A Blog About Intellectual Property Litigation and the District of Delaware


This Whole Thing Is A Sham

Nathan R. Hoeschen, May 13, 2025
Sham Litigation

Sham litigation is a doctrine that I believe lives on largely because it's fun to say. Lawyers like nothing better than to stand up in court and point out that the whole case is a sham, a phony, a baseless hullabaloo.

Classic hullabaloo
Classic hullabaloo AI-Generated, displayed with permission

Of course, the other side would rather their claims not be constantly accompanied by the word sham, and thus motions to dismiss are fairly common. Visiting Judge Murphy gave us an interesting opinion on the sham litigation doctrine today in Corteva Agriscience LLC v. Inari Agriculture, Inc., C.A. No. 23-1059 (D. Del. May 13, 2025).

The defendant, Inari, had brought a host of counterclaims alleging the usual mess of equitable …

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Federal Circuit Affirms D. Del. Jury's Invalidation of Two Patents—And Restricts Scope of IPR Estoppel

Andrew E. Russell, May 12, 2025
IPR Estoppel

No Stopping
Ben Tofan, Unsplash

As most of our readers likely know, IPR estoppel means that an accused infringer who brought an IPR cannot claim invalidity at trial on a grounds it reasonably could have raised during the IPR. But what constitutes a "grounds" for invalidity has varied across different District Court judges.

Everyone agrees that, as the statute says, the PTAB cannot address system or product prior art under the on-sale bar, but can potentially address publications describing those products. There has long been a split of precedent on whether an accused infringer covered by IPR estoppel can argue invalidity based on a prior art product, where the documentation describing the production could have been asserted in the IPR …

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More Reassignments to Visiting Judges

Andrew E. Russell, May 9, 2025
Visiting Judges Congestion

Ping Pong
Jure Zakotnik, Unsplash

We had some indications last fall that referrals to visiting judges may be slowing—but six months on, it's clear that they are still ongoing. This week, we saw 11 cases reassigned to visiting Judge Campbell Barker of the Eastern District of Texas. That prompted me to take a look at recent referrals in patent cases, and here is what I saw for this year:

  • May 6, 2025: 11 reassignments to visiting Judge Campbell Barker, E.D. Tx.
  • April 8, 2025: 11 reassignments to visiting Judge Choe-Groves, United States Court of International Trade
  • March 11, 2025: 9 reassignments to visiting Judge John F. Murphy, E.D. Pa.
  • February 12, 2025: 7 reassignments to visiting Judge Joshua D. Wolson, E.D. …
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Leave It To The Experts

Nathan R. Hoeschen, May 8, 2025
Contention Interrogatories

As we've covered exhaustively, Delaware favors the use of contention interrogatories. As discovery requests go, these are often some of the more burdensome ones to deal with, and so the responding party will frequently respond with all manner of possible objections.

One response that I see from time to time is that a contention topic seeks information that is really the subject of an expert report, and thus that no response is necessary until the reports are due.

This is where expert reports come from
This is where expert reports come from AI-Generated, displayed with permission

This was exactly the approach that the defendant took last week in Astellas Pharma Inc. et al v. Sandoz Inc., C.A. No. 20-1589-JFB-EGT, D.I. 779 (D. Del. May 6, …

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Judge Williams Updates Scheduling Order with a Minor Tweak

Andrew E. Russell, May 7, 2025
Scheduling Orders Scheduling Order

Watcha got there? New ADR provision?
Watcha got there? New ADR provision? Zdeněk Macháček, Unsplash

It's always a good idea to keep up to speed on the judges' form scheduling orders. In their form orders, the judges set forth their preferences, and when those orders are entered in a case, they can override some of the local rules.

In the past, when the judges have updated their form scheduling orders, they have occasionally ordered that the updates to apply to pending cases. Sometimes, even absent such an order, counsel have been eager to apply the new procedures on their own.

(The last such change I recall was when judges started switching over to Judge Andrews' method of claim construction briefing, where the parties serve back-and-forth …

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Secrets, Secrets Are Sooooo Fun!

Nathan R. Hoeschen, May 6, 2025
Standing Trade Secret Misappropriation

AI-Generated, displayed with permission

Earlier this week, Judge Burke unsealed an opinion on what appears to be an issue of first impression for the district.

Biohaven Therapeutics LTD v. Avilar Therapeutics, Inc., C.A. No. 23-328-JLH-CJB (D. Del. Apr. 10, 2025) (R&R) is a trade secret case where the plaintiffs alleged that the defendants ... stole ... their trade ... secrets. The issue was that one of the plaintiffs, Biohaven, only had a non-exclusive license to the alleged trade secrets and thus defendant argued that they lacked standing to assert them.

Unlike in patent law, where dense treatises have been written about which types of license confer standing, the question of whether a bare non-exclusive license …

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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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A Bit of an Oops

Nathan R. Hoeschen, May 1, 2025
Oops wrong dec

As the wise man said, pobody's nerfect. Although it may be hard to fathom, even I dear, reader have made a typo once or twice. I recall clearly the last time, it was autumn of 2003 . . .

(Eds. Note -- he goes on like this for a while, so I cut it out. his actual last typo was in this blog on Tuesday.)

Pictured: the author
Pictured: the author AI-Generated, displayed with permission

Even in the law this is usually no big deal -- you realize you submitted the wrong exhibit Q, or you forgot the signature line, or whatever, and as long as you catch it early it tends to be fixable with a call to opposing counsel and the …

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Be Careful What You Wish For

Andrew E. Russell, April 30, 2025
O2 Micro Claim Construction

Just doing some claim construction
AI-Generated, displayed with permission

This post falls in a category we could broadly refer to as "ouch, that hurts." Maybe we can all learn from times when things go wrong.

In Alnylam Pharma., Inc. v. Pfizer, Inc., C.A. No. 22-336-CFC (D. Del.), the plaintiff asked—as plaintiffs often do—for a "plain and ordinary meaning" construction of a key term in all asserted claims, "cationic lipid," and spelled out that plain meaning in general terms. Id., D.I. 63. The defendants proposed a much longer and more specific construction. Id.

At claim construction, the Court mostly adopted plaintiff's proposed construction, holding that a "cationic lipid" is a lipid that, under its plain and ordinary meaning, is …

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Some Real Spy Stuff

Nathan R. Hoeschen, April 29, 2025
Sanctions

I've been a Delaware lawyer for a while now, but today is the first time I've seen a case where a party submitted video evidence of a deponent acting suspicious.

Pictured: The deponent, probably
Pictured: The deponent, probably Sergiu Nista, Unsplash

I gather from the briefing that the case was already quite contentious, as the plaintiff in Inpria Corporation v. Lam Research Corporation, C.A. No. 22-1359-CJB, D.I 506 (D. Del. Apr. 28, 2025) had requested a deposition "focused solely on document creation, retention and storage." Id. at D.I. 293. According to the briefing, the deponent "referenced another screen, positioned to his left, after questions were asked but before providing an answer," but when asked about what was on the screen, he testified …

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