A Blog About Intellectual Property Litigation and the District of Delaware


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Judge Andrews: Chances of IPR Institution Too Speculative to Support a Pre-Institution Stay

Andrew E. Russell, May 5, 2025
Pre-Institution Stay IPR

Roll the Dice
Leon-Pascal Janjic, Unsplash

We haven't written about pre-institution IPR stays in some time. Defendants generally know that they are tough to achieve. You can try it but, unless there is something special about your case, pre-institution stays are rare. Most of our judges view the chances of institution as too remote to support a stay, and want to evaluate the situation after institution.

Judge Andrews issued a short oral order last week consistent with that view, denying a pre-institution in a way that suggests, unsurprisingly, that getting a pre-instutition stay remains difficult:

I read the briefs in connection with the motion to stay. Each side's positions are clear. Oral argument would not change the outcome. Therefore, the oral argument …
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Judge Fallon Re-Affirms Duty to Supplement Contentions Without Waiting Until Final Deadline

Andrew E. Russell, April 26, 2025
Motion to Strike Motion to Compel

You know what to do...
You know what to do... AI-Generated, displayed with permission

Many District of Delaware scheduling orders in patent cases include deadlines for both "initial" and "final" infringement and invalidity contentions. In those cases, parties often argue that having a deadline for "final" invalidity contentions means there is no obligation to supplement in the period between initial and final contentions.

The obligation to supplement under Federal Rule of Civil Procedure 26, after all, states that it applies to Rule 26(a) disclosures, interrogatories, RFAs, and RFPs—but not explicitly to "contentions" required by a scheduling order.

I've seen the Court go both ways on this. The judges often seem willing to grant a motion to compel earlier responses, saying that early supplementation is required …

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A (Rather Wordy) Guide to Page and Word Limits in the District of Delaware

Emily S. DiBenedetto, April 4, 2025
Page Limits Scheduling Orders

"And another thing . . ." John Doyle

Most practicing Delaware attorneys can probably rattle off page limit requirements in their sleep, given how frequently we hear this question from out-of-town counsel.

Limits vary case-to-case based on differences scheduling orders and other circumstances, but below we've summarized some of the default limits set by the District of Delaware local rules, standing orders, and our judges' form scheduling orders.

[The irony of subjecting readers to a long post on word limits is not lost on me.]

The General Rule

Under LR 7.1.3, most motions are limited to:

  • Opening briefs = 20 pages
  • Answering briefs = 20 pages
  • Reply briefs = 10 pages

Everything must be double-spaced and in at least 12-point …

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But I Thought I Could Do the Bare Minimum!

Lindsey M. Gellar, March 31, 2025
FRCP 8 Affirmative Defenses

Me, emerging to make my IP/DE debut.
Me, emerging to make my IP/DE debut. Bankim Desai, Unsplash

My name is Lindsey Gellar, and I am an associate at Shaw Keller, posting for the first time here. Yes, Andrew has finally managed to rope another lackey (associate) into writing for the blog. Today, I'm going to look at what it takes to plead equitable defenses in the District of Delaware.

When it comes to pleading most affirmative defenses, the bar is on the floor. An affirmative defense does not need to be plausible to survive; it must merely provide fair notice of the issue involved. Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR, 2012 U.S. Dist. LEXIS 126788, at *7 (D. Del. …

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Court Denies Summary Judgment Motion That Failed to Include Adequate Argument (and Violated the Page Limit)

Andrew E. Russell, March 17, 2025
Page Limits Summary Judgment

Green Frog
Andrew E. Russell, displayed with permission

Earlier this month we talked about the required structure for briefs in the District of Delaware. As to the required "argument" section, I said "We all know what this is." Maybe I was wrong.

An "Argument" Section That Wasn't

On Friday, the Court denied a motion for summary judgment for violating the local rule on briefing structure, because it's "argument" section failed to conform to the local rule on briefing structure, LR 7.1.3(c)(1)(f), and had exceeded the page limits for briefing. Roger P. Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 443 (D. Del. Mar. 14, 2025).

Basically, the patentee moved for summary judgment of infringement. But, rather than laying …

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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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Court Orders Production of Litigation Funding Information—But Only to the Extent It Relates to the Value of the Patents

Andrew E. Russell, Jan. 29, 2025
Litigation Funding

Is he watching via Robocast, I wonder?
AI-Generated, displayed with permission

When people say that D. Del. is "against litigation funding," they imply that the Court has some kind of general bias against parties who use litigation funding. That's wrong. I've never seen a Delaware judge dislike or rule against a party because the party used litigation funding. And the Court as a whole is certainly not biased against plaintiffs (or defendants), funding or no funding.

With all of that said, I thought it was worth noting that Judge Burke recently ordered production of litigation funding material to the extent it related to the value of the patents.

After reviewing litigation-funding-related documents in camera, he ordered production of those that relate to the value of …

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This Is Why You Should Identify Claim Construction Issues Early—If You Can

Andrew E. Russell, Jan. 24, 2025

Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it.
Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it. Kelly Sikkema, Unsplash

Yesterday, Judge Hall granted a post-trial JMOL motion in Taiho Pharmaceutical Co., Ltd. v. MSN Laboratories Private Ltd., C.A. No. 19-2342-JLH (D. Del.), finding no infringement as a matter of law.

The motion resolved a relatively straightforward claim construction issue: what the word "purity" means in the claims.

The patentee said it meant chemical purity, while the accused infringer argued it meant "polymorphic" purity. The patent as a whole is directed towards crystal forms of a drug, and discussed purity of the crystal form—"polymorphic" purity—but also mentions chemical purity. The patenteee agreed that, if "purity" means polymorphic …

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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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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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