A Blog About Intellectual Property Litigation and the District of Delaware


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United States District Court for the District of Delaware

Court Suggests Stay of Discovery, Bifurcation of Trial After "Highly Concerning" Allegations in Rule 11 Motion

Andrew E. Russell, March 10, 2025
FRCP 11 Rule 11

I'm not going to blow the blog's budget on downloading all of the evidence in the 35 exhibits attached to the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Federal Rule of Civil Procedure 11'>Rule 11</a> motion. But it looked like a lot.
I'm not going to blow the blog's budget on downloading all of the evidence in the 35 exhibits attached to the Rule 11 motion. But it looked like a lot. Christa Dodoo, Unsplash

Federal Rule of Civil Procedure 11, as most readers likely know, says an attorney making a filing certifies that the filing has factual support:

(b) Representations to the Court. By presenting to the court a pleading, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney . . . certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances: . . .
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery . . . .

FRCP 11.

If the opposing party has reason to doubt that an attorney has met their burden, it can threaten a Rule 11 motion. The procedure gives parties an opportunity to cure, though, and parties sometimes do.

A Real Live Rule 11 Motion

Those motions are often threatened but, in practice, we don't see a ton of rulings on Rule 11 motions in the District of Delaware. So it was interesting to see the Court's ruling today in Central Santa Lucia, L.C. v. Expedia Group, Inc., C.A. No. 22-367-JLH (D. Del. Mar. 10, 2025).

That case involves a violation of a federal statute regarding the sale of certain property. To bring a case, the plaintiff must have acquired ownership of the property before a specific date: March 12, 1996.

The plaintiff in the case claimed it owned the relevant property as of the date. The defendant disagreed, and filed a Rule 11 motion seeking sanctions for filing a pleading that relied on fraudulently ...

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Tips on the Required Structure of a Brief in the District of Delaware

Andrew E. Russell, March 5, 2025
KB Legal Writing

Stay on the Path
Mark Duffel, Unsplash

This is something I've been thinking we should cover for long time. Here in the District of Delaware, the local rules set forth a required structure for every brief—but out-of-town counsel often seem to miss that.

Basically, Local Rule 7.1.3(c)(1) requires that an opening or answering "brief" contain seven specific sections in a specific order:

  1. A table of contents (TOC)
  2. A table of citations and authorities (TOA)
  3. A "statement of the nature and stage of the proceedings"
  4. A summary of argument
  5. A "concise statement of facts"
  6. An argument
  7. A short conclusion.

These look simple, but they trip people up sometimes. Here are some tips for each section.

Required Sections for Every Opening and Answering Brief

TOC …

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The Very Worst of the Worst

Nathan R. Hoeschen, March 4, 2025
101

OOOF!
OOOF! Zachary Kadolph, Unsplash

As I was reading through Judge Andrews' opinion in Election Systems & Software, LLC v. Smartmatic USA Corporation, C.A. No. 18-1259-RGA (D. Del. Feb. 28 , 2025)—a fairly standard opinion denying a motion for attorney's fees—I noticed an interesting callout:

It is within my discretion to find a case exceptional on the grounds of a plaintiff's meritless section 101 argument so as to "deter similarly weak arguments in the future."On the rare (and I believe only) occasion that I have done so, however, the patent asserted was obviously unpatentable. See Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *l (D. Del. Mar. 18, 2019) ("I have rarely been more confident …
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Plaintiff Succeeds at Forcing Discovery Pending a Motion to Dismiss Before Judges Connolly and Tennyson

Andrew E. Russell, March 3, 2025
Motion to Stay Motion to Dismiss

Discovery in D. Del.: this train ain't stoppin! Probably.
Discovery in D. Del.: this train ain't stoppin! Probably. Alistair MacRobert, Unsplash

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. …

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Representativeness By Other Means

Nathan R. Hoeschen, Feb. 27, 2025
101 Doctrine of Equivalents

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!
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.

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Court Grants § 101 Motion: "Calling Something a Technical Solution Does Not Make It So."

Andrew E. Russell, Feb. 24, 2025
Summary Judgment § 101

Hole in One
Jason Abrams, Unsplash

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. …
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D. Del.'s Judge Hatcher Posted a Term Law Clerkship Opening. Here's Why Some Readers Should Consider Applying.

Andrew E. Russell, Feb. 21, 2025
Clerkship DED

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!
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 …

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Unlike in the Eastern District of Texas, Delaware Scheduling Orders Avoid Potential Rule 11 Pitfalls at the Pleadings Stage

Emily S. DiBenedetto, Feb. 19, 2025
Scheduling Order Sanctions

Parade of Horribles.jpg
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 …

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Your Biennial Reminder That the Reverse Doctrine of Equivalents and Ensnarement Exist (Plus Some Guidance from the Court)

Andrew E. Russell, Feb. 14, 2025
Reverse DOE Ensnarement

Fish Traps
Chris J Walker, Unsplash

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 …
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Injunction Junction

Nathan R. Hoeschen, Feb. 13, 2025
Preliminary Injunction ANDA

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 justice
Honestly the photo doesn't do it justice AI-Generated, displayed with permission

Hopefully tomorrow's video—Injunction Junction—fairs better.

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 …

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