A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

I am pleased to announce that, starting with Andrew's next post, we will be pivoting to a new format. No longer will we be analyzing the developments in IP law with mere written words. Instead, we will be creating Schoolhouse Rock style musical videos. Andrew's surprisingly moving singing voice will be accompanied by my own interpretive dance -- leading you through the intricacies of the days' cases like a bee describing the way to honey.

This is perhaps my favorite picture I've used on the blog
This is perhaps my favorite picture I've used on the blog AI-Generated, displayed with permission

The subject of today's post, CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-CFC-CJB, D.I. 413 (D. Del. Feb. 7, 2025) will also …

Zig Zag
Jack Finnigan, Unsplash

Contention interrogatory responses are a frequent topic of dispute. In theory, using damages as an example, the way it works is this:

  1. Defendant, who does not have the burden, sends a contention interrogatory.
  2. Plaintiff provides contentions.
  3. Defendant takes discovery based on the contentions.
  4. Plaintiff provides expert reports that fairly elaborate on the contentions.
  5. Defendant responds using the discovery it took based on the contentions.
  6. Plaintiff offers expert testimony at trial that is a fair elaboration on their reports.
  7. Defendant moves to strike any testimony that goes beyond the reports.

The process can get hung up on step 2, however, because parties may try to short-circuit the process and avoid giving away or getting nailed down on …

All of the Delaware judges have rules in their form scheduling orders limiting the circumstances in which summary judgment motions can be filed. Most notably, each forbids the filing of summary judgment motions in ANDA cases absent leave. In other patent cases, SJ motions cannot be filed more than 10 days before the deadline for dispositive motions without leave.

Lawrence Kayku, Unsplash

As part of my ongoing series of posts about analytics when I have nothing else to write about (why can't I find Al Capone's cave?), I've compiled some statistics on how likely these motions are to be granted, based on the issue (infringement, validity, something weird).

Looking at all the cases for the last three years (and a bit extra so I could get to 20 and not have to do math) the general success rates for these is a pretty abysmal 20%. Validity issues fair a bit better at about 29%. Infringement/noninfringement also beat the average at about 25%. Weirdly, inequitable conduct seems to fair the worst, at a whopping 0.0% (rounding up).

I've got some more analytics on specific judges, but I'm saving them in case I need another one of these on Thursday.

Lego
Jackson Simmer, Unsplash

We were a bit slow on the draw on this one. You may have already read about it in Law360. But it's significant enough that I think we should post about it anyway.

Last month, in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.), two applicants filed a 28 U.S.C. § 1782 application seeking leave to serve subpoenas on a company in the United States to get discovery related to a foreign proceeding.

The application itself referred only to subpoenas against the company, but the proposed order incorporated a subpoena against an individual, who was not mentioned in the application itself.

The Court rejected the application, at least initially, …

Is he watching via Robocast, I wonder?
AI-Generated, displayed with permission

When people say that D. Del. is "against litigation funding," they imply that the Court has some kind of general bias against parties who use litigation funding. That's wrong. I've never seen a Delaware judge dislike or rule against a party because the party used litigation funding. And the Court as a whole is certainly not biased against plaintiffs (or defendants), funding or no funding.

With all of that said, I thought it was worth noting that Judge Burke recently ordered production of litigation funding material to the extent it related to the value of the patents.

After reviewing litigation-funding-related documents in camera, he ordered production of those that relate to the value of …

Old timers remember RainDance Techs., Inc. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA, 2016 U.S. Dist. LEXIS 33875 (D. Del. Mar. 4, 2016). After the appendix of forms was banished from the Federal Rules of Civil Procedure, Judge Andrews' opinion in Raindance was among the first in the nation to hold that complaints alleging infringement had to do more than simply list the patent and the product as in the old Form 18.

reza shayestehpour, Unsplash

For a couple years it was the citation of choice in the district for motions to dismiss, with every defendant arguing that the complaint lacked sufficient detail relating their product to the asserted patent claims.

In the years since, …

Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it.
Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it. Kelly Sikkema, Unsplash

Yesterday, Judge Hall granted a post-trial JMOL motion in Taiho Pharmaceutical Co., Ltd. v. MSN Laboratories Private Ltd., C.A. No. 19-2342-JLH (D. Del.), finding no infringement as a matter of law.

The motion resolved a relatively straightforward claim construction issue: what the word "purity" means in the claims.

The patentee said it meant chemical purity, while the accused infringer argued it meant "polymorphic" purity. The patent as a whole is directed towards crystal forms of a drug, and discussed purity of the crystal form—"polymorphic" purity—but also mentions chemical purity. The patenteee agreed that, if "purity" means polymorphic …

Neither fish, nor fowl, the motion for clarification is often a cursed thing - struggling to find succor in a world that does not want it to exist.

(Like lawyers, amirite?)

BA-DUM-TSHHHHH
BA-DUM-TSHHHHH Ben Tofan, Unsplash

Unlike motions for reconsideration (or reargument, as we call them in Delaware), the local rules do not provide any particular guidance on what such a motion should like like, or the standard that needs to be met. I've often seen them criticized as essentially stealth motions for reconsideration designed to circumvent the rigid requirements of such a motion.

I've never done a full analysis of the likelihood of such a motion being granted (hope for a slow news day next week) but my guess is that most of them go down like last week's ruling in Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-258-JPM, D.I. 222 (D. Del. Jan 17, 2025).

In that case, the parties (weirdly) filed competing motions to extend the fact discovery deadline on the same day, presenting slightly different proposed schedules that allowed additional time for the completion of depositions and whatnot. Visiting Judge McCalla resolved the motions and adjusted the schedule in a brief oral order consisting only of the relevant dates:

ORDER SETTING DISCOVERY SCHEDULE: Fact Discovery Deadline due February 27, 2025; Initial Expert Witness Disclosures Due April 3, 2025 . . . .

After the Court extended the schedule, however, the Defendant issued several new subpoenas to third parties. Plaintiff then moved for an order clarifying that the extension only allowed for the completion of existing discovery, and not for the service of new requests. The main argument was that both parties' motions had focused on the time necessary to complete the existing discovery, rather than the need for additional requests.

Judge McCalla denied the motion, finding no ambiguity requiring clarification in the prior order amending the schedule:

In its Order Setting Discovery Schedule, the Court extended the fact discovery deadline to February 27, 2025. Plaintiff argues neither party requested an extension for the purpose of serving additional fact discovery. However, the Court used its “broad discretion” to grant the Parties’ requests so that the Parties could complete discovery as a whole. A fact discovery deadline is just that: a deadline to complete all discovery promulgated by the Parties.
To the extent the Order Setting Discovery Deadline is “ambiguous or vague” the Court makes clear: the Order Setting Discovery Schedule only established a deadline of completion and did not set out a cap on that discovery

Id. at 3-4 (internal citations omitted).

The order is additionally interesting for having one of the few recitations for the standard in moving to clarify.

As a child, I was frequently frustrated by the differing rules that governed different houses. My house was a shoes-on place, while most of my friends houses were strict shoes in the bucket at the door affairs (this was the early 90s so carpet was the rule).

It usually also had a splotchy brown pattern so that a spilled root beer might pass without notice.  The midwest is a practical place.
It usually also had a splotchy brown pattern so that a spilled root beer might pass without notice. The midwest is a practical place. Jon Tyson, Unsplash

I was instructed to remove my shoes at their doors and respect the primacy of house rules. In other realms, a visiting child brought their own rules with them -- perhaps they would be allowed a later bedtime, additional snack, or the high privilege of a PG-13 movie -- indulgences normally forbidden in my house.

This is one of the many reasons I have always hated choice of laws, and will not write about it in the blog. I will also stealthily delete any Andrew posts on it and assume he won't notice.

Today's post deals with a different sort of visitor, and an interesting wrinkle that I had not considered before.

Rampart IC, LLC v. Egg Medical, Inc., C.A. No. 24-643-JCG (D. Del. Jan. 17, 2025) was assigned to visiting judge Choe-Groves from the Court of International Trade. The defendant, Egg, was a Delaware corporation with its principal place of business in Minnesota (probably carpeted). They moved to transfer the case back to balmy Minneapolis.

One of the Jumara factors that govern transfer in the Third Circuit is the relative congestion in each fora. Typically, this factor favors transfer because Delaware Judges have among the highest (or often the highest) weighted caseloads in the nation.

In denying the motion, however, Judge Choe-Groves ...

Judge Williams issued an interesting opinion yesterday on a motion to strike.

This is becoming my standard pitcture when I don't have anything more clever.  Let me know if you would like me to replace it with a series of cartoons of Andrew and I shrugging
This is becoming my standard pitcture when I don't have anything more clever. Let me know if you would like me to replace it with a series of cartoons of Andrew and I shrugging Billy, Unsplash

The issue in Cisco Systems, Inc. et al v. Ramot at Tel Aviv University Ltd., C.A. No. 21-1365-GBW (D. Del. Jan. 15, 2025) was the form of the briefing. The case had previously been assigned to Judge Stark, before passing to the vacant judgeship, then Judge Burke. The parties' scheduling order thus followed judge Burke's form order which contained a specific letter briefing procedure for motions to strike with 3-page opening, a 5 page answering and 2-page reply briefs. When the case was reassigned to Judge Williams, the parties kept the old scheduling order.

The parties ultimately raised the motion to strike through Judge Williams' dispute procedures. He issued an oral order that allowed for only 3-page opening and answering briefs without reference to the procedures in the scheduling order:

Having reviewed the parties' joint letter requesting a discovery teleconference (D.I. 146), IT IS HEREBY ORDERED that, by no later than 5:00 p.m. on Tuesday, December 10, 2024, any party seeking relief shall file with the Court a letter, not to exceed three (3) pages, outlining the issues in dispute, its position on those issues, and supporting authority for its position(s). By no later than 5:00 p.m. on Thursday, December 12, 2024, any party opposing the request for relief may file a letter, not to exceed three (3) pages, outlining that party's reasons for its opposition and supporting authority.

The movant (Plaintiff) filed a 3 page letter (the correct procedure under either the scheduling order the later oral order). The defendant, however, filed a 5-page answering brief -- allowed under the scheduling order but exceeding the limit set in the oral order.

Judge Williams thus declined to consider any of the argument after page 3 of the brief:

While the Operative Scheduling Order sets default page limits for motions to strike, the parties were both instructed to submit letter briefs not exceeding three pages. Cisco complied with that instruction. Ramot did not. Accordingly, the Court will exercise its discretion and give no weight to the text beyond page three of Ramot's brief.

Id. at 2 n.2 (internal citations omitted).