A Blog About Intellectual Property Litigation and the District of Delaware


GBW
The Honorable Gregory B. Williams

The Advantage of Silence

Nathan R. Hoeschen, Jan. 20, 2026
Lanham Act

There is no more cliched legal advice than "say nothing." It is such a staple of the greater Law and Order cinematic universe that the average 8-year-old, upon being arrested for rampant tomfoolery (still a crime in Delaware!) knows to ask for their phone call and then remain silent.

I know its a dog, but the image generator is down and its all I had. Just pretent its an unfortunately hairy child.
I know its a dog, but the image generator is down and its all I had. Just pretent its an unfortunately hairy child. AI-Generated, displayed with permission

Wow Tech USA, Ltd. v. EIS, Inc., C.A. No. 24-115-GBW (D. Del. Jan. 9, 2026) dealt with the fallout of an earlier patent dispute between the parties.

Both parties are competitors in the field of obscure and presumably advanced sex toys with "air pulse technology." The case had gone to trial in 2023, with the jury returning a verdict of willful infringement and awarding a $12.8 Million lump sum royalty (a running royalty was also an option on the jury form, so this lump sum choice was explicit).

However, the defendant's equitable defenses were not decided at the trial and remain outstanding, and thus no final judgment has been entered.

This new case arose when the defendant allegedly told potential customers that:

the jury verdict in the Patent Action "gave Defendant a fully paid-up license for the lifetime of Novoluto's patents-in-suit," and that the license includes Defendant's Air Pulse products, "including new-yet-materially-identical products Defendant has released and continues to introduce to the market since trial in the Patent [Action]."

Id. at 2 (quoting complaint).

Plaintiff thus brought Lanham Act false advertising claims (along with a host of related state law claims) based on these statements and defendant moved to dismiss arguing that these statements were literally true because "[a] lump sum patent damages award has the same effect as a lifetime paid-up license to the patents."

The Court granted the motion to dismiss for lack of particularity in the allegations (taking a side in the Third Circuit split on ...

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Don't Forget to Include a Witness Fee with That Deposition Subpoena

Andrew E. Russell, Nov. 19, 2025
Deposition Subpoena FRCP 45

Fun fact! If your attorney bills $450/hr in .1 hr increments and does nothing but take your $40 and hand it to a deponent, the bill to do so may cost you more than the $40 fee itself.
Fun fact! If your attorney bills $450/hr in .1 hr increments and does nothing but take your $40 and hand it to a deponent, the bill to do so may cost you more than the $40 fee itself. AI-Generated, displayed with permission

When it comes to IP cases in federal court, dealing with subpoenas can be a bit out of the ordinary.

It's not that they never come up. It's normal to have a couple of subpoenas per side in cases that make it to the close of fact discovery (e.g., for prior art, third party inventors, etc.), sometimes more. But not all cases make it to that stage, and many cases don't involve any subpoenas at all.

It also doesn't take much manpower to fill out a form subpoena. It's a task often given to newer associates or paralegals. More senior attorneys may not get involved in the service process at all, unless something goes wrong.

That said, it's easier than you might think for something to go wrong. The rules governing subpoenas are pretty archaic and weird compared to the rest of the federal rules. FRCP 45, for example, requires "tendering the fees for 1 day's attendance and the mileage allowed by law" when serving a subpoena.

Often this payment is handled by a process server. But, sometimes, they don't handle the payment. What happens then?

The subpoena may be ...

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Judge Williams Issues Orders Across Ten Cases Directing Discovery to Move Forward Pending Resolution of Motions to Dismiss

Andrew E. Russell, Oct. 29, 2025
Discovery Pending MTD MTD

Logjam
AI-Generated, displayed with permission

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 …

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Judge Williams Rejects Dicta from Two Federal Circuit Cases, Denies Summary Judgment

Andrew E. Russell, Oct. 27, 2025
Invalidity § 102(b)

Sale
Markus Spiske, Unsplash

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 …

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Judge Williams Holds That Claims Dropped During Claim Narrowing Are Gone Forever

Andrew E. Russell, Oct. 22, 2025

No U-Turns
Pedro Honn, Unsplash

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 …
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Court Grants Transfer Motion Despite Alleged Inaccessibility of Accused Website in Transferee Jurisdiction

Andrew E. Russell, Oct. 10, 2025
Jumara Motion to Transfer

This is a USB hub, not the kind of
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.

Judge Williams granted the motion …

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Court Permits Accused Infringer to Re-Raise Failed § 101 Argument at Trial

Andrew E. Russell, Sept. 19, 2025
Trial Motion to Dismiss

How many attorneys would have made the choice to re-assert <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='35 U.S.C. § 101: Inventions patentable'>§ 101</a> at trial after conclusively losing on that issue at the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Motion to Dismiss'>MTD</a> stage? Not many, I'm guessing.
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 ...

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Count Motionula

Nathan R. Hoeschen, Sept. 18, 2025
Ranking Summary Judgment

One motion, two motion, three motion, four
One motion, two motion, three motion, four AI-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 …

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In Resolving Case Narrowing Dispute, Judge Williams Holds that a Prior Art Product Is a Single Reference, Even If Described by Multiple Documents

Andrew E. Russell, Aug. 4, 2025
Prior Art Case Narrowing

A patent figure. It has an indisputable date, a specific technical diagram, and a description. How much clearer can you get?
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.

The Court rejected that idea, and held that ...

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Hope Those Reservations Are Refundable! Double-Booked Trials May Be Rescheduled

Andrew E. Russell, July 18, 2025
Trial Trial Practice

Caution
Goh Rhy Yan, Unsplash

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).

On the other hand, things …

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