My feeling (informed, but not rigorously researched until a post later this week), is that enablement is slowly overtaking 101 as the vehicle of choice to attack the overreaching patent.
Those of a certain age might recall the Animaniacs. It was an absurdist cartoon with a lot of bits, many referencing the likes of George Burns, Marlon Brando, and other popular public figures from 30 years prior that meant absolutely nothing to 10-year-old me.
And then he puts an orange slice in his mouth and chases the kid around the laundry until he dies! It's amazing!AI-Generated, displayed with permission
One of the bits was "good idea, bad idea," the basic premise of which is right there in the name. I thought it would be fun to revive it for this post on an especially doomed motion before Judge Connolly. Because, while there is much to be learned from the man who climbed Everest, the lesson is often more easily grasped from those unfortunate souls who line the path.
In that vein, I present the lessons that I have gleaned from last Monday's decision in Drake v. General Electric Co., C.A. No. 24-281-CFC (D. Del. Mar. 10, 2025).
Good Idea - Attaching Factual Support for Your Motion
As we've covered in the past, one of the best strategies for a discovery dispute—or any motion—is creating a detailed factual record on, for instance, the actual costs of complying with some request, the difficulty of access some set of documents, or the high cost of vendors. One can find innumerable examples of the Court noting that the losing side of the dispute had presented no more than "attorney argument." At least Judge Burke explicitly encourages the parties to attach affidavits or declarations to their discovery dispute submissions.
Bad Idea - Attaching Your Secretly Recorded Phone Calls
Today, Chief Judge Connolly issued a memorandum order in Stirista, LLC v. Skydeo Inc., C.A. No. 23-856-CFC denying a Daubert motion in part because it sought to strike the expert's expert report rather than excluding his testimony.
The Court actually agreed that the expert's testimonyought to be excluded under Rule 702—if only the moving party had filed a better motion:
In its briefing filed in support of the motion, Stirista argues that "Mr. Kelleher's opinions and conclusions related to market confusion should be excluded [under Rule 702] as unqualified, unreliable, and unhelpful to a trier of fact." . . . Having read the parties' briefing on this question, I'm inclined to agree with Stirista. …
Our millions of daily readers will remember Andrew's post from last month on Judge Connolly's Order in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.). As a brief refresher, Vestolit had filed a 1782 application seeking to serve subpoenas on both Shell and its CEO. The papers, however, only mentioned subpoenas to be served on the corporation and referred to the individual subpoena only obliquely as attachments to the filing.
Bad attachmentAI-Generated, displayed with permission
Judge Connolly noted that this failure to specifically reference the personal subpoena may have been a violation of the lawyers' duty of candor and thus issued an order to show cause why they should not be sanctioned, and denied the application in its entirety pending the response.
Yesterday Judge Connolly issued his order on the sanctions issue and the underlying application. Probably most interesting to you, reader, is that the Court found that there had been no violation of the Rules of Professional Conduct:
I accept counsel's apologies for the Application's deficiencies, am persuaded that counsel did not intentionally withhold from the Court material facts in violation of Rule 3.3(d), and will, therefore, not deny the Application in toto.
Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del. Mar. 4, 2025).
The Court did, however, find that the problems with the original application were serious enough to warrant denying the application to serve the individual subpoena on the CEO:
[E]ven if this Court could have personal jurisdiction over Ms. Kline consistent with due process, I would exercise my discretion and deny the Application's request to subpoena Ms. Kline because of the seriousness of the deficiencies in the Application and supporting briefing I identified in the January 14, 2025 Memorandum Order. . . . Although, as noted above, I am persuaded that counsel did not intentionally withhold material information from the Application and briefing, to countenance such deficiencies by simply ignoring them would send the wrong message to counsel in this case and to the bar. Lawyers' professional obligations are at their highest when they seek ex parte relief, and judges, especially in busy courts like this one, necessarily rely not only on counsel's honesty, but also on their diligence, in ex parte matters.
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, …
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 …
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 …
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 …
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 …
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.
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