We had some indications last fall that referrals to visiting judges may be slowing—but six months on, it's clear that they are still ongoing. This week, we saw 11 cases reassigned to visiting Judge Campbell Barker of the Eastern District of Texas. That prompted me to take a look at recent referrals in patent cases, and here is what I saw for this year:
May 6, 2025: 11 reassignments to visiting Judge Campbell Barker, E.D. Tx.
April 8, 2025: 11 reassignments to visiting Judge Choe-Groves, United States Court of International Trade
March 11, 2025: 9 reassignments to visiting Judge John F. Murphy, E.D. Pa.
February 12, 2025: 7 reassignments to visiting Judge Joshua D. Wolson, E.D. …
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 fromAI-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, …
It's always a good idea to keep up to speed on the judges' form scheduling orders. In their form orders, the judges set forth their preferences, and when those orders are entered in a case, they can override some of the local rules.
In the past, when the judges have updated their form scheduling orders, they have occasionally ordered that the updates to apply to pending cases. Sometimes, even absent such an order, counsel have been eager to apply the new procedures on their own.
(The last such change I recall was when judges started switching over to Judge Andrews' method of claim construction briefing, where the parties serve back-and-forth …
We haven't written about pre-institution IPR stays in some time. Defendants generally know that they are tough to achieve. You can try it but, unless there is something special about your case, pre-institution stays are rare. Most of our judges view the chances of institution as too remote to support a stay, and want to evaluate the situation after institution.
Judge Andrews issued a short oral order last week consistent with that view, denying a pre-institution in a way that suggests, unsurprisingly, that getting a pre-instutition stay remains difficult:
I read the briefs in connection with the motion to stay. Each side's positions are clear. Oral argument would not change the outcome. Therefore, the oral argument …
As the wise man said, pobody's nerfect. Although it may be hard to fathom, even I dear, reader have made a typo once or twice. I recall clearly the last time, it was autumn of 2003 . . .
(Eds. Note -- he goes on like this for a while, so I cut it out. his actual last typo was in this blog on Tuesday.)
Pictured: the authorAI-Generated, displayed with permission
Even in the law this is usually no big deal -- you realize you submitted the wrong exhibit Q, or you forgot the signature line, or whatever, and as long as you catch it early it tends to be fixable with a call to opposing counsel and the …
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, probablySergiu 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 …
Never-before-seen photo of Mark Twain issuing his famous quote about statistics.Emily DiBenedetto, displayed with permission
The Administrative Office of the U.S. Courts prepares various statistical reports on behalf of the Federal Judiciary, including the Federal Court Management Statistics, which are released quarterly. The most recently released batch of data comes from December 31, 2024. You might see these data cited occasionally in motions to transfer, as I happened to notice in a District of Utah opinion denying a motion to transfer to the District of Delaware.
The first trend is that—surprise!—our judges are very busy.
There have been an average of nearly 2,400 pending cases at any given time over the last six years, and total District of …
You know what to do...AI-Generated, displayed with permission
Many District of Delaware scheduling orders in patent cases include deadlines for both "initial" and "final" infringement and invalidity contentions. In those cases, parties often argue that having a deadline for "final" invalidity contentions means there is no obligation to supplement in the period between initial and final contentions.
The obligation to supplement under Federal Rule of Civil Procedure 26, after all, states that it applies to Rule 26(a) disclosures, interrogatories, RFAs, and RFPs—but not explicitly to "contentions" required by a scheduling order.
I've seen the Court go both ways on this. The judges often seem willing to grant a motion to compel earlier responses, saying that early supplementation is required …
A 282 notice is a bit of an anachronism and a bit of a trap.
AI-Generated, displayed with permission
For those who don't read these latter sections of section 35 that often, it goes like this:
a party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit [or] as showing the state of the art
Obviously, in the modern world of contentions, expert reports, moving type, etc., the parties are usually …
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."
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