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Sprawling, Slothful Beasts

Nathan R. Hoeschen, Nov. 4, 2025
Daubert

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.

Rude...
Rude... NOAA, Unsplash

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 …

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Update Re: Court's Disqualification of Testifying Expert and Other Sanctions for Protective Order Violation—New Hearing This Week

Andrew E. Russell, Nov. 3, 2025
Protective Order Protective Order Violation

[Update: The hearing below has moved to 2:00pm today in Courtroom 4B (not 4A)]

Fireworks, n.,
Fireworks, n., "a display of temper or intense conflict" (per Merriam-Webster.com) Moritz Mentges, Unsplash

Over the summer, we posted twice about an interesting hearing in Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1683-MN (D. Del.).

In the first post, we discussed how the Court sanctioned a party for misusing information that was designated under a protective order. In the second, we talked about how the defendant cleverly used PDF metadata to help show that the protective order violation took place.

Since then, the case has continued moving forward towards trial. It is set for a pretrial conference on …

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Does O2 Micro Raise the Bar for Waiver of Claim Construction Issues?

Andrew E. Russell, Nov. 2, 2025
Claim Construction Waiver Forfeiture

Wave
Jeremy Bishop, Unsplash

Last week, Judge Bryson ruled on a motion in limine where an accused infringer sought to strike the patentee's alleged "new theory" of validity just before trial or, in the alternative, for a permission to raise a new claim construction regarding that theory.

The Court ultimately denied the motion in limine because the accused infringer was on notice of the theory, but granted its alternative motion for permission to raise a new claim construction position regarding the theory, citing O2 Micro.

The Accused Infringer Was On Notice of the Issue

The Court easily denied the motion to strike, finding seven different ways that the accused infringer either was or should have been aware of the …

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The Show Must Go On

Nathan R. Hoeschen, Oct. 30, 2025
Summary Judgment Stay

It can take quite a while to resolve summary judgment motions. In essentially every patent case they take up hundreds of pages of briefing accompanied by hundreds more pages of declarations, reports, and exhibits on the most arcane technical matters.

Stack of Papers
Stack of Papers Christa Dodoo, Unsplash

For this reason, all of our Article III judges' form scheduling orders (except Judge Andrews) explicitly instruct the parties to leave 3 or 4 months (3 for Judge Connolly, 4 for the remainder) between the close of briefing and the pretrial conference.

Because a modern patent trial tends to involve a great deal of back and forth on exhibit lists, designations, statements of facts, etc., the pretrial order is usually prepared -- or …

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Judge Williams Issues Orders Across Ten Cases Directing Discovery to Move Forward Pending Resolution of Motions to Dismiss

Andrew E. Russell, Oct. 29, 2025
Discovery Pending MTD MTD

Logjam
AI-Generated, displayed with permission

When you file a motion to dismiss in the District of Delaware, the case case go one of two ways, depending on the judge. Most of our current judges do not require discovery to move forward if a motion to dismiss is filed, at least absent action from the parties. Some District of Delaware judges, though, have required discovery to move forward pending a motion to dismiss. Former Chief Judge Stark made this explicit in his procedures, for example, and Judge Burke has also adopted this practice.

This seemingly minor difference in policy can make a huge difference in how a case proceeds. A complicated motion to dismiss can sometimes take a busy court anywhere from …

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Judge Williams Rejects Dicta from Two Federal Circuit Cases, Denies Summary Judgment

Andrew E. Russell, Oct. 27, 2025
Invalidity § 102(b)

Sale
Markus Spiske, Unsplash

Judge Williams issued a noteworthy SJ opinion last week in Cisco Systems, Inc. v. Ramot at Tel Aviv University, Ltd., C.A. No. 21-1365-GBW (D. Del.).

Cisco involves a DJ action where the accused infringer is challenging the validity of a patent based on the pre-AIA § 102 on sale bar, alleging that a a third party sold a product that embodied the claimed method more than one year before the patent application.

The patentee seemingly agreed with the basic facts, but moved for summary judgment of no invalidity on the theory that the the sales were "secret."

What does "secret" mean here? At least for the purposes of this motion, the parties assume …

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Dark Portends and Collateral Estoppel

Nathan R. Hoeschen, Oct. 23, 2025
Collateral Estoppel

As our AI overloads approach a dark singularity, I occasionally amuse myself by asking it increasingly obtuse questions just to see what it spits out. Today, for instance, I asked it for a cartoon depicting the abstract legal concept of collateral estoppel:

AI-Generated, displayed with permission

I'm not entirely sure the old fella hit the mark on this one, but I'm honestly not sure what I would come with that's any better. Another draw on the Turing test.

Anyway...

Judge Hall issued an interesting opinion on last week on collateral estoppel. The plaintiff in Ingenus Pharms., LLC v. Hetero USA, Inc., C.A. No. 24-1025-JLH (D. Del. Oct. 21, 2025), had several suits pending in different districts regarding …

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Judge Williams Holds That Claims Dropped During Claim Narrowing Are Gone Forever

Andrew E. Russell, Oct. 22, 2025

No U-Turns
Pedro Honn, Unsplash

The Court seems to be trending towards holding that patent claims dropped during the claim narrowing process are gone for good.

Yesterday, in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), Judge Williams held that a patentee cannot re-assert claims that it dropped prior to trial:

[T]his Court . . . finds that the case narrowing process in the instant action was even-handed and fair since it required Nexus to narrow its asserted claims and required Exela to narrow its asserted defenses. The fact that Nexus was unsuccessful at trial should not allow Nexus to get a second bite at the apple by now asserting those claims that …
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KB-Tagged Articles on IPDE

Andrew E. Russell, Oct. 20, 2025
IPDE

Great Sand Dunes National Park
Andrew E. Russell, displayed with permission

Here at IPDE, our posts often fall into a few distinct categories. The most common type of post is "look at this interesting opinion that issued! Here is what happened, along with some context and meta-commentary."

(The second most common is probably some variation on "look at this Pennypack decision!" or "here is yet another post about redactions"—but we'll set those aside for now).

My favorite kind of post that we do, though, are our broader discussions that cut across multiple cases or judges, that address a fundamental District of Delaware practices, or that are just helpful tips for attorneys.

These are a bit more timeless—things like District of Delaware deposition tips, …

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Court Cancels Trial, and Instead Schedules Third, Fourth, and Fifth Hearings on Summary Judgment

Andrew E. Russell, Oct. 17, 2025
Trial Trial Practice

Calendar
Adam Tinworth, Unsplash

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, …
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