain by testing the finished products, but which would be readily known to the manufacturer. Those allegations are therefore made in circumstances in which the factual information in question is peculiarly within the defendant’s knowledge or control. Moreover, the various other allegations that are not made on information and belief, such as the allegation that the SPECTRA Blue products exhibit characteristics substantially similar to the characteristics of the multi-filament yarns of the ’532 patent, constitute factual allegations that make DSM’s “theoretically viable claim plausible.”
DSM IP Assets, B.V. et al v. Honeywell International, Inc., C.A. No. 23-675-WCB, 10 (D. Del. Nov. 2, 2023) (Mem. Op.).
The Court also made a note that pleading willfulness on information and belief is ...
ne of my many litigation dreams is to develop an inescapable trap for my opponent. A no-win situation in which to prevail on infringement, they must lost validity or vice versa. In Insoluble dilemma that can only lead to their resigning the case.
AI-Generated, displayed with permission
On this note, I present to you the novel indefiniteness theory presented in Kaneka Corp. v. Designs for Health, Inc., C.A. No. 21-209-WCB (D. Del. June 16, 2025). The claims at issue there were your garden variety claims to a solution that specified at least X% of unobtanium, Y% of salt, etc. The claims did not specify the precise parameters under which one was to measure these percentages.
(Eds. Note—Always fun to see some analytical chem in an opinion. Shout out to my HPLC and HPLC-MS peeps, ride on)
The defendants' expert had apparently measured the percentages of their product using his preferred method, and found that it was outside of the claimed percentages. The defendants then made the unusual move of submitting a conditional expert report on indefiniteness, arguing that if the plaintiff's expert found that the product did infringe, it meant the claims were indefinite because different methods for analyzing the percentages could yield different results, and thus that a POSA would not know whether a given product infringed.
Judge Bryson rejected this theory, and granted a motion to strike the report:
The defendants’ theory of indefiniteness is that if different testing methodologies produce different results, such that one testing protocol shows infringement and another shows no infringement, the claim language at issue must be indefinite. That theory is fundamentally flawed. As long as the claim defines infringement according to a single measurable standard, the fact that two different testing protocols may produce different results creates only an issue of infringement. It does not create an issue of claim indefiniteness.
In such a case, if two measurement techniques produce different results—one infringing and the other not—the task of the litigants and the fact-finder is to determine which of the two techniques is the more accurate, and to base a judgment of infringement on that finding. In this case, the limitation at issue requires Kaneka to prove that “the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %.” That is a fixed ratio with a single value for a specific chemical compound. Different testing methods, or testing done at different times and under different conditions, may produce varying results, either above or below the 90 wt % figure. But that is just to say that different testing procedures may be more or less accurate, and that particular samples of the accused product may infringe or not infringe depending on the conditions under which they are tested. But inconsistency in the results does not indicate that the claim limitation is indefinite, as 90 wt % of reduced coenzyme Q10 has only a single meaning, even though different tests at different times and under different conditions may produce results on either side of the 90 wt % value, which is fixed and definite.
As the wise man said, pobody's nerfect. Although it may be hard to fathom, even I dear, reader have made a typo once or twice. I recall clearly the last time, it was autumn of 2003 . . .
(Eds. Note -- he goes on like this for a while, so I cut it out. his actual last typo was in this blog on Tuesday.)
Pictured: the authorAI-Generated, displayed with permission
Even in the law this is usually no big deal -- you realize you submitted the wrong exhibit Q, or you forgot the signature line, or whatever, and as long as you catch it early it tends to be fixable with a call to opposing counsel and the …
I will speak a truth that many of you have suspected. Sometimes we (well, I) pick a case just because it has a fun name. My original post today was about HQ Specialty Pharma Corp. v. Fresenius Kabi USA, LLC, C.A. No. 21-1714-MN. Honestly the case was too fact intensive to easily convert to a general interest blog post. On the other hand, it contained a great deal of discussion of the testimony of a New Jersey Pharmaceutical executive named Mr. Pizza.
"I'm cooked!"AI-Generated, displayed with permission
The whole thing ended up being just jokes and out of context slices ("Mr. Kelly . . . doubted whether Mr. Pizza 'had any knowledge of the [prior art] references'") …
Deadline extensions are perhaps the most common of all requests to the Court. I have seen requests granted for medical reasons, conflicts with deadlines in other cases, prescheduled vacations, and the need to enact a dark ritual which can only take place when the moon fears to rise (we'll have a post about that one on the future, assuming the ritual is unsuccessful and does not result in all things returning to dust beneath the sacred ash and the profane oak).
Today's post, however, is a tale of an extension denied. The defendant in Purdue Pharma LP v. Accord Healthcare Inc., C.A. No. 22-913-WCB, D.I. 111 (D. Del. Oct. 2, 2024) had prevailed on its obviousness defense following a bench trial and filed a timely motion for fees 14 days after the Court entered final judgment.
The plaintiff, however, apparently intended to appeal the invalidity determination and thus requested that the defendant stipulated to defer briefing on fees until after the resolution of that appeal. When the defendant refused to stipulation, plaintiff moved to defer briefing until after the appeal and requesting expedited consideration of the motion (as the clock was already ticking on its 2-weeks to file a responsive fees brief).
Unlike in the true to life examples listed at the start of the blog, the plaintiffs motion was not based in any particular conflict with client or counsel. Instead, the deferment was based on the general proposition that "the appeal may impact or otherwise refute the bases for Accord’s motion." Id., D.I. 108 at 2. The defendant filed a short opposition to the motion, noting that this logic would apply to essentially any motion for fees.
Judge Bryson denied the motion to defer the briefing in a short order:
The motion to defer briefing on Accord's motion for attorneys fees 108 is denied. The court will determine when to rule on Accord's motion for attorneys fees after the briefing is complete.
We'll keep a watch out for that fees opinion and let you know if it comes before or after the appeal.
Motions to stay are common as dirt, and about as interesting.
The factors are exactly what you expect them to be, and the Court has broad discretion to apply them. Most of these motions could be reduced to a checklist:
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