A Blog About Intellectual Property Litigation and the District of Delaware


SRF
The Honorable Sherry R. Fallon

Court Rejects Attempt to Evade Service of Process By (Allegedly) Not Opening the Door

Andrew E. Russell, June 18, 2025
Service of Process Multimedia Filing

We missed this when it came out, but Judge Fallon issued an opinion in March that addressed whether a defendant could evade service of process by, he claims, not opening the door when the process server tried to serve him.

In Pelham v. Vbit Techs. Corp., C.A. No. 23-162-JLH-SRF (D. Del.), a securities action, the plaintiff filed a Return of Service from their process server stating that they had served one of the defendants by personally delivering the complaint to the defendant at home—but the defendant disagreed:

On March 17, 2023, Plaintiffs filed a Return of Service, of the original summons and complaint. (D.I. 6) The affidavit of the process server states that on March 7, 2023, he personally served Jin Gao at his residence. . . . Subsequently, on April 5, 2023, Gao's counsel emailed Pelham's counsel, who filed the Return of Service, informing counsel that Gao was not personally served. . . . Gao's counsel did not receive a response from Pelham's counsel.

Id., D.I. 70 at 13.

The defendant submitted what he claimed was doorbell camera video to rebut the claim that he was served—but the Court did not consider that video, because ...

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Infringement By Any Other Name

Nathan R. Hoeschen, June 12, 2025
Preemption

Federal Courts is one of those classes that everyone has a tumultuous relationship with. My own professor on the subject continues to vex me by running a rival legal blog. Like Boat News before them, they shall be long forgotten to history whilst IP/DE reigns ascendant. Their name spoken only by those frightened few who stumbled upon their dark and damp remains.

Perhaps they can still pivot to video
Perhaps they can still pivot to video NOAA, Unsplash

In any event, while issues of federalism, preemption, and the like do not often rear their heads in my practice, they often spawn an interesting opinion when they do. Case in point, Judge Fallon's opinion in Convatec, Inc. v. HR Pharms., Inc., C.A. No. 24-1248-RGA-SRF (D. Del …

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Court Holds That No, You Can't Just Recycle an Expert Opinion from a Prior Case

Andrew E. Russell, May 28, 2025
Expert Witness Expert Discovery

Recycle Bin
Sigmund, Unsplash

We missed an interesting decision from Judge Fallon last month. In Marquinez et al v. Dole Food Company Inc., C.A. No. 12-695-RGA-SRF, D.I. 582 (D. Del. Apr. 24, 2025), Judge Fallon rejected an attempt to "recycle" an expert opinion from a prior, related action.

Apparently the plaintiff had previously retained the experts, and attempted to re-use their prior expert opinions, by admitting the transcript of their prior testimony:

The Hendler Declaration confirms that both witnesses were formally retained as expert witnesses in a prior litigation, they served expert reports in the prior litigation, and both were asked but declined to serve as retained expert witnesses in this case. (D.I. 580 at ¶¶ 9-13) Plaintiffs …
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Judge Fallon Holds That a Narrative Description of a Reference Can Be Sufficient Disclosure—Even Absent a Claim Chart

Andrew E. Russell, May 14, 2025
Pennypack Invalidity Contentions

This is not the level of disclosure at issue here.
This is not the level of disclosure at issue here. AI-Generated, displayed with permission

Most readers who are patent litigators will know this already, but a "claim chart" is a table with two columns. The column on the left lists claim elements, and and the column on the right lists the portions of something—typically a product, system, or disclosure—that meets the elements on the right.

The chart shows the reader how the thing (whatever it may be) meets the elements of a claim or claims.

Detailed claim charts sometimes include figures with arrows pointing to the relevant claim elements, quotes of relevant text (if applicable), and/or a narrative description of how the cited material meets the element.

Of course, one …

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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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Is the Law on Contention Interrogatory Responses Evolving? Judges OK Deferring Contention Interrogatory Response Until After Claim Construction Ruling, or Even After Expert Reports

Andrew E. Russell, Feb. 7, 2025
Contention Interrogatories

Zig Zag
Jack Finnigan, Unsplash

Contention interrogatory responses are a frequent topic of dispute. In theory, using damages as an example, the way it works is this:

  1. Defendant, who does not have the burden, sends a contention interrogatory.
  2. Plaintiff provides contentions.
  3. Defendant takes discovery based on the contentions.
  4. Plaintiff provides expert reports that fairly elaborate on the contentions.
  5. Defendant responds using the discovery it took based on the contentions.
  6. Plaintiff offers expert testimony at trial that is a fair elaboration on their reports.
  7. Defendant moves to strike any testimony that goes beyond the reports.

The process can get hung up on step 2, however, because parties may try to short-circuit the process and avoid giving away or getting nailed down on …

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You Can't Withhold Discovery—Including Source Code—Pending a Rule 12 Motion in D. Del.

Andrew E. Russell, Dec. 6, 2024
Source Code FRCP 12

This train don't stop until the close of fact discovery (... unless the Court stops it)
This train don't stop until the close of fact discovery (... unless the Court stops it) Jed Dela Cruz, Unsplash

The Court issued an oral order in airSlate, Inc. v. Inkit, Inc., C.A. No. 23-1307-RGA-SRF (D. Del.) yesterday, and it's a good reminder of a general rule that frequent D. Del. practitioners already know: once discovery starts, it generally proceeds even while a Rule 12 motion is pending.

The Court's order yesterday described how the defendant in airSlate had objected to producing its source code solely on the basis that a Rule 12 motion for judgment on the pleadings was pending:

Defendant agreed to produce source code in its response to Request for Production …
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Court Denies Stay Pending Instituted IPR

Andrew E. Russell, Nov. 20, 2024

"Loco-Crazy Good Cookers, Inc." wins IP/DE's 2024 Best Company Name Ever award. AI-Generated, displayed with permission

Parties sometimes think that a stay pending an instituted IPR is almost a given. But while a stay is more likely than not, it's not a sure thing.

Last month we saw a even a stipulated stay pending IPR denied by visiting Judge Choe-Groves (in the time since, by the way, that denial has held firm, and the Court issued a scheduling order).

This week Judge Fallon denied a stay pending an instituted IPR in North Atlantic Imports, LLC v. Loco-Crazy Good Cookers, Inc., C.A. No. 23-999-GBW-SRF (D. Del. Nov. 19, 2024). The Court noted that there were non-patent claims …

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The Reporter's Word Is Law

Nathan R. Hoeschen, Nov. 14, 2024
Errata

Deposition errata is often the source of mild-moderate disagreements. It's not uncommon to see complaints that an errata is really just an attempt to reform otherwise damaging testimony, rather than a mere correction of a misheard word. Occasionally the issue will be large enough to warrant a discovery dispute.

Less common, but not unheard of, is a dispute over the accuracy of a transcript of a Court hearing. To begin, unlike in depositions, the Court reporter normally does not formally request errata except in the case of trials. You get what you get and anything after that is in something of a procedural gray area. To the extent the parties do have errata disputes, there is no clear route to …

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Patentee's Delay in Moving to Amend Infringement Contentions Costs Them the Opportunity to Add 40 Accused Products—Even Though Fact Discovery Has Not Ended

Andrew E. Russell, Nov. 1, 2024
Accused Products Stay Pending IPR

The apparent state of the patentee's case after the Court's decision.
The apparent state of the patentee's case after the Court's decision. Jason Mavrommatis, Unsplash

Before you get too excited, defendants, this case involved a scheduling order using Judge Connolly's form, which provides only a single round of infringement and invalidity contentions, and explicitly requires good cause to amend.

Most District of Delaware scheduling orders include two rounds of contentions (initial and final), with the second round typically coming around the close of fact discovery. It is unlikely to be as difficult to amend in cases like those.

Regardless, I thought this was an interesting result worthy of a post. In Cognipower LLC v. Fantasia Trading, LLC, C.A. No. 19-2293-JLH-SRF (D. Del.), the Court stayed the case …

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