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 …
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 …
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 …
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 justiceAI-Generated, displayed with permission
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 …
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). …
Judge Andrews issued an interesting opinion on opposing summary judgment motions yesterday in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 19-2216-RGA (D. Del.).
The parties settled a patent infringement suit years ago in a way that permitted the defendant to nonetheless launch its drug product if the patent claims were asserted against a third party and found invalid or not infringed.
Some of the claims were asserted against a third party and held invalid or not infringed, and the defendant launched. The plaintiff disagreed that this permitted launch. It sued the defendant for breach of contract and, critically, for patent infringement.
Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.
(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).
Once you finally cajole them our of the house, packed with leftovers and other bribes, it …
You don't have to depose the other parties' experts, and strategically, sometimes it can make sense not to. If you have a good sense that their report(s) are flawed and they may use the deposition to try to add key information to the record (regardless of your questions), it may make sense to avoid the deposition altogether.
That strategy is less common but certainly not unheard of—assuming trial counsel is confident in their positioning and ability to …
(Eds. Note -- I was cackling at this headline for quite a while)
I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to existAI-Generated, displayed with permission
We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.
Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.
The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.
Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:
In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.
Id. at 6 (internal citations omitted).
As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.
AI-generated depiction of Judge Andrews putting down zombie claims for good.AI-Generated, displayed with permission
Former Chief Judge Sleet used to frequently say that "there is no such thing as the law of the district." Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS, 2018 U.S. Dist. LEXIS 9544, at *8 n.3 (D. Del. Jan. 22, 2018) (cleaned up). In other words, one district court judge's ruling is not binding on another.
We saw that yesterday, when Judge Andrews held that claims dropped due to claim narrowing are dropped with prejudice, and recognized that another of our judges had previously held the opposite on similar facts.
In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA (D. …
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.
