A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

Made Special, Just For You

Nathan R. Hoeschen, Sept. 30, 2025
Contributory Infringement

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...
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 …

View

Don't Fall Into the Late-Daubert Trap

Andrew E. Russell, Sept. 22, 2025
FRE 702 Daubert

Don't be late...
Don't be late... Man Holding Handbag, Andy Beales, Unsplash

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. …

View

Judge Burke Releases a Set of Tips Regarding Markman Briefing and Hearings

Andrew E. Russell, Sept. 15, 2025
KB Claim Construction

District Court Seal

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 …
View

Limits of Lanham

Nathan R. Hoeschen, Aug. 19, 2025
Supplemental Jurisdiction Preclusion

Judge Burke unsealed an interesting opinion last week on the applicability of Lanham act claims to pharmaceuticals.

Sharon McCutcheon, Unsplash

In Vanda Pharms., Inc. v. MSN Pharms., Inc., C.A. No. 24-505-JLH (D. Del. July 31, 2025), the Plaintiff accused various generic drug manufacturers of violating the Lanham by allegedly making false statements in their label and advertisements. In particular, Plaintiff alleged that the Defendants described Plaintiff's product "Hetlioz" as the brand reference for their generic products when "the reference product used in Defendants’ Bioequivalence Study was not actually Hetlioz, or because that study was so flawed that it undermines any assertion that Defendants’ product is bioequivalent to Hetlioz." Id. at 14 (quoting complaint).

The issue was …

View

Court Sends Parties Back to the Drawing Board After Insufficient Markman Process That "Waste[d] Judicial Resources"

Andrew E. Russell, Aug. 18, 2025
Markman Briefing Markman

Confusing
AI-Generated, displayed with permission

Judge Burke issued an oral order on Thursday in OmniVision Technologies, Inc. v. RE Secured Networks, LLC, C.A. No. 24-187-JLH-CJB (D. Del.) expressing frustration due to the parties' inadequate claim construction briefing, and the resulting "inefficient" Markman hearing.

The parties submitted their joint claim chart back in March, identifying seven groups of terms. For three of the seven groups, the patentee offered positions like "Needs no construction" or "Not indefinite." D.I. 78-1 at 2-6. Some of these term groups were a bit odd (including, for example, a group called "preambles," which addressed three separate preambles across six claims spanning three patents). Counted separately, the parties sought to construe more than the 10 terms …

View

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 …

View

Judge Burke Errs on the Side of Admissibility for "Close Call" Daubert Motion

Andrew E. Russell, June 20, 2025
Damages Apportionment

Even though Daubert is
Even though Daubert is "not that high" of a bar, some experts still fail to clear it. National Library of Scotland, Unsplash

I always find that it can be helpful to see how judges rule on things, even if the rulings are kind of fact-specific, because it can still give you a sense of how they will rule on other things. (Thus, we have a blog.)

In Attentive Mobile Inc. v. Stodge, Inc., d/b/a Postscript, C.A. No. 23-87-CJB (D. Del. Jun. 12, 2025), Judge Burke addressed a Daubert motion to preclude a damages opinion that included revenue from non-infringing functionality in its royalty base, on the basis that it failed to apportion damages.

The patentee argued …

View

Discovery on Discovery

Nathan R. Hoeschen, May 29, 2025
Discovery Dispute Discovery on Discovery

Disco on disco, baby
Disco on disco, baby AI-Generated, displayed with permission

Discovery on discovery -- i.e., discovery asking how you're collecting documents, or when you started your litigation hold, or why all your documents smell like bubblegum -- is generally not allowed in Delaware (and most other districts I'm aware of). To get that sweet, sweet, disco on disco, you need to make a "threshold showing that significant, relevant, and non-cumulative information has been withheld or overlooked." British Telcoms. PLC v. IAC/Interactivecorp,. C.A. No. 18-366-WCB, 2020 U.S. Dist. LEXIS 37271, at *21 (D. Del. Mar. 4, 2020). This is a pretty big ask in the context of a discovery dispute, so we only rarely see the issue come up.

But …

View

Leave It To The Experts

Nathan R. Hoeschen, May 8, 2025
Contention Interrogatories

As we've covered exhaustively, Delaware favors the use of contention interrogatories. As discovery requests go, these are often some of the more burdensome ones to deal with, and so the responding party will frequently respond with all manner of possible objections.

One response that I see from time to time is that a contention topic seeks information that is really the subject of an expert report, and thus that no response is necessary until the reports are due.

This is where expert reports come from
This is where expert reports come from AI-Generated, displayed with permission

This was exactly the approach that the defendant took last week in Astellas Pharma Inc. et al v. Sandoz Inc., C.A. No. 20-1589-JFB-EGT, D.I. 779 (D. Del. May 6, …

View

Some Real Spy Stuff

Nathan R. Hoeschen, April 29, 2025
Sanctions

I've been a Delaware lawyer for a while now, but today is the first time I've seen a case where a party submitted video evidence of a deponent acting suspicious.

Pictured: The deponent, probably
Pictured: The deponent, probably Sergiu Nista, Unsplash

I gather from the briefing that the case was already quite contentious, as the plaintiff in Inpria Corporation v. Lam Research Corporation, C.A. No. 22-1359-CJB, D.I 506 (D. Del. Apr. 28, 2025) had requested a deposition "focused solely on document creation, retention and storage." Id. at D.I. 293. According to the briefing, the deponent "referenced another screen, positioned to his left, after questions were asked but before providing an answer," but when asked about what was on the screen, he testified …

View
Newer
Older

Archive