Fun fact, I just spent about 20 minutes trying to get this post to go live, while the server gave me an obtuse error message. It was only after I got frustrated enough to actually restart my computer that I realized the problem was I had already used my stupid pun title in another post.
So I apologize for the inferior pun, it was all I had left to give.
Today's case is a rather unusual stay opinion in Sphere USA, LLC v. The Gillette Company LLC, C.A. No. 23-1093-CFC, D.I. 32 (D. Del. Nov. 6, 2025). We've mentioned in the past how IPR stays are becoming increasingly common,Ex parte reexam stays, …
This is a magnolia flower, apparently, if (like me) you were curious.Erda Estremera, Unsplash
I always think there is something to be learned when the Court is critical of the parties' briefing on an issue.
Today in Magnolia Medical Technologies, Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC (D. Del.), Chief Judge Connolly had strong words for both parties in response to the briefing on a motion to strike.
In its motion, the accused infringer sought to strike the patentee's supplemental interrogatory response served almost five months after the close of fact discovery. The interrogatory response disclosed that one of the patentee's products practices the asserted claims, and the patentee served it three weeks after the FDA approved the patentee's request to market the product.
The accused infringer first argued that the Court should strike the supplemental interrogatory responses based on the language in Chief Judge Connolly's scheduling order requiring a patentee asserting practicing products to identify them in its infringement contentions:
Disclosure of Asserted Claims and Infringement Contentions. Unless otherwise agreed to by the parties, no later than 30 days after the date of this Order, a party claiming patent infringement shall serve on all parties a "Disclosure of Asserted Claims and Infringement Contentions." Separately for each opposing party, the Disclosure of Asserted Claims and Infringement Contentions shall contain the following information:
. . .
If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own or its licensee's apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim ("Embodying Instrumentality");
Chief Judge Connolly's Form Scheduling Order for Non-Hatch-Waxman Patent Cases in Which Infringement Is Alleged.
In moving to strike, the accused infringer alleged that the amended responses violated this provision. The Court called that "classic legerdemain" because ...
Summary Judgment and Daubert briefs are often sprawling, slothful beasts. They shift from issue to issue lodging complaints both specific and general over the course of many pages and exhibits.
Accordingly, it can be hard parse which arguments are actually being pressed and require a response.
Today's case is a sobering reminder of the consequences of missing one.
The plaintiff's opening Daubert brief in Magnolia Med. Techs., Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC, consisted of 18 pages complaining about how the defendant's invalidity report was "devoid of any analysis or detail and fails at baseline to even map the prior art to the claim elements or explain what combination or modification of the prior art …
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 will, in fact, die on this hill—at least until something from the Court shows I'm wrong.AI-Generated, displayed with permission
Last year we had a post entitled "Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied." That post related to motions before judges who require a concise statement of facts with summary judgment motions. The "one simple trick" was that, rather than including a long list of atomic facts like "x said this at deposition" and "lines x:xx - y:yy of the patent specification say z," you state the actual material fact that you are relying on and cite those atomic facts as support for the broader fact.
"Just imagine this page holds one of the in-depth and fulsome post-grant review petitions we're totally going to file on these patents"Kelly Sikkema, Unsplash
I know some readers probably want an update on the protective order hearing. I expect that will be a hefty post of interest to all D. Del. litigants—but I need to get the transcript first. In the mean time, though, please enjoy this spare and jargon-filled post which is only going to be of interest to patent practitioners.
We've talked about pre-institutionstaysbefore, and how hard they are to achieve. What's even harder? A stay of patent litigation before a patent challenge has even been filed.
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 …
Many years ago now, when I was still in the full flagrant flower of youth (38), I wrote a post discussing the relative rates at which various drug patents—compound, method of treatment, and formulation—were found invalid in Delaware.
Not analyzed at the time (because who has the time?) was the question of how often these various types of drug patents are found to be infringed in ANDA cases. I'll have a fuller post on this later in the week, but my guess is that it goes compound > method of treatment > formulation. If it turns out I am wrong, you will never be able to prove it because I will edit this post immediately.
AI-Generated, displayed with permission
In any case, method of treatment patents often follow trends with certain themes going into and out of vogue, so I suspect today's opinion from Chief Judge Connolly in Novo Nordisk, Inc. v. Mylan Pharms. Inc., C.A. No. 23-101-CFC (D. Del July 22, 2025), will be of general interest to our audience.
The patent there—for blockbuster drug Wegovy—required that the drug be administered "without another therapeutic agent," which the Court construed to mean "administered without another therapeutic agent as part of the method for reducing body weight, or for treating the conditions of diabetes or hypertension."
Mylan argued that their ANDA label could not induce infringement because, although it cautioned against using the drug with other GLP-1 inhibitors, it was agnostic as to any other weight loss drugs, merely saying that "[t]he safety and efficacy of coadministration with other products for weight loss have not been established."
Plaintiff argued that the this was sufficient to establish inducement because "the proposed label does not require patients to receive other treatment beyond a reduced-calorie diet and physical activity, 'physicians will inevitably prescribe Mylan's ANDA Product without another therapeutic agent.'"
My feeling (informed, but not rigorously researched until a post later this week), is that enablement is slowly overtaking 101 as the vehicle of choice to attack the overreaching patent.
Preemption is no longer the watchword it once was in 101 jurisprudence (Impact Engine actually filed a petition for cert a couple months back asking "Whether the lodestar for determining patent eligibility under this Court’s two-step framework is whether the patent claims preempt basic technological or scientific building blocks").
Oh preemption, my guiding light. Lead me on the 101 inquiry.Casey Horner, Unsplash
At the same time, enablement is on a bit of an upswing following the Supreme Court's decision in Amgen Inc. v. Sanofi, 598 U.S. 594,610 (2023) which reaffirmed the general principle that "if an inventor claims a lot, but enables only a little, the public does not receive its benefit of the bargain."
A few weeks ago, Judge Connolly gave us one of the more interesting decisions in this vein, when he granted a motion for summary judgment of no enablement in Spinal Generations, LLC v. Depuy Synthes, Inc., C.A. No. 22-1368-CFC, D.I. 220 (D. Del. Apr. 11, 2025). The patents there covered a "method and device for delivering medicine to bone." (eds. note -- pretty cool title for a patent). In particular, the relevant claims required a "delivery pathway for [a] substance between at least one end of the insert and a portion of the bone."
Those of a certain age might recall the Animaniacs. It was an absurdist cartoon with a lot of bits, many referencing the likes of George Burns, Marlon Brando, and other popular public figures from 30 years prior that meant absolutely nothing to 10-year-old me.
And then he puts an orange slice in his mouth and chases the kid around the laundry until he dies! It's amazing!AI-Generated, displayed with permission
One of the bits was "good idea, bad idea," the basic premise of which is right there in the name. I thought it would be fun to revive it for this post on an especially doomed motion before Judge Connolly. Because, while there is much to be learned from the man who climbed Everest, the lesson is often more easily grasped from those unfortunate souls who line the path.
In that vein, I present the lessons that I have gleaned from last Monday's decision in Drake v. General Electric Co., C.A. No. 24-281-CFC (D. Del. Mar. 10, 2025).
Good Idea - Attaching Factual Support for Your Motion
As we've covered in the past, one of the best strategies for a discovery dispute—or any motion—is creating a detailed factual record on, for instance, the actual costs of complying with some request, the difficulty of access some set of documents, or the high cost of vendors. One can find innumerable examples of the Court noting that the losing side of the dispute had presented no more than "attorney argument." At least Judge Burke explicitly encourages the parties to attach affidavits or declarations to their discovery dispute submissions.
Bad Idea - Attaching Your Secretly Recorded Phone Calls
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