Growing up, my grandparents lived on a lake in far northern Minnesota. Naturally, one of my favorite pastimes (during the 6 hours a year when the lake was not frozen) was throwing objects into the lake to see the splash. Stones, screws, turtles, siblings, turtles and siblings together in a move I called turtle-terror-soup, all were grist for the splash mill.
Andrew E. Russell, displayed with permission
Famously, once the splash settled and the turtles have returned to doing whatever they do, the waters turned calm once again. A passerby moments later would have no knowledge of the true chaos that had just passed. This is the way of true ripples.
Metaphorical ripples, however, are a bit trickier, as evidenced …
It's usually easy to spot a dependent claim. They will immediately go to the first person they know at a party and follow them around for the whole evening. They text too much. They may boil your pet rabbit.
They also usually begin with something like "the compound of claim one, wherein the R1 group is cocktail sauce or raspberry jam"
Would you believe we already had this image saved for some reason?AI-Generated, displayed with permission
But what do you make of a claim like this?
A method of performing an assay that monitors cell-substrate impedance, comprising: providing the system of claim 1;
introducing cells into at least one well of said system;
monitoring cell-substrate impedance of said at least one well.
It references a specific system claimed in an an earlier claim (here a fancy sensing wellplate). But it doesn't look at all like the usual form. Instead it pretty much says, "use that well plate we told you about and then look at what happens you big dummy."
(Eds. Note: I should move into prosecution)
The issue came up in the context of a dispute over marking. As shown above, the patent in Agilent Technologies, Inc. v. Axion BioSystems, Inc., C.A. No. 23-198-CJB (D. Del. Jan. 12, 2026) had an independent system claim and these "mixed" method claims that required using the system. It was undisputed that the plaintiff had sold a wellplate that practiced the system claim without marking it.
Years ago, the Federal Circuit held that a party could get around 287 in these circumstances by only asserting the method claims, even if there were other unasserted system claims in the same patent. Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009). But that leaves the question of what to do with a claim like this that actually requires the use of the infringing apparatus?
In granting summary judgement of no pre-suit damages, Judge Burke held that ...
It has been a while since we have posted about them, but multiple D. Del. judges have held omnibus hearings to resolve multiple § 101 motions at once, called § 101 days.
Here is my co-blogger Nate's description of District of Delaware § 101 days from one of his posts a few years ago:
The 101 day has been the highlight of the Delaware patent law hearing calendar for many years now. It's an all-day no-holds-barred marathon where questions can come to any party at any time. And the best part is, you can look forward to a decision at the end of the day. It is our Super Bowl and our debutante ball all …
Hearings on motions for summary judgment in patent cases in the District of Delaware can vary in length, but they are typically measured in hours, rather than days.
That's why it was interesting to see the below order by Judge Burke in Scale Biosciences, Inc. v. Parse Biosciences, Inc., C.A. No. 22-1597-CJB (D. Del.) earlier this week.
In it, the Court cancelled a trial set to start Monday, and instead scheduled almost three full days' worth of hearings next week on six pending motions for summary judgment, plus two other motions:
ORAL ORDER: For the reasons discussed with the parties at last Friday’s hearing, the trial previously scheduled to begin on October 20, …
Contentions are often contentious. The parties argue about how much detail is included, they argue about how to count references and accused products, they argue about what's actually disclosed and what's implied. My conservative estimate is that there are over 10 trillion opinions on contention topics issued every week in the district of Delaware.
Given the fact-specific nature of all these decisions, its often hard to draw bright line rules. Instead, you must engage in the tedious business of explaining why your contentions are really more like the ones in this case, and not at all like the ones in that case, because yadda, yadda, yadda.
Last week in Eagle Pharmaceuticals, Inc. v. Apotex Inc., C.A. No. 24-64-JLH (D. Del.), the Court partially granted a motion to compel production of sales documents in a patent case.
The plaintiff moved to compel production of communications between the defendant's "sales force":
The Court should order Apotex to produce communications among its sales force regarding the sale, marketing, pricing, and promotion of Apotex’s NDA product. Eagle’s RFP No. 57 seeks: “All communications between Your sales force, sales personnel, or marketing personnel that refer or relate to the sale, marketing, pricing, and/or promotion of Your NDA [New Drug Application] Product, including but not limited to by way of any group chat, texts, text …
"Did I forget to say why we should win the motion?"AI-Generated, displayed with permission
When you're drafting a brief, it can easy to get bogged down in all of the in-the-weeds counter-arguments and surrounding issues, and to kind of forget about the main point you need to make.
Years ago, in a patent case, I wound up needing to write three initial drafts of three summary judgment briefs in a week. Fun, right? The first two came together OK. The third one, not so much. It was a complicated motion involving many potential counter-arguments.
I remember thinking the initial draft was pretty good when I clicked send on the e-mail attaching it. How could it not be? In just …
Anyone who's been a lawyer long enough to read blogs about will have purchased some custom-made legal accessories. A monogrammed briefcase is a classic, as are cuff links and (for the daring) a bolo tie. The especially theatrical amongst you might get a cape, walking stick or dark altar. The important thing is that it fits, and is monogrammed.
I wasn't sold on the dark altar, but it actually came with a monogrammed cape, so...AI-Generated, displayed with permission
This of course, naturally leads me to contributory infringement and especially whether a product is "especially made or adapted for use" in an infringing process and not "suitable for substantial non-infringing use."
This analysis is often factually intense, but it doesn't …
In the District of Delaware, Daubert motions (i.e., motions to exclude expert testimony under FRE 702) are normally due at the same time as case dispositive motions, and often share a page limit.
This makes a lot of sense, since Daubert motions are often more or less dispositive of central substantive issues in the case. Sometimes, if the party cannot present expert testimony on a particular substantive issue, they essentially just lose (although for other things, not so much).
Often, parties will present their primary Daubert issues at the deadline, only to realize later on that there are other lingering issues that fit the Rule 702 case law. …
Aaaand we're back! We extended the blog break a bit because I was traveling last week to participate on a panel about AI-related litigation at the Sedona Conference. There have been several interesting AI-related copyright decisions this year (including in Delaware), and we may post about them down the line.
For now, I wanted to alert everyone that Judge Burke posted a set of "Tips Regarding Markman Briefing and Hearings" on his website.
The document has 10 total tips, all directed towards Markman practice before Judge Burke. But I would say that it is definitely worthwhile reading for any Delaware litigator. The tips include guidance regarding (spoiler alert):
The number of terms Judge Burke will hear and decide …
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