A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Motion to Dismiss

Court Permits Complaint That Relies on Accused Infringer's Own Patent to Allege Infringement

Andrew E. Russell, Sept. 17, 2025
Motion to Dismiss

Figure 2A -- the figure at issue.
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 …
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Court Denies Request to Limit Scope of DJ Claims Via Motion to Dismiss for Subject Matter Jurisdiction

Andrew E. Russell, July 16, 2025
Motion to Dismiss Declaratory Judgment

Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance.
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 …

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Plaintiff Succeeds at Forcing Discovery Pending a Motion to Dismiss Before Judges Connolly and Tennyson

Andrew E. Russell, March 3, 2025
Motion to Stay Motion to Dismiss

Discovery in D. Del.: this train ain't stoppin! Probably.
Discovery in D. Del.: this train ain't stoppin! Probably. Alistair MacRobert, Unsplash

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. …

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Raindance Returns

Nathan R. Hoeschen, Jan. 28, 2025
Motion to Dismiss

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.

reza shayestehpour, Unsplash

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.

In the years since, …

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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 …

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Court Holds That Section 230 Does Not Protect Meta / Facebook From the Actions of Its Algorithms

Andrew E. Russell, Nov. 18, 2024
MTD Motion to Dismiss

Artist's interpretation of the Sword of Algorithms piercing the Shield of § 230.
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:

[Plaintiff claims that t]o promote …
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Court Denies Motion to Dismiss That Was Contingent on a Claim Construction Issue

Andrew E. Russell, May 17, 2024
MTD FRCP 12(b)(6)

Trash Can Basket
Gary Chan, Unsplash

If you file a motion to dismiss and it's contingent on resolution of a claim construction issue in your favor, you're at risk of being denied. We saw that yesterday in a case before Judge Hall, where she denied a motion to dismiss in advance of the Markman hearing:

ORAL ORDER: Having been reassigned this case, having reviewed the briefing filed in connection with Medacta's pending Motion to Dismiss Count III (regarding infringement of the '678 patent) for Failure to State a Claim (D.I. 12 ), and it appearing that the outcome of the Motion depends on the Courts claim construction of a particular term, and in light of the fact that claim construction disputes are …
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Judge Noreika Denies § 101 Motion Without Addressing Merits Where Scheduling Order Permits Assertion of Additional Claims

Andrew E. Russell, May 10, 2024
MTD Motion to Dismiss

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Judge Noreika issued an interesting order yesterday denying a § 101 motion to dismiss. According to the docket, shortly after the defendant filed its motion to dismiss—and contrary to what we found when we last looked at this—the Court directed the parties to meet-and-confer on a proposed schedule.

While the motion to dismiss was pending, the Court held a scheduling conference and issued a scheduling order. In it, the parties agreed to a real case narrowing proposal (without court intervention!), with plaintiff to initially cut back to 20 asserted claims per patent and 50 total by initial contentions, and then further cut back to 25 total just before final contentions.

After the Court entered the schedule, …

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Judge Williams Sustains Objections to R&R, Dismisses Complaint Under § 101

Andrew E. Russell, April 20, 2024
MTD Motion to Dismiss

Scanning a Network Printer
AI-Generated, displayed with permission

In some ways, the title says it all—but here is a bit more detail. In Throughtek Co., Ltx v. Reolink Innovation Inc., C.A. No. 23-218-GBW-SRF, D.I. 60 (D. Del. Apr. 19, 2024), the patent at issue claimed a system for identifying a networked device in order to establish a connection to it, by scanning a bar code or other image patter on the device.

The defendant moved to dismiss under § 101, arguing that the patent was directed to an abstract idea.

Judge Fallon issued an R&R holding that using the bar code for the connection information solved a problem necessarily rooted in computer technology, and was a specific improvement to computer …

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Court Rejects Motion to Dismiss Based on License Defense, Holding that Defendant Cannot Rely on Documents Outside of a Complaint—Even If Plaintiff Doesn't Object

Andrew E. Russell, Feb. 2, 2024
MTD 12(b)(6)

Crumpled, discarded motions to dismiss
Steve Johnson, Unsplash

Judge Burke issued an interesting R&R denying a motion to dismiss this week, in Parus Holdings Inc. v. Amazon.com, Inc., C.A. No. 23-190-GBW-CJB (D. Del.).

The defendant moved to dismiss based on a license defense, attaching the license. The plaintiff responded, itself attaching and relying on the license, as well as on other materials, such as a declaration from its CEO.

The Court rejected the motion—not because the defendant isn't licensed, but because it cannot even reach that issue on a motion to dismiss:

In resolving motions to dismiss under Rule 12(b)(6), . . . courts generally consider only the allegations in the complaint, exhibits attached to the complaint, matters of public …
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