A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

Limits of Lanham

Nathan R. Hoeschen, Aug. 19, 2025
Supplemental Jurisdiction Preclusion

Judge Burke unsealed an interesting opinion last week on the applicability of Lanham act claims to pharmaceuticals.

Sharon McCutcheon, Unsplash

In Vanda Pharms., Inc. v. MSN Pharms., Inc., C.A. No. 24-505-JLH (D. Del. July 31, 2025), the Plaintiff accused various generic drug manufacturers of violating the Lanham by allegedly making false statements in their label and advertisements. In particular, Plaintiff alleged that the Defendants described Plaintiff's product "Hetlioz" as the brand reference for their generic products when "the reference product used in Defendants’ Bioequivalence Study was not actually Hetlioz, or because that study was so flawed that it undermines any assertion that Defendants’ product is bioequivalent to Hetlioz." Id. at 14 (quoting complaint).

The issue was …

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Court Sends Parties Back to the Drawing Board After Insufficient Markman Process That "Waste[d] Judicial Resources"

Andrew E. Russell, Aug. 18, 2025
Markman Briefing Markman

Confusing
AI-Generated, displayed with permission

Judge Burke issued an oral order on Thursday in OmniVision Technologies, Inc. v. RE Secured Networks, LLC, C.A. No. 24-187-JLH-CJB (D. Del.) expressing frustration due to the parties' inadequate claim construction briefing, and the resulting "inefficient" Markman hearing.

The parties submitted their joint claim chart back in March, identifying seven groups of terms. For three of the seven groups, the patentee offered positions like "Needs no construction" or "Not indefinite." D.I. 78-1 at 2-6. Some of these term groups were a bit odd (including, for example, a group called "preambles," which addressed three separate preambles across six claims spanning three patents). Counted separately, the parties sought to construe more than the 10 terms …

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A Patent Invalidity Decision Worth Reading

Andrew E. Russell, July 25, 2025
Single Means FRCP 12(c)

An embodiment of the lens at issue—yes, this is a single claim
An embodiment of the lens at issue—yes, this is a single claim "element" U.S. Pat. No. 6,844,990

Judge Burke issued a fascinating invalidity decision yesterday in Immervision, Inc. v. Apple, Inc., C.A. No. 21-1484-MN-CJB (D. Del.). It addresses an invalidity issue I had honestly never seen litigated—a "'single means' claim"—and, along the way, it addresses what a claim "element" is and when the "clear and convincing" standard applies to invalidity.

Basically, the whole thing is a page-turner for someone who deals with these issues, and well worth reading. I'll outline some of the most interesting points below.

"Single Means" Invalidity Is a Thing

The invention at issue is an optical lens. The opinion involves an independent claim …

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Judge Burke Errs on the Side of Admissibility for "Close Call" Daubert Motion

Andrew E. Russell, June 20, 2025
Damages Apportionment

Even though Daubert is
Even though Daubert is "not that high" of a bar, some experts still fail to clear it. National Library of Scotland, Unsplash

I always find that it can be helpful to see how judges rule on things, even if the rulings are kind of fact-specific, because it can still give you a sense of how they will rule on other things. (Thus, we have a blog.)

In Attentive Mobile Inc. v. Stodge, Inc., d/b/a Postscript, C.A. No. 23-87-CJB (D. Del. Jun. 12, 2025), Judge Burke addressed a Daubert motion to preclude a damages opinion that included revenue from non-infringing functionality in its royalty base, on the basis that it failed to apportion damages.

The patentee argued …

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Discovery on Discovery

Nathan R. Hoeschen, May 29, 2025
Discovery Dispute Discovery on Discovery

Disco on disco, baby
Disco on disco, baby AI-Generated, displayed with permission

Discovery on discovery -- i.e., discovery asking how you're collecting documents, or when you started your litigation hold, or why all your documents smell like bubblegum -- is generally not allowed in Delaware (and most other districts I'm aware of). To get that sweet, sweet, disco on disco, you need to make a "threshold showing that significant, relevant, and non-cumulative information has been withheld or overlooked." British Telcoms. PLC v. IAC/Interactivecorp,. C.A. No. 18-366-WCB, 2020 U.S. Dist. LEXIS 37271, at *21 (D. Del. Mar. 4, 2020). This is a pretty big ask in the context of a discovery dispute, so we only rarely see the issue come up.

But …

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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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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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Delay Is a Motion Killer: Part Three

Andrew E. Russell, April 3, 2025
Hague Letters Rogatory

Courthouse Clock
AI-Generated, displayed with permission

We've written before about how delay can kill your discovery motions. We got another straightforward example on Monday in Novartis Pharmaceuticals Corporation v. HEC Pharm Co., Ltd., C.A. No. 20-133, D.I. 340 (D. Del. Mar 31, 2025).

There, the defendants sought depositions of two foreign inventors through the Hague convention. The defendants have known the relevance of the inventors' knowledge since at least July, 2022, but only moved for issuance of letters rogatory in December 2024.

The case was stayed for a portion of that time, but in total, the Court found that there was no good reason that it should have taken so long to seek this discovery:

During the teleconference, Defendants' …
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Your Biennial Reminder That the Reverse Doctrine of Equivalents and Ensnarement Exist (Plus Some Guidance from the Court)

Andrew E. Russell, Feb. 14, 2025
Reverse DOE Ensnarement

Fish Traps
Chris J Walker, Unsplash

We first posted a reminder that reverse DOE and ensnarement exist back in 2021, and then again in 2023. But here, now, in 2025, we just got some nice guidance from the Court about ensnarement, and it seems like a great time to put out another reminder.

What Are They?

The Reverse Doctrine of Equivalents deals with a situation where the accused product literally reads on the claims, but is not actually doing what the patent is meant to cover. As we noted last time:

The [reverse doctrine of equivalents] rescues from infringement devices that literally satisfy the elements of a claim but perform the same function of the invention in a …
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Sanction Sanctuary

Nathan R. Hoeschen, Feb. 11, 2025
Musical Theater Sanctions

I am pleased to announce that, starting with Andrew's next post, we will be pivoting to a new format. No longer will we be analyzing the developments in IP law with mere written words. Instead, we will be creating Schoolhouse Rock style musical videos. Andrew's surprisingly moving singing voice will be accompanied by my own interpretive dance—leading you through the intricacies of the days' cases like a bee describing the way to honey.

This is perhaps my favorite picture I've used on the blog
This is perhaps my favorite picture I've used on the blog AI-Generated, displayed with permission

The subject of today's post, CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-CFC-CJB, D.I. 413 (D. Del. Feb. 7, 2025) will also be the subject of our first song, "Sanction Sanctuary."

The title comes from the plaintiff's motion for sanctions -- unusual in the district outside of the Pennypack context. The issue there was that the defendant had produced almost all of its documents after the substantial completion deadline, resulting in extra work for the plaintiff, who sought fees as compensation. The defendant argued that the late production was not sanctionable because it was caused in large part by an error in their document collection that had initially missed all documents before 2018.

Judge Burke ...

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