A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

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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282, Where Are You, I Got No Way To Find You

Nathan R. Hoeschen, April 24, 2025
282

A 282 notice is a bit of an anachronism and a bit of a trap.

AI-Generated, displayed with permission

For those who don't read these latter sections of section 35 that often, it goes like this:

a party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit [or] as showing the state of the art

Obviously, in the modern world of contentions, expert reports, moving type, etc., the parties are usually …

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Another Day, Another Damages Daubert

Andrew E. Russell, April 11, 2025
Damages Daubert

"In my expert opinion, the patents are really valuable. The plaintiff told me so!" AI-Generated, displayed with permission

Exclusion of damages opinions are a frequent topic for our blog. Daubert motions to exclude expert opinions tend to have a higher success rate than other types of Daubert motions, and it's worthwhile to have a good understanding of where the pitfalls lie, whether you are helping an expert draft a damages opinion or considering challenging one.

Yesterday, the Court granted a Daubert motion to exclude a damages opinion in a patent case. The expert relied on prior licenses to other patents from the same inventor to support his reasonable royalty opinion for the patents-in-suit. That requires showing that the prior …

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A Different Sort of Redaction Story

Nathan R. Hoeschen, March 27, 2025
Redactions

Jeff Castellano

The blog has many stories about the perils of over-redaction. Time and again the Court has chastised the parties for attempting to redact quotidian bits of agreements and correspondence, noting that the Court is not a "Star chamber."

Today's case, Inkit, Inc. v. Airslate, Inc., C.A. No. 23-793-RGA (D. Del. Mar. 26, 2025), shows that it's also possible to redact too little. The parties thereby had a long-running dispute about trademark infringement which ultimately evolved into a dispute about whether the defendant had violated a settlement agreement which resolved an earlier case between the parties.

That settlement agreement—like literally every other one I've ever seen—contained a confidentiality provision. The issue that arose is that, in …

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It's The Fi-Nal Judgment (da da da daaa daaa)

Nathan R. Hoeschen, March 20, 2025
Final Judgment

Some among you will appreciate this joke. Others, baffled.
Some among you will appreciate this joke. Others, baffled. AI-Generated, displayed with permission

Judge Andrews had a fun opinion yesterday on an issue that does not come up very much at all.

The plaintiff in Pioneer Hi-Bred Int'l Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA (D. Del. Mar. 19, 2025) dropped their infringement claims after claim construction. Rather than dismissing the case, they moved for partial summary judgment and asked Judge Andrews to enter final judgment so that they could appeal the otherwise dispositive Markman order.

The defendant, however, wanted to proceed to an invalidity trial, and thus opposed the entry of a final judgment. Judge Andrews declined to enter final judgment, noting that allowing appeal …

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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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The Very Worst of the Worst

Nathan R. Hoeschen, March 4, 2025
101

OOOF!
OOOF! Zachary Kadolph, Unsplash

As I was reading through Judge Andrews' opinion in Election Systems & Software, LLC v. Smartmatic USA Corporation, C.A. No. 18-1259-RGA (D. Del. Feb. 28 , 2025)—a fairly standard opinion denying a motion for attorney's fees—I noticed an interesting callout:

It is within my discretion to find a case exceptional on the grounds of a plaintiff's meritless section 101 argument so as to "deter similarly weak arguments in the future."On the rare (and I believe only) occasion that I have done so, however, the patent asserted was obviously unpatentable. See Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *l (D. Del. Mar. 18, 2019) ("I have rarely been more confident …
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Unlike in the Eastern District of Texas, Delaware Scheduling Orders Avoid Potential Rule 11 Pitfalls at the Pleadings Stage

Emily S. DiBenedetto, Feb. 19, 2025
Scheduling Order Sanctions

Parade of Horribles.jpg
The Looming Parade of Horribles, AI-Generated, displayed with permission

I’m partial to percussion and noticed that there was a gaping hole of staccato in the rising swell of the IPDE music videos, subtle though it may have been in the background of Andrew's singing and Nate’s interpretive dance performances. Leaving the snare drum at home, today I chime in only with the lonely voice of a wistful triangle to supplement this week’s stories with a tale from a faraway land—the Eastern District of Texas.

Why do we in Delaware care about this opinion? It gave me a fresh appreciation for the orderly composition of Delaware scheduling orders. It involved a problem that cannot arise in a District of Delaware …

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Injunction Junction

Nathan R. Hoeschen, Feb. 13, 2025
Preliminary Injunction ANDA

I hope some of you saw the musical video Andrew posted yesterday before it was taken down in a copyright strike by the Prince Estate due to his eerily pitch perfect parody. The costumes alone were worth the price of admission.

Honestly the photo doesn't do it justice
Honestly the photo doesn't do it justice AI-Generated, displayed with permission

Hopefully tomorrow's video—Injunction Junction—fairs better.

Mallinkrodt Pharms. Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA (D. Del. Feb 12, 2025). presented an interesting twist on the tried and true preliminary injunction formula.

The likelihood of success analysis was pretty standard (although it touched on one of my favorite issues—drug interaction). Ditto for irreparable harm, with the Court finding allegations of lost sales and …

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Court Declines to Enforce Discovery Agreement, Suggests Client Overruled Its Outside Attorneys

Andrew E. Russell, Dec. 9, 2024
Discovery Discovery Agreement

Burning Paper Boat
Amin Moshrefi, Unsplash

Discovery agreements are a powerful tool. If you promise to produce to do or not do something during discovery, the Court will typically enforce that:

Litigating parties, represented by able patent counsel, are expected to uphold the agreements they make during a case, and the Court should ordinarily (absent extreme circumstances not present there) enforce such agreements.

The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057-CJB, D.I. 177 (D. Del. Mar. 8, 2024).

What are the kind of "extreme circumstances" that warrant not enforcing a discovery agreement? We got a hint of that last week in In re: Entresto (Sacubitril/Valsartan) Patent Litigation, C.A. No. 20-2930-RGA, D.I. 1683 (Dec. 5, 2024). …

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