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 …
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 …
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 …
This is a USB hub, not the kind of "hub" involved in the patent suit.Mac Care, Unsplash
In Aylo Freesites Ltd v. Dish Technologies LLC, C.A. No. 24-086-GBW (D. Del.), the plaintiff had originally brought a declaratory judgment claim in N.D. Cal., which was dismissed for lack of personal jurisdiction.
The accused infringer then filed suit here in Delaware. That same day, the patentee filed a complaint in the District of Utah, where it had also previously sued some related entities. Both of the D. Utah cases are stayed pending IPR.
The patentee then moved to transfer the DJ complaint from D. Del. to the District of Utah.
How many attorneys would have made the choice to re-assert § 101 at trial after conclusively losing on that issue at the MTD stage? Not many, I'm guessing.Oliver Roos, Unsplash
I still remember when, as a first-year associate (circa 2009), a senior attorney explained to me that courts will not hold a patent "valid," and instead will normally only say that it is "not invalid." It seemed like a bit of a silly distinction at the time, but it actually makes perfect sense, and it has come up again and again in my practice since then.
Courts do not typically hold that a patent is "valid" because that would suggest it is impervious to future challenges. Instead, courts often hold that a patent is "not invalid," i.e., that the moving party in a case before the Court failed to show that the patent was invalid due to some circumstance. That language recognizes that another party on another day might yet prove the opposite: that the patent is invalid.
This came up recently in Laboratory Corporation of America Holdings v. Natera, Inc., C.A. No. 21-669-GBW (D. Del.). In that case, the defendant had originally brought a motion to dismiss on § 101 grounds, and Judge Stark denied it. Id., D.I. 28 at 7.
Now, almost four years later and in the lead-up to trial, the plaintiff moved in limine to preclude the defendant from re-raising its failed § 101 argument:
Plaintiff "seeks to preclude Natera from presenting argument or evidence regarding patent eligibility of the Asserted Patents under § 101." . . . Plaintiff contends that such preclusion is warranted because (purportedly) "[t]he Court has already spoken on patent eligibility and has ruled that the Asserted Patents are directed to eligible subject matter."
Id., D.I. 325 at 4.
The Court denied the motion, and will permit the defendant to re-raise its § 101 argument at trial. The Court offered ...
One motion, two motion, three motion, fourAI-Generated, displayed with permission
Hello again dear friends and readers. In the time the blog has been on hiatus I have built a fence 20 feet high and 20 feet long, gained 400 ELO in chess, and seen many old friends for the first time in ages. But the blog is back, and those days are behind me as I feed more content into its insatiable maw. So let's get right into today's case.
You'll all be aware that a couple of our judges require litigants to rank their summary judgment motions. For instance, and relevant to today's case. Judge Williams' form scheduling order states that "The Court will review the party’s summary …
A patent figure. It has an indisputable date, a specific technical diagram, and a description. How much clearer can you get?U.S. Pat. No. 777,777 ("Hat-Clasp")
On Friday, Judge Williams resolved a case narrowing dispute in Nexus Pharmaceuticals, Inc. v. Execla Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.).
The parties disputed the numerical limits for case narrowing. The Court adopted a proposed limit of 4 obviousness combinations per claim, with no more than eight combinations total, and 10 total prior art references. The patentee offered to narrow to 7 asserted claims.
The Court noted that the order was consistent with its precedent, in which it allowed no more than 10 claims, 10 prior art references, and 20 prior art arguments.
The Court also addressed what counts as a "reference." The patentee tried to limit the accused infringer so that every document counts as its own reference, even if the asserted obviousness combination is a prior art device, product, or system itself rather than the documents that describe that system.
A trial in a high-end competitor patent case can involve quite a lot of logistics. One of many items that attorneys and staff have to coordinate is hotel reservations and travel to Delaware. Between the attorneys, staff, experts, witnesses, and client representatives involved in trial, this can be quite a lot of hotel reservations and plane flights—not to mention related equipment rentals and setup.
Obviously, it can be good to make trial space and hotel reservations on the earlier side if possible. There is only so much trial space in Wilmington, and if you wait you may lose your preferred option (potentially to the trial team on the opposing side).
Pictured: a francophone. also, its good to know that chatgppt doesn't know how a rotary phone works (4,b,c,?)AI-Generated, displayed with permission
As a devoted francophile (and middling francophone), I'm ever intrigued by the concept of rank. One cannot watch the plays of Moliere or the films of Renoir without getting a sense for the pervasive role that rank plays in every aspect of society, amongst both the proud and the petty.
This of course brings me to the place I most commonly rub against the rigid hierarchies of rank—summary judgment motions. Long time readers will of course be aware that Judges Connolly and Williams require litigants to rank their summary judgment motions, so that once one is denied, the …
We're back! It looks like a fair number of opinions and orders have accumulated during out hiatus, and we're looking forward to digging into them (seriously—the hardest part of writing the blog is finding things to write about).
Last week, Judge Williams issued a fairly lengthy opinion on a motion to compel production of documents from before the Default Standard's 6-year discovery provision.
For those who are not aware, the District of Delaware's Default Standard limits "follow-up" discovery in patent actions, with some exceptions, to a period of six years prior to the complaint (tracking the limitation on patent damages under § 286) absent a showing of good cause:
Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.
This can be a real limitation on discovery for cases in which the Default Standard applies (which is not all cases). And while parties occasionally reach the Court with a dispute where one party is trying to make the required showing of good cause to get around it, it's not as common as you might think.
But it is an issue that applies to just about every patent case, so it is great to see a detailed opinion from the Court about it. In Roche Diabetes Care, Inc. v. Trvidia Health, Inc., C.A. No. 24-668-GBW (D. Del. July 9, 2025), Judge Williams addressed a motion to compel production of various discovery prior to the six-year cutoff under the default standard.
The Court addressed four categories of documents and interrogatory responses, and ordered production of most of them. The Court ordered production of:
Development documents
First sale / demonstrate / manufacture / launch documents
Documents regarding knowledge of the asserted patents, and the plaintiff's products and methods
The Court denied the motion to compel production as to:
Damages and reasonable royalty documents
The Court's reasoning for each category provided some useful insights.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
