A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: FRCP 12(c)

Chief Judge Connolly Grants § 101 Motion to Invalidate Security Patent

Andrew E. Russell, July 28, 2025
FRCP 12(c) § 101

I couldn't find a real image of a border that is
I couldn't find a real image of a border that is "porous to the extent that it is decipherable" AI-Generated, displayed with permission

Even 10+ years after Alice, the standard for invalidity under § 101 feels inconsistent, and there is a lot of room for any two human beings (judges or otherwise) to look at the same patent and have different views. This is particularly true when you factor in the procedural hurdles, which ultimately give the Court a range of options on when to deal with a § 101 motion (e.g., before summary judgment, at summary judgment, or at trial/post trial).

So, when a D. Del. judge issues a § 101 decision, I often think it often …

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A Patent Invalidity Decision Worth Reading

Andrew E. Russell, July 25, 2025
Single Means FRCP 12(c)

An embodiment of the lens at issue—yes, this is a single claim
An embodiment of the lens at issue—yes, this is a single claim "element" U.S. Pat. No. 6,844,990

Judge Burke issued a fascinating invalidity decision yesterday in Immervision, Inc. v. Apple, Inc., C.A. No. 21-1484-MN-CJB (D. Del.). It addresses an invalidity issue I had honestly never seen litigated—a "'single means' claim"—and, along the way, it addresses what a claim "element" is and when the "clear and convincing" standard applies to invalidity.

Basically, the whole thing is a page-turner for someone who deals with these issues, and well worth reading. I'll outline some of the most interesting points below.

"Single Means" Invalidity Is a Thing

The invention at issue is an optical lens. The opinion involves an independent claim …

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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 …

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You Can't Withhold Discovery—Including Source Code—Pending a Rule 12 Motion in D. Del.

Andrew E. Russell, Dec. 6, 2024
Source Code FRCP 12

This train don't stop until the close of fact discovery (... unless the Court stops it)
This train don't stop until the close of fact discovery (... unless the Court stops it) Jed Dela Cruz, Unsplash

The Court issued an oral order in airSlate, Inc. v. Inkit, Inc., C.A. No. 23-1307-RGA-SRF (D. Del.) yesterday, and it's a good reminder of a general rule that frequent D. Del. practitioners already know: once discovery starts, it generally proceeds even while a Rule 12 motion is pending.

The Court's order yesterday described how the defendant in airSlate had objected to producing its source code solely on the basis that a Rule 12 motion for judgment on the pleadings was pending:

Defendant agreed to produce source code in its response to Request for Production …
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Clever Procedural Maneuver Fails—But Reverses SJ Loss

Andrew E. Russell, Oct. 16, 2023
FRCP 12(c)

Speaking of clever procedural manuevers, here's the
Speaking of clever procedural manuevers, here's the "fish tank" my loving wife got me when I asked for one Andrew E. Russell, displayed with permission

Judge Bryson issued an opinion today in Michael R. Cahill, Trustee of the Hunt Irrevocable Trust v. Air Medical Group Holdings, Inc., C.A. No. 21-679-WCB (D. Del. Oct. 16, 2023). In it, he describes a clever procedural maneuver that failed, but resulted in a positive outcome anyway.

The case involves an breach of contract claim affirmative claim and counter-claim. The Court granted summary judgment for the plaintiff on their affirmative claim, holding that it was time-barred under a provision of the contract that set out a time for bringing claims.

The defendant …

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Judge Andrews Splits Counterclaim Patents into Separate Trial

Andrew E. Russell, Dec. 21, 2022
Trial Case Dispositive Motions

Kiwi Split in Half
engin akyurt, Unsplash

In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.

During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.

The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed …

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Impossible-to-Reconcile Federal Circuit Precedent Results in Denial of § 101 Motion

Andrew E. Russell, Aug. 20, 2022
Motion for Judgment on the Pleadings FRCP 12(b)(6)

Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2?
Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2? Charl Folscher, Unsplash

We talked a couple of days ago about how, in Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), Chief Judge Connolly stayed the action after raising plaintiff's inadequate disclosures at a § 101 hearing.

But, at the same hearing, plaintiff actually prevailed on the § 101 motion—and Chief Judge Connolly made some notable comments about how the Federal Circuit has responded to his previous § 101 decisions, and what that means for cases going forward.

Case 1, Universal Secure: Affirmed

The first case, Universal Secure Registry LLC v. Apple Inc., …

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The Intersection of Marking and Pleading

Nathan R. Hoeschen, June 10, 2021
FRCP 12 FRCP 12(c)

It's fairly common for plaintiffs in Delaware to plead infringement by alleging that the defendant infringes "at least claim x," of the relevant patent—leaving the question of what other claims might be asserted until later in the case.

In line with the Federal Circuit decision in Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018), many of our Delaware judges have explicitly endorsed this practice. See, e.g. Promos Techs., Inc. v. Samsung Elecs. Co., Civil Action No. 18-307-RGA, 2018 U.S. Dist. LEXIS 186276, at *6 (D. Del. Oct. 31, 2018) ("Plaintiff does provide details of at least one claim allegedly infringed under each asserted patent. Therefore, Plaintiff's identification of infringed …

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Judge Connolly Knocks Out Five Patents on Rule 12 Motion

Jeff Castellano, Sept. 8, 2020
FRCP 12(c) 12(c) Motion

On September 3, 2020, Judge Connolly invalidated five asserted patents as patent ineligible on a single Rule 12 motion. In Sensormatic Electronics, LLC v. Wyze Labs, Inc., C.A. No. 19-1543-CFC, Judge Connolly granted defendant's motion for judgment on the pleadings, invalidating five of seven asserted patents (two of the seven were no longer being asserted).

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