A Blog About Intellectual Property Litigation and the District of Delaware


CFC
The Honorable Colm F. Connolly

Court Orders Each of Seven Attorneys Involved in § 1782 Application to Show Cause for Why They Have Not Violated the Rules of Professional Conduct

Andrew E. Russell, Feb. 3, 2025
Model Rules of Professional Conduct § 1782

Lego
Jackson Simmer, Unsplash

We were a bit slow on the draw on this one. You may have already read about it in Law360. But it's significant enough that I think we should post about it anyway.

Last month, in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.), two applicants filed a 28 U.S.C. § 1782 application seeking leave to serve subpoenas on a company in the United States to get discovery related to a foreign proceeding.

The application itself referred only to subpoenas against the company, but the proposed order incorporated a subpoena against an individual, who was not mentioned in the application itself.

The Court rejected the application, at least initially, …

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Court Grants Rule 12(c) Judgment on the Pleadings of No Contributory Infringement

Andrew E. Russell, Jan. 13, 2025
FRCP 12(c) Motion for Judgment on the Pleadings

Pills
HalGatewood.com, Unsplash

Defendants are always on the lookout for ways resolve patent cases (and other cases) early. One potential avenue is an FRCP 12(c) motion for judgment on the pleadings—but it only works in uncommon circumstance that the pleadings themselves show a lack of infringement or validity.

It's an uncommon circumstance—but not unheard of. Last week, the Court granted an FRCP 12(c) motion of no contributory infringement in Boehringer Ingelheim Pharma. Inc. v. Apotex Inc., C.A. No. 23-685-CFC (D. Del.), after a plaintiff's own complaint showed a lack of infringement.

Boehringer is an ANDA action. The patent claims a drug used to treat a disease in patients who—critically—are ineligible to receive a second drug. The label …

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Ruling on Post-Trial Motions Shows What Not to Do

Andrew E. Russell, Jan. 6, 2025
Trial Trial Practice

Snow day!
Snow day! Hide Obara, Unsplash

We're back! Just in time to be snowed in—the Court is closed today due to inclement weather.

While we were out last week, Chief Judge Connolly issued an interesting opinion on post-trial motions in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38-CJB (D. Del.).

That case went to trial in January 2024, with plaintiff Natera winning a $96 million verdict on the first of two patents, but receiving a verdict of no infringement of the second patent. The Court's opinion addresses their motion for JMOL of infringement on the second patent.

Did a Poorly Phrased Question Doom JMOL of Infringement?

The arguments turned on a single claim limitation. The Court found …

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If You Want to Preserve Your Arguments for Trial, Put Them In the Pretrial Order

Andrew E. Russell, Nov. 6, 2024
Trial Pretrial Order

Danger
Micaela Parente, Unsplash

This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.

That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.

We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted their obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules …

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Motions In Limine ≠ Second-Chance Summary Judgment Motions

Andrew E. Russell, Sept. 23, 2024
MILs Motions In Limine

Apples and oranges
Gowtham AGM, Unsplash

The Court has held in the past that motions in limine cannot be used to bring stealth summary judgment or Daubert motions after the deadlines for those motions (we first posted about this issue over four years ago—wow).

Last week, this issue came up again, this time with a party overtly asking the Court for two additional MILs, beyond the default three, specifically to address summary judgment issues. Unsurprisingly, the Court did not grant the motion:

Defendants seek . . . permission to file two motions in limine beyond the three motions in limine permitted by the Scheduling Order. . . . In Defendants' words: "Two requests will seek to exclude certain exhibits and testimony …
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Mavexar Hearings: Court Orders Attorney Representing Stay-at-Home Mom's NPE to Preserve All of His Computers In Their Present State for Third-Party Investigation

Andrew E. Russell, Sept. 19, 2024
Mavexar

AI refuses to draw a judge without an old-school judicial wig. This is the best I could do.
AI refuses to draw a judge without an old-school judicial wig. This is the best I could do. AI-Generated, displayed with permission

Chief Judge Connolly held a second Mavexar-related hearing yesterday, this time in Swirlate IP LLC v. Quantela, Inc., C.A. No. 22-235-CFC (D. Del.). This was after the one in the Backertop action that we just posted about.

Chief Judge Connolly questioned both the out-of-town attorney who represented Swirlate as lead counsel in the action, and the sole member of the Swirlate NPE

The Court addressed several topics with the attorney, including:

  • Gaps and redactions in the court-ordered document production, which was supposed to include communications with his client.
  • Swirlate (the NPE) and its …
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Use This One Simple Trick to Not Get Your Summary Judgment Motion Instantly Denied

Andrew E. Russell, Sept. 10, 2024
Concise Statement of Facts Summary Judgment

Just imagine the bird is a summary judgment motion.
Just imagine the bird is a summary judgment motion. AI-Generated, displayed with permission

Our blog readership remains pretty high these days, and we continue to grow subscribers. But not all District of Delaware attorneys follow the blog—yet.

That may be why, even though we've talked about these at length, parties continue to file separate "concise statements of material fact" in support of their summary judgment motions that list non-material facts and do not include pinpoint citations—potentially resulting in denial of their motion.

Here are some guidelines for when you are putting together a concise statement of material facts in support of an SJ motion:

  • Include only the material facts. If you could still win your motion if a fact …
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Chief Judge Connolly Orders Mavexar-Related Witness to Appear, Pay $53k Fine

Andrew E. Russell, Aug. 23, 2024
Mavexar Remote Testimony

Mavexar is depicted herein as a crab, per our policy
Mavexar is depicted herein as a crab, per our policy Vincent van Zalinge, Unsplash

Last month, we wrote about the Mavexar-related witness who spent about $44,400 and counting just to avoid a trip to Delaware. Our post was prompted by the Federal Circuit affirming Judge Connolly's order imposing sanctions for her failure to appear in-person (even though, oddly, she agreed to appear remotely) for questioning by the Court related to potential misbehavior by her LLC, its attorneys, and Mavexar/IP Edge.

Well, yesterday the Court set a new hearing date, once again ordering the witness to appear for an in-person examination by the Court:

At Wilmington on this Twenty-third day of August in 2024, having received the Federal …
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Can a COVID "Vaccine" Patent Cover Something That's Not a "Vaccine"? Chief Judge Connolly Hopes Federal Circuit Will "Jettison Its Rulings" on Preamble Construction

Andrew E. Russell, Aug. 9, 2024
Claim Construction

Alice in Wonderland
AI-Generated, displayed with permission

Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.

The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:

What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
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Chief Judge Connolly Denies SJ Motion for Good After Party Twice Fails to File Concise Statement of Facts

Andrew E. Russell, July 26, 2024
Concise Statement of Facts

Critical Error
AI-Generated, displayed with permission

At this point, several of our judges here require parties seeking summary judgment to file a separate concise statement of materials facts. Parties often seem to stumble over this requirement and, as we've discussed before, doing it wrong can be a great way to get your summary judgment motion denied.

In The Estate of Edward Bovee v. Corporal Sam Wilks, C.A. No. 23-192-CFC (D. Del.), the parties' agreed-upon scheduling order included Chief Judge Connolly's normal language requiring concise statements:

Any motion for summary judgment shall be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be …
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