A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

Court Grants Rule 12(c) Judgment on the Pleadings of No Contributory Infringement

Andrew E. Russell, Jan. 13, 2025
FRCP 12(c) Motion for Judgment on the Pleadings

Pills
HalGatewood.com, Unsplash

Defendants are always on the lookout for ways resolve patent cases (and other cases) early. One potential avenue is an FRCP 12(c) motion for judgment on the pleadings—but it only works in uncommon circumstance that the pleadings themselves show a lack of infringement or validity.

It's an uncommon circumstance—but not unheard of. Last week, the Court granted an FRCP 12(c) motion of no contributory infringement in Boehringer Ingelheim Pharma. Inc. v. Apotex Inc., C.A. No. 23-685-CFC (D. Del.), after a plaintiff's own complaint showed a lack of infringement.

Boehringer is an ANDA action. The patent claims a drug used to treat a disease in patients who—critically—are ineligible to receive a second drug. The label …

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Public Safety Advisory: Move to Seal the Courtroom When Discussing Confidential Information

Andrew E. Russell, Jan. 10, 2025
Sealing Trial Practice

Caution Warning
Bernd Dittrich, Unsplash

It's easy to forget. But really, really really, you should move to seal the courtroom when either side is discussing your client's confidential information.

As we've discussed before, the standard for sealing information is harsh. Under the Third Circuit's Avandia opinion, in order to show good cause for a protective order to seal, a party must show "with specificity" that “disclosure will work a clearly defined and serious injury to the party seeking closure.” In re Avandia Mktg., Sales Practices & Prods. Liab. Litig., 924 F.3d 662, 671 (3d Cir. 2019). That can be tough to do.

But you know what is even tougher? Redacting information discussed in open court. Then …

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Something to Consider When Considering a 12(b)(6) Motion to Dismiss a Patent Case

Andrew E. Russell, Jan. 8, 2025
MTD FRCP 12(b)(6)

Robot
AI-Generated, displayed with permission

Back in 2021 the Federal Circuit issued an opinion in Bot M8 LLC v. Sony Corp. of Am. that raised the standard for granting a motion to dismiss in a patent action. C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021). The Federal Circuit held that "[a] plaintiff is not required to plead infringement on an element-by-element basis"—which was news to the patent practitioners who had filed (and won) motions on that basis.

We haven't written much about that decision in the time since, but it's still out there, and it's something to keep in mind as you weigh your options in response to a patent infringement complaint.

Last month, during our …

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Like Flour For Sugar

Nathan R. Hoeschen, Jan. 7, 2025
Pennypack

I'm a baker. I was born of flour and heat and fermented in this big jar we call life. My original starter, Yeasty Boy, has sired many children that live lives of plenty. His grandchild, breAD-Rock, sits upon my counter as I type, growing fat on apple peels.

AI-Generated, displayed with permission

One of the first lessons of baking is that some ingredients can be modified or omitted without any real worry. You trade rosemary for thyme in your focaccia and everything's honky dory. On the other hand, if you switch the strong bread flour to whole wheat, you have crossed a moral line from which there may be no return. Some ingredients are simply more important, and some substitutions …

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Ruling on Post-Trial Motions Shows What Not to Do

Andrew E. Russell, Jan. 6, 2025
Trial Trial Practice

Snow day!
Snow day! Hide Obara, Unsplash

We're back! Just in time to be snowed in—the Court is closed today due to inclement weather.

While we were out last week, Chief Judge Connolly issued an interesting opinion on post-trial motions in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38-CJB (D. Del.).

That case went to trial in January 2024, with plaintiff Natera winning a $96 million verdict on the first of two patents, but receiving a verdict of no infringement of the second patent. The Court's opinion addresses their motion for JMOL of infringement on the second patent.

Did a Poorly Phrased Question Doom JMOL of Infringement?

The arguments turned on a single claim limitation. The Court found …

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Court Holds Claim Indefinite Where One of Two Claimed Ways to Infringe Is Scientifically Impossible

Andrew E. Russell, Dec. 16, 2024
Indefiniteness Claim Construction

An electric signal transmitted over the air?
An electric signal transmitted over the air? Brandon Morgan, Unsplash

Judge Burke issued an interesting claim construction opinion on Thursday of last week, invalidating a claim where one of two ways to infringe was scientifically impossible.

One claim limitation was set forth in the alternative:

A communications apparatus for transmitting electric or electromagnetic signals over air

Satius Holding, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 18-850-CJB (D. Del. Dec. 12, 2024).

The parties agreed the it is "scientifically possible" to transmit "electromagnetic signals" over air, but the defendant argued that it was impossible to transmit "electric" signals over the air:

Defendants assert that one of those two options—“transmitting electric . . . signals over air”—amounts …
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Updates: New Federal Rules in Effect, JUDGES Act in Trouble, Chancellor McCormick Active on LinkedIn (with Briefing Tips!), and More

Andrew E. Russell, Dec. 13, 2024
FRE 107 DED

I have no image for this. Here are some turtles that live just across the PA/DE border, in Chadds Ford, PA (presumably for the public schools).
I have no image for this. Here are some turtles that live just across the PA/DE border, in Chadds Ford, PA (presumably for the public schools). Andrew E. Russell, displayed with permission

There were a few interesting notes this week that didn't quite warrant their own posts, so here is a combined update. We should really be on X / Twitter / Bluesky / Trends or something—I'm not sure any of these updates really warrant more than 140 characters. But here you go:

  • As the Court pointed out last week, the new 2024 Federal Rules went into effect on December 1. It looks like the changes to the FRCP are not significant, but there are some interesting changes to the Rules of Evidence, including a brand new Rule 107. We've already discussed that rule, but in short, it renames "demonstratives" to "illustrative aids" and says that "[w]hen practicable, an illustrative aid used at trial must be entered into the record." The new rules have other changes as well, including nice clarifications to FRE 1006.
  • The Associate Press reported yesterday that the JUDGES Act, which would add two new D. Del. judges, is in peril and facing a veto threat. Please keep it in your thoughts...
  • Chancellor McCormick, chief judicial officer of the Delaware Court of Chancery, is active on LinkedIn. She recently shared helpful briefing tips, including about overuse of acronyms and that you should use non-breaking spaces.
  • Delaware recently announced new CLE rules, complete with a handy explanatory document. Beware—it looks like, under the new rules, Delaware attorneys now will be fined immediately if your CLE credits aren't completed by December 31 of your compliance year and reported by January 10 of the following year. No more makeup plans! There is a transition period for this year where the dates are a bit different.
  • The Delaware FBA announced last week that Delaware Bench & Bar conference will be September 25-26, 2025. Mark your calendars, and remember that the Court sometimes issues an order bumping any filing or service deadlines that are set for those days.
  • Judge Albright of the Western District of Texas has confirmed that he is moving from Waco to Austin, pending 5th Circuit sign-off. Law360 also reports that he named his dog Mandamus, which is awesome.
  • The District of Delaware's website, like many other courts across the country, added a warning recently about fake notices of electronic filing ("NEFs") that have malicious links. Sadly I can't seem to find any more detail on this, such as what to look for. Be careful out there!
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101 Stats Redux

Nathan R. Hoeschen, Dec. 12, 2024
101

Sadly, today's post will be an update to one of my more popular posts. So there will be no stories of childhood pets, and scarcely any amusing bon mots. Instead, we're sticking to the facts today and asking in 2024 C.E. who do you want deciding your 101 motion?

AI-Generated, displayed with permission

The rules from last time have been modified slightly. I once again took the last 10 opinions from each of our current active Article III judges as the data set (for Judge Hall, this required including some R&Rs from her time as a magistrate). This includes Rule 12 motions and motions for summary judgment (generally less common) but does not include post-trial motions. To get some more …

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Patentee's Own Weak Interrogatory Responses Cause Denial of Its Motion to Strike Opposing Party's Late Expert Argument

Andrew E. Russell, Dec. 11, 2024
Expert Discovery Expert Reports

"Behold, our fulsome and complete damages theory disclosure. I'm sure this won't cause us any problems down the line." Andy Bridge, Unsplash

Parties in patent cases are often tempted to provide bare-bones responses to contention interrogatories, offering just enough to preserve their ability to expand on the arguments later during expert reports. That's easier, obviously, than providing more detailed contentions, and it also maintains flexibility as discovery develops.

Plus, parties simply may not have fully developed their theories at the time contention interrogatories are due. Expert reports are when theories are typically fully fleshed out, after discovery has closed and the universe of information is set, more or less.

But there is another consideration as well, beyond preventing a …

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Time Is All We Have

Nathan R. Hoeschen, Dec. 10, 2024
Stipulation Scheduling Order

We lawyers move things around all the time. Some due date or another falls on a vacation, an expert gets sick, a bunch of files won't load -- a thousand different minor catastrophes can occur. In Delaware, the result is almost invariably a stipulation to move the relevant dates.

WHEREAS, on the first day the waters turned to blood;
WHEREAS, on the first day the waters turned to blood; AI-Generated, displayed with permission

Typically for little interim deadlines, the Court will grant the stipulation as a matter of course. Deadlines a little closer to trial are a bit trickier. Judge Connolly, for instance, notes in his form scheduling order that "Should the parties later stipulate or otherwise request to have the [SJ and Daubert] reply brief deadline extended, the parties …

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