Last week in Eagle Pharmaceuticals, Inc. v. Apotex Inc., C.A. No. 24-64-JLH (D. Del.), the Court partially granted a motion to compel production of sales documents in a patent case.
The plaintiff moved to compel production of communications between the defendant's "sales force":
The Court should order Apotex to produce communications among its sales force regarding the sale, marketing, pricing, and promotion of Apotex’s NDA product. Eagle’s RFP No. 57 seeks: “All communications between Your sales force, sales personnel, or marketing personnel that refer or relate to the sale, marketing, pricing, and/or promotion of Your NDA [New Drug Application] Product, including but not limited to by way of any group chat, texts, text …
I have no idea what image would go with this, so here is a mildly interested chipmunk.Andrew E. Russell, displayed with permission
Yesterday, Judge Andrews granted two motions to dismiss willfulness allegations for a failure to allege knowledge. The orders are short and sweet, and provide some examples of the kinds of allegations that are not sufficient to allege knowledge of the asserted patent in support of a willfulness claim.
First, in New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA (D. Del.), the Court granted the willfulness portion of a motion to dismiss in just three sentences:
The motion to dismiss the willfulness allegations is GRANTED. Alleging that employees of Defendants attended a 2016 presentation on the topic of "Benefits of IP Partnering for Drug Delivery Telemanagement" provides no factual basis for an allegation of willfulness. Nor does the allegation that in 2021 an online article "Patents are Important for Smart Healthcare Products"-- described the patents and that Defendants subscribe to the online publication.
New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA, D.I. 18 (D. Del. Oct. 2, 2025).
This decision was quick, issuing less than two motions after the motion to dismiss, although it only addressed the motion in part. The Court referred the motion's remaining allegation re: § 101 to Magistrate Judge Tennyson.
"Did I forget to say why we should win the motion?"AI-Generated, displayed with permission
When you're drafting a brief, it can easy to get bogged down in all of the in-the-weeds counter-arguments and surrounding issues, and to kind of forget about the main point you need to make.
Years ago, in a patent case, I wound up needing to write three initial drafts of three summary judgment briefs in a week. Fun, right? The first two came together OK. The third one, not so much. It was a complicated motion involving many potential counter-arguments.
I remember thinking the initial draft was pretty good when I clicked send on the e-mail attaching it. How could it not be? In just …
Whew! The 2025 District of Delaware Bench and Bar conference wrapped up on Friday (has it really been twoyears!?). It was a wonderful event, as always, and the organizers did an amazing job. All of the panels were great, but I particularly enjoyed Judge Andrews' incredible interview of Judge Bryson (and I heard the same from others).
The conference was especially fun for me this year, because I received a lot of in-person feedback about this blog. Thank you all!! One request was to keep our posts short, and I'll try to do that today.
For anyone who missed it, here are some notes from the conference, organized loosely by topic:
I will, in fact, die on this hill—at least until something from the Court shows I'm wrong.AI-Generated, displayed with permission
Last year we had a post entitled "Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied." That post related to motions before judges who require a concise statement of facts with summary judgment motions. The "one simple trick" was that, rather than including a long list of atomic facts like "x said this at deposition" and "lines x:xx - y:yy of the patent specification say z," you state the actual material fact that you are relying on and cite those atomic facts as support for the broader fact.
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 ...
Figure 2A -- the figure at issue.U.S. Patent No. 11,012,647
This is an issue I don't recall having seen before. In VTT Technical Research Centre of Finland Ltd. v. Teledyne Flir, LLC, C.A. No. 25-348 (D. Del.), the plaintiff filed a pretty typical-looking patent complaint, where it alleged infringement of its patent by the defendant's products.
The complaint, however, relied on an allegation that the product was marked as practicing a particular patent, and that figure 2A of that patent showed a circuit that infringed on the plaintiff's patent:
According to VTT, the figure (“Figure 2A”) [of the defendant's own patent] depicts the allegedly infringing functionality. . . . In the complaint, VTT alleges on information …
Aaaand we're back! We extended the blog break a bit because I was traveling last week to participate on a panel about AI-related litigation at the Sedona Conference. There have been several interesting AI-related copyright decisions this year (including in Delaware), and we may post about them down the line.
For now, I wanted to alert everyone that Judge Burke posted a set of "Tips Regarding Markman Briefing and Hearings" on his website.
The document has 10 total tips, all directed towards Markman practice before Judge Burke. But I would say that it is definitely worthwhile reading for any Delaware litigator. The tips include guidance regarding (spoiler alert):
The number of terms Judge Burke will hear and decide …
If the Wikipedia photo is correct, it looks like the E.D. Wis. courthouse wins the interesting-exterior-lighting battle.Chris Phan, CC BY 2.0
Yesterday, visiting Judge Barker granted a motion to transfer in MCP IP, LLC v. Velocity Outdoor Inc., C.A. No. 24-683-JCB (D. Del.). The Court's opinion is lengthy and thorough, and it looks like the kind of analysis that is going to be cited quite a bit in future transfer motions.
I won't summarize the whole opinion, but a couple of points stood out to me as worth noting for those who may face (or file) transfer motions in patent cases.
The case was filed in Delaware by a company headquartered in Wisconsin, against a Delaware corporation headquartered in New York. The defendant moved to transfer the case to Wisconsin based (in part) on the fact that the accused products are manufactured there by a subsidiary of the defendant.
The Court applied the Third Circuit's Jumarafactors, which—as we've observed in the past)—can be tough to apply consistently, and can tend to favor transfer in IP cases.
Plaintiff's Forum Preference - This is the factor that consistently favors plaintiff. As the Court here noted, different judges have given this factor differing amounts of weight depending on the defendant's connection to Delaware. Judge Barker decided to give it its full weight despite the fact that the plaintiff here had no connection to Delaware:
[T]he District of Delaware has given the plaintiff’s choice different weight in different cases. In some, it discounted the weight of the plaintiff’s choice where the plaintiff lacked any connection to the forum state. . . . In others, it reasoned that the plaintiff’s connection to the forum has no bearing on the factor. . . . To ensure that plaintiff’s choice of forum is not lightly disturbed and to avoid double counting factors, this court will assume that this factor remains paramount and is not dampened by plaintiff’s lack of connection to Delaware. Cf. Rampart, 2025 WL 227287, at *2 (“Many of the reasons for lessening the importance of a plaintiff ’s choice in forum are subsumed and given weight under [other] Jumara factors . . . .”). Accordingly, this factor weighs strongly against transfer.
MCP IP, LLC v. Velocity Outdoor Inc., C.A. No. 24-683-JCB, at 11 (D. Del. Aug. 19, 2025).
Here are notes from some of the more interesting Jumara factor analyses here:
Whether the Claim Arose Elsewhere - The Court declined to hold that a patent case like this arises everywhere the defendant sells infringing products. It noted that the products are ...
Judge Burke issued an oral order on Thursday in OmniVision Technologies, Inc. v. RE Secured Networks, LLC, C.A. No. 24-187-JLH-CJB (D. Del.) expressing frustration due to the parties' inadequate claim construction briefing, and the resulting "inefficient" Markman hearing.
The parties submitted their joint claim chart back in March, identifying seven groups of terms. For three of the seven groups, the patentee offered positions like "Needs no construction" or "Not indefinite." D.I. 78-1 at 2-6. Some of these term groups were a bit odd (including, for example, a group called "preambles," which addressed three separate preambles across six claims spanning three patents). Counted separately, the parties sought to construe more than the 10 terms …
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.
