When I started practicing here in the District of Delaware (the decade before last), the typical advice was that a patent case would proceed to scheduling and discovery even if the defendant files a motion to dismiss. Lately, though, several of the District of Delaware judges have been holding off on initiating the FRCP 16 scheduling process when the defendant files a motion to dismiss.
Often, as we've discussed, a smart plaintiff in that situation will file a letter asking the Court to direct the parties to conduct an FRCP 26(f) conference, so that discovery can move forward. Most often that seems to work. …
Representativeness is the bête noir of almost every § 101 motion. This is especially true early in the case, when the Court might rightly ask why it should bother invalidating 1 of 2,312,419 currently asserted claims.
This quandary is especially troublesome for defendants because it's often quite difficult to brief representativeness of a large number of claims in the necessary detail.
If you can tell me what claim 9 adds to to claim 8, I will literally eat my own cufflinks and then wear them again! Algorithm? More like Smellsbadgorithm!AI-Generated, displayed with permission
Later in the case, things are a bit different. For one, there's a lot fewer claims at issue (hopefully) so knocking out just a few can make a big difference. Moreover, having a bit of discovery under your belt can make those representativeness arguments easier to make.
Caddo Systems, Inc. et al v. Jetbrains Americas, Inc., C.A. No 22-1033-JLH-LDH (D. Del. Feb. 25, 2025) (Report and Recommendation) had an interesting bit of argument along these lines that I hadn't seen before. The patents at issue there were all directed for a system to "allow a user to more easily navigate a file structure that may have many layers and options."
The parties disputed representativeness (quelle surprise!). One of the disagreements was whether certain claim limitations required a user to select (or have preselected) a menu item by different means. Plaintiff argued that these different means added something to claims that affected the § 101 analysis.
Unfortunately for plaintiff, their expert had submitted an expert report on the doctrine of equivalents, where he had opined that all of these different means actually performed the same function, in the same way, to reach the same result. Judge Hatcher, granting the motion for summary judgment, found this fact persuasive and cited it as an example of how the differences between the claims "do not prevent the Asserted Claims from being conceptually equivalent."
It's a possible contradiction that hadn't occurred to me before, and something to keep in mind when working with your own experts.
Looks like someone got a hole in one. On Friday, Judge Hall issued a relatively short memorandum order granting a § 101 summary judgment motion, and it neatly encapsulates what § 101 analyses seem to be trending towards.
The Court found that the 10 asserted claims, across three patents, are all directed to a simple abstract idea:
I agree with Netflix that each and every one of the asserted claims is directed to “the abstract idea of collecting, organizing, and automatically displaying content (e.g., a playlist of Internet content).” . . . The asserted claims contain a lot of words, and some of those words sound complicated.[] But what the claims cover is not complicated. …
If we keep using this image, people are going to think that all of Wilmington is on the water. Imagine their surprise when they arrive!Andrew Russell, CC BY 2.0
This week, the D. Del. website posted an opening for a term law clerk with Magistrate Judge Hatcher.
As most of our readers probably know, there are two types of judicial clerks: permanent and term. A permanent clerk is, well, permanent. They stay indefinitely. A term clerk stays for, typically, a one-year term, most often starting in September.
Serving as a term clerk is an amazing opportunity for an attorney and I highly recommend it. It gives you an incredible perspective on how the Court works, how judges manage …
The Looming Parade of Horribles, AI-Generated, displayed with permission
I’m partial to percussion and noticed that there was a gaping hole of staccato in the rising swell of the IPDE music videos, subtle though it may have been in the background of Andrew's singing and Nate’s interpretive dance performances. Leaving the snare drum at home, today I chime in only with the lonely voice of a wistful triangle to supplement this week’s stories with a tale from a faraway land—the Eastern District of Texas.
Why do we in Delaware care about this opinion? It gave me a fresh appreciation for the orderly composition of Delaware scheduling orders. It involved a problem that cannot arise in a District of Delaware …
We first posted a reminder that reverse DOE and ensnarement exist back in 2021, and then again in 2023. But here, now, in 2025, we just got some nice guidance from the Court about ensnarement, and it seems like a great time to put out another reminder.
What Are They?
The Reverse Doctrine of Equivalents deals with a situation where the accused product literally reads on the claims, but is not actually doing what the patent is meant to cover. As we noted last time:
The [reverse doctrine of equivalents] rescues from infringement devices that literally satisfy the elements of a claim but perform the same function of the invention in a …
I hope some of you saw the musical video Andrew posted yesterday before it was taken down in a copyright strike by the Prince Estate due to his eerily pitch perfect parody. The costumes alone were worth the price of admission.
Honestly the photo doesn't do it justiceAI-Generated, displayed with permission
Mallinkrodt Pharms. Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA (D. Del. Feb 12, 2025). presented an interesting twist on the tried and true preliminary injunction formula.
The likelihood of success analysis was pretty standard (although it touched on one of my favorite issues—drug interaction). Ditto for irreparable harm, with the Court finding allegations of lost sales and …
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 blogAI-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 be the subject of our first song, "Sanction Sanctuary."
The title comes from the plaintiff's motion for sanctions -- unusual in the district outside of the Pennypack context. The issue there was that the defendant had produced almost all of its documents after the substantial completion deadline, resulting in extra work for the plaintiff, who sought fees as compensation. The defendant argued that the late production was not sanctionable because it was caused in large part by an error in their document collection that had initially missed all documents before 2018.
We've posted twicerecently on Magistrate Judge Tennyson's practices regarding how long the parties should meet-and-confer before bringing a discovery dispute. In the prior posts, the parties presented a single discovery dispute issue. The parties initially met-and-conferred for 12 minutes, and the Court sent them back to meet-and-confer further. The Court later OK'd the dispute after they spent a total of 31 minutes on the issue.
On Friday, the Court issued an order in another case giving some more insight into this meet-and-confer requirement. In Media Content Protection LLC v. Dell Technologies, Inc., C.A. No. 20-1240-CFC-EGT (D. Del.), the parties filed a motion to raise three discovery issues with the Court, including two …
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