Basically, if it's just a shield and no sword, you're good to go.AI-generated, displayed with permission
When it comes to privilege disputes, an argument that the opposing party is "wielding privilege as both a sword" and a shield tends to be prettyeffective. But it has its limits. As visiting Judge Murphy found in a decision last month, the opposing party actually has to be doing something more than simply using privilege as a shield.
In A.L.M. Holding Co. v. Zydex Industries Private Ltd., C.A. No. 25-155 (D. Del.), the defendant asserted an equitable estoppel defense to patent infringement, arguing that it reasonably relied on plaintiff's conduct, which misled them to believe that they …
On Friday, visiting Judge Choe-Groves issued an order addressing a defendant's use of new references in a motivation-to-combine analysis, which it had not disclosed in its invalidity contentions or on the deadline for election of prior art references. It instead disclosed the references for the first time in its expert report on invalidity.
The case involved a scheduling order using Chief Judge Connolly's form, which includes a single round of invalidity contentions and a deadline for election of references, and specifically requires good cause to supplement.
Judge Choe-Groves found that the late disclosure of certain "background" references was acceptable, but rejected the idea that references used in a motivation-to-combine analysis fall into that category:
In an order on Thursday in Vifor (International) AG v. Apotex Inc., C.A. No. 25-211-WCB (D. Del.), visiting Judge Bryson set forth his views on stays in an ANDA action where the stay will impact the trial date in light of the 30-month stay and the time needed for post-trial briefing:
Apotex stated that the parties are engaged in settlement negotiations and asked that the proceedings be stayed “to allow the parties to focus on negotiating settlement” and to order that the parties pursue mediation “to resolve this matter efficiently.” . . . Apotex’s request for stay is denied. The fact that the parties are contemplating mediation suggests to the court that settlement, …
The patent generally relates to a data cable like this (shown in cross section).U.S. Pat. No. 9,991,030
I admit that, before today, I had no idea how to distinguish between an "artifact noun" and a "natural kind noun." Nor did I know how such knowledge could ever be relevant to my interests. But now I do!
In ruling on claim construction in Belden Inc. v. CommScope, Inc., C.A. No. 22-783-RGA (D. Del.), Judge Andrews ended up delving into grammar to determine whether the term "non-conductively shielding" was indefinite.
The patent at issue related to high-performance data cables (for example, Cat 6A cables used for 10 GB Ethernet). The patent describes that these cables can have four …
Maybe this slightly disturbing AI-generated arctic cat photo will remind us all to be careful with the Arctic Cat burden-shifting framework.AI Generated, displayed with permission
We're back! And we have a stack of opinions to look through. The first one that caught my eye is a summary judgment opinion from visiting Judge Murphy of the Eastern District of PA, in Monolithic Power Systems, Inc. v. Reed Semiconductor Corp., C.A. No. 23-1155 (D. Del.).
The Court addressed various summary judgment and Daubert motions by both sides, and denied them all. One denial in particular is worth discussing.
The accused infringer moved for summary judgment on pre-suit damages because the patentee failed to mark its products that …
It's well known that, in evaluating a motion to dismiss, the Court is limited on what it can consider to, e.g. the four corners of the complaint, documents incorporated therein, and things the Court can take judicial notice of.
Rule 12 sets out that a Court can convert a motion to dismiss to an SJ motion if it wants to consider matters outside of the pleadings:
Result of Presenting Matters Outside the Pleadings. If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity …
I don't think we ever did a post on this, but back in 2023, Federal Rule of Evidence 702 was amended to clarify that the burden of showing admissibility of an expert witness's testimony falls on the offering party (addition highlighted below):
A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that:
(a) the expert’s scientific, technical, or other specialized knowledge will help . . .
FRE 702 (2025).
This is consistent with a long-standing Third Circuit holding in In re Paoli R.R. Yard …
It has been a while since we have posted about them, but multiple D. Del. judges have held omnibus hearings to resolve multiple § 101 motions at once, called § 101 days.
Here is my co-blogger Nate's description of District of Delaware § 101 days from one of his posts a few years ago:
The 101 day has been the highlight of the Delaware patent law hearing calendar for many years now. It's an all-day no-holds-barred marathon where questions can come to any party at any time. And the best part is, you can look forward to a decision at the end of the day. It is our Super Bowl and our debutante ball all …
This is a magnolia flower, apparently, if (like me) you were curious.Erda Estremera, Unsplash
I always think there is something to be learned when the Court is critical of the parties' briefing on an issue.
Today in Magnolia Medical Technologies, Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC (D. Del.), Chief Judge Connolly had strong words for both parties in response to the briefing on a motion to strike.
In its motion, the accused infringer sought to strike the patentee's supplemental interrogatory response served almost five months after the close of fact discovery. The interrogatory response disclosed that one of the patentee's products practices the asserted claims, and the patentee served it three weeks after the FDA approved the patentee's request to market the product.
The accused infringer first argued that the Court should strike the supplemental interrogatory responses based on the language in Chief Judge Connolly's scheduling order requiring a patentee asserting practicing products to identify them in its infringement contentions:
Disclosure of Asserted Claims and Infringement Contentions. Unless otherwise agreed to by the parties, no later than 30 days after the date of this Order, a party claiming patent infringement shall serve on all parties a "Disclosure of Asserted Claims and Infringement Contentions." Separately for each opposing party, the Disclosure of Asserted Claims and Infringement Contentions shall contain the following information:
. . .
If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own or its licensee's apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim ("Embodying Instrumentality");
Chief Judge Connolly's Form Scheduling Order for Non-Hatch-Waxman Patent Cases in Which Infringement Is Alleged.
In moving to strike, the accused infringer alleged that the amended responses violated this provision. The Court called that "classic legerdemain" because ...
France—the place where these inventors will probably not be deposed.Gloria Villa, Unsplash
Last week in Pierre Fabre Medicament SAS v. Rubicon Research Private Ltd., C.A. No. 24-811-JLH-SRF (D. Del.), Judge Fallon ruled on a set of discovery disputes involving a motion to compel the patentee to make its inventors—who are employees residing in France—available for fact depositions under FRCP 30(b)(1).
In this case, it looks like the accused infringer has a an improper inventorship defense—which sounds like a very good reason to want to depose the inventors.
The interesting thing, to me, is that the patentee tried to fight these depositions at all. The Court easily (and unsurprisingly) batted away each of their objections.
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.
