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At Least It's Over Now

Nathan R. Hoeschen, April 22, 2025
Enablement

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.

Preemption is no longer the watchword it once was in 101 jurisprudence (Impact Engine actually filed a petition for cert a couple months back asking "Whether the lodestar for determining patent eligibility under this Court’s two-step framework is whether the patent claims preempt basic technological or scientific building blocks").

Oh preemption, my guiding light. Lead me on the 101 inquiry.
Oh preemption, my guiding light. Lead me on the 101 inquiry. Casey Horner, Unsplash

At the same time, enablement is on a bit of an upswing following the Supreme Court's decision in Amgen Inc. v. Sanofi, 598 …

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Tips for District of Delaware Cases Involving Pro Se Litigants

Andrew E. Russell, April 21, 2025
Pro Se Federal Rules of Civil Procedure

Pro Se Litigant
AI-Generated, displayed with permission

It's relatively uncommon to see IP cases involving pro se litigants, given that corporations cannot appear pro se—but it does happen, such as when an inventor ends up being a party in a patent case.

If you find yourself as an attorney in a case involving a pro se party, it's worth remembering that a number of the District of Delaware rules include specific provisions for cases involving pro se litigants. Here are some examples.

Rule 5.2: Service

The first one is easy. Local Rule 5.2 says that, in cases involving parties that are not participants in the Court's electronic filing system (including pro se parties), you must file a certificate of service. This is …

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Another Day, Another Damages Daubert

Andrew E. Russell, April 11, 2025
Damages Daubert

"In my expert opinion, the patents are really valuable. The plaintiff told me so!" AI-Generated, displayed with permission

Exclusion of damages opinions are a frequent topic for our blog. Daubert motions to exclude expert opinions tend to have a higher success rate than other types of Daubert motions, and it's worthwhile to have a good understanding of where the pitfalls lie, whether you are helping an expert draft a damages opinion or considering challenging one.

Yesterday, the Court granted a Daubert motion to exclude a damages opinion in a patent case. The expert relied on prior licenses to other patents from the same inventor to support his reasonable royalty opinion for the patents-in-suit. That requires showing that the prior …

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Judge Williams Rejects Challenge to Court's SJ Ranking Procedures, Notes Counsel's "Flagrant Typos and Inconsistent Formatting"

Andrew E. Russell, April 7, 2025
Summary Judgment Congestion

Attorney tilting at windmill
AI-Generated, displayed with permission

Back in 2021, Chief Judge Connolly instituted a new ranking procedure for summary judgment motions in his cases, in which parties rank their SJ motions and, if the top-ranked motion is denied, all lower-ranked motions are denied as well. The Court later expanded that procedure to encompass Daubert motions as well. Judge Williams has adopted it (for SJ motions only), and Judge Noreika has experimented with it—although at least one other judge has declined to adopt it.

To put the procedures in context, judges on the Court have long applied various measures to control the workload generated by summary judgment motions. Former Chief Judge Sleet, for example, required parties to request leave before filing summary judgment …

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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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Don't Act Like You Wouldn't Do It

Nathan R. Hoeschen, April 1, 2025
Pizza Motions In Limine

I will speak a truth that many of you have suspected. Sometimes we (well, I) pick a case just because it has a fun name. My original post today was about HQ Specialty Pharma Corp. v. Fresenius Kabi USA, LLC, C.A. No. 21-1714-MN. Honestly the case was too fact intensive to easily convert to a general interest blog post. On the other hand, it contained a great deal of discussion of the testimony of a New Jersey Pharmaceutical executive named Mr. Pizza.

"I'm cooked!" AI-Generated, displayed with permission

The whole thing ended up being just jokes and out of context slices ("Mr. Kelly . . . doubted whether Mr. Pizza 'had any knowledge of the [prior art] references'") …

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But I Thought I Could Do the Bare Minimum!

Lindsey M. Gellar, March 31, 2025
FRCP 8 Affirmative Defenses

Me, emerging to make my IP/DE debut.
Me, emerging to make my IP/DE debut. Bankim Desai, Unsplash

My name is Lindsey Gellar, and I am an associate at Shaw Keller, posting for the first time here. Yes, Andrew has finally managed to rope another lackey (associate) into writing for the blog. Today, I'm going to look at what it takes to plead equitable defenses in the District of Delaware.

When it comes to pleading most affirmative defenses, the bar is on the floor. An affirmative defense does not need to be plausible to survive; it must merely provide fair notice of the issue involved. Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR, 2012 U.S. Dist. LEXIS 126788, at *7 (D. Del. …

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New D. Del. Case Filings Up This Month?

Andrew E. Russell, March 28, 2025
Congestion DED

I'm not sure why the AI image generator made the judge so much bigger than the traffic they are directing, but it seems somehow appropriate.
I'm not sure why the AI image generator made the judge so much bigger than the traffic they are directing, but it seems somehow appropriate. AI-Generated, displayed with permission

I've noticed, and heard from others, that it seems like there were a lot of new case filings in the District of Delaware this month.

I was curious if that's true, so I did some unscientific research based on how many PACER new-case e-mails I've received. So far, for March 2025, I've seen 127 of these. That's more than any of the 16 prior months, only one of which broke 100. And it's quite a bit more than the 49 I received in January, or the 74 I received in February.

March of last year (2024) was busy as well, with 97 such e-mails. But, even if we get no more filings today or Monday, this year's number will top last year's by more than 30%.

Of course, not all cases are the same. A litigation campaign by an NPE against many defendants is very different from a true competitor patent litigation. From a quick review, the filings this month look like a mix of both. And these include a mix of various other civil filings, not just patent cases. So it's hard to say just how big of an increase in actual workload it may be.

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A Different Sort of Redaction Story

Nathan R. Hoeschen, March 27, 2025
Redactions

Jeff Castellano

The blog has many stories about the perils of over-redaction. Time and again the Court has chastised the parties for attempting to redact quotidian bits of agreements and correspondence, noting that the Court is not a "Star chamber."

Today's case, Inkit, Inc. v. Airslate, Inc., C.A. No. 23-793-RGA (D. Del. Mar. 26, 2025), shows that it's also possible to redact too little. The parties thereby had a long-running dispute about trademark infringement which ultimately evolved into a dispute about whether the defendant had violated a settlement agreement which resolved an earlier case between the parties.

That settlement agreement—like literally every other one I've ever seen—contained a confidentiality provision. The issue that arose is that, in …

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Reminder: If You Bring a Discovery Dispute, the Local Rules Require You to Recite or Attach the Discovery

Andrew E. Russell, March 26, 2025
Local Rules

Danger Landmines
AI-Generated, displayed with permission

Local Rule 37.1 seems to often be forgotten. It requires a party bringing a discovery motion (which would include a discovery dispute) to recite or attach the discovery request or responses they are moving about:

Any discovery motion filed pursuant to Fed. R. Civ. P. 26 through 37 shall include, in the motion itself or in a memorandum, a verbatim recitation of each interrogatory, request, answer, response, or objection which is the subject of the motion or shall have attached a copy of the actual discovery document which is the subject of the motion.

D. Del. LR 37.1. Judge Burke's Guidelines for Discovery Disputes include a very similar requirement (and a requirement for the opposing …

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