When you file a motion to dismiss in the District of Delaware, the case case go one of two ways, depending on the judge. Most of our current judges do not require discovery to move forward if a motion to dismiss is filed, at least absent action from the parties. Some District of Delaware judges, though, have required discovery to move forward pending a motion to dismiss. Former Chief Judge Stark made this explicit in his procedures, for example, and Judge Burke has also adopted this practice.
This seemingly minor difference in policy can make a huge difference in how a case proceeds. A complicated motion to dismiss can sometimes take a busy court anywhere from …
We've talked a lot about how hard it can be to plead indirect infringement and willfulness before Chief Judge Connolly. He set forth his views on the subject in ZapFraud, Inc. v. Barracuda Networks, Inc., C.A. No. 19-1687-CFC-CJB (Mar. 24, 2021), where he held that a complaint cannot form the basis for an allegation of willful infringement in the same action:
[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that …
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.
How many attorneys would have made the choice to re-assert § 101 at trial after conclusively losing on that issue at the MTD stage? Not many, I'm guessing.Oliver Roos, Unsplash
I still remember when, as a first-year associate (circa 2009), a senior attorney explained to me that courts will not hold a patent "valid," and instead will normally only say that it is "not invalid." It seemed like a bit of a silly distinction at the time, but it actually makes perfect sense, and it has come up again and again in my practice since then.
Courts do not typically hold that a patent is "valid" because that would suggest it is impervious to future challenges. Instead, courts often hold that a patent is "not invalid," i.e., that the moving party in a case before the Court failed to show that the patent was invalid due to some circumstance. That language recognizes that another party on another day might yet prove the opposite: that the patent is invalid.
This came up recently in Laboratory Corporation of America Holdings v. Natera, Inc., C.A. No. 21-669-GBW (D. Del.). In that case, the defendant had originally brought a motion to dismiss on § 101 grounds, and Judge Stark denied it. Id., D.I. 28 at 7.
Now, almost four years later and in the lead-up to trial, the plaintiff moved in limine to preclude the defendant from re-raising its failed § 101 argument:
Plaintiff "seeks to preclude Natera from presenting argument or evidence regarding patent eligibility of the Asserted Patents under § 101." . . . Plaintiff contends that such preclusion is warranted because (purportedly) "[t]he Court has already spoken on patent eligibility and has ruled that the Asserted Patents are directed to eligible subject matter."
Id., D.I. 325 at 4.
The Court denied the motion, and will permit the defendant to re-raise its § 101 argument at trial. The Court offered ...
Figure 2A -- the figure at issue.U.S. Patent No. 11,012,647
This is an issue I don't recall having seen before. In VTT Technical Research Centre of Finland Ltd. v. Teledyne Flir, LLC, C.A. No. 25-348 (D. Del.), the plaintiff filed a pretty typical-looking patent complaint, where it alleged infringement of its patent by the defendant's products.
The complaint, however, relied on an allegation that the product was marked as practicing a particular patent, and that figure 2A of that patent showed a circuit that infringed on the plaintiff's patent:
According to VTT, the figure (“Figure 2A”) [of the defendant's own patent] depicts the allegedly infringing functionality. . . . In the complaint, VTT alleges on information …
Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance.Delorean Rental, Unsplash
In CogniPower LLC v. Fantasia Trading LLC, d/b/a AnderDirect, C.A. No. 19-2293-JLH-SRF (D. Del.), a patent suit, the Court granted a third-party supplier's motion to intervene back in 2020. Since then, based on the docket, the patentee has been trying to dismiss the intervenor from the case.
Today, the Court issued its order denying a motion to dismiss by the patentee, and it addresses to interesting issues regarding an effort to limit the scope of the Court's judgment based on subject matter jurisdiction.
First, the patentee tried to dismiss the claims based on an argument that, five years after …
When I started practicing here in the District of Delaware (the decade before last), the typical advice was that a patent case would proceed to scheduling and discovery even if the defendant files a motion to dismiss. Lately, though, several of the District of Delaware judges have been holding off on initiating the FRCP 16 scheduling process when the defendant files a motion to dismiss.
Often, as we've discussed, a smart plaintiff in that situation will file a letter asking the Court to direct the parties to conduct an FRCP 26(f) conference, so that discovery can move forward. Most often that seems to work. …
Old timers remember RainDance Techs., Inc. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA, 2016 U.S. Dist. LEXIS 33875 (D. Del. Mar. 4, 2016). After the appendix of forms was banished from the Federal Rules of Civil Procedure, Judge Andrews' opinion in Raindance was among the first in the nation to hold that complaints alleging infringement had to do more than simply list the patent and the product as in the old Form 18.
For a couple years it was the citation of choice in the district for motions to dismiss, with every defendant arguing that the complaint lacked sufficient detail relating their product to the asserted patent claims.
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.
Artist's interpretation of the Sword of Algorithms piercing the Shield of § 230.AI-Generated, displayed with permission
There has been a lot of political talk lately about § 230 of the Communications Decency Act, 47 U.S.C. § 230, which provides immunity for certain kinds of claims related to user-generated content on social media. It's a hot-button, IP-adjacent topic.
Judge Williams today addressed the question of whether § 230 operates to shield Meta / Facebook from the effects of its algorithms. The case is between former Governer Mike Huckabee and Meta, and involves privacy, publicity, false light, and unjust enrichment claims related to ads Facebook hosted that suggested Governor Huckabee was associated with a CBD product:
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
