One common question in D. Del. cases is whether or not the plaintiff or counterclaim plaintiff must bring its witnesses to Delaware for deposition.
You'd think this would be completely settled by this point, but it still seems to come up from time to time. This post collects some of the relevant authority (Ctrl-D or ⌘-D to bookmark) and talks about a new opinion on this from last week.
Plaintiffs Must Bring Their Witnesses Here for Deposition
Several cases have held that, by default, a plaintiff must bring its "witnesses" here to the District of Delaware for deposition:
The general rule with respect to the location of depositions is that the plaintiff must produce its …
This is a USB hub, not the kind of "hub" involved in the patent suit.Mac Care, Unsplash
In Aylo Freesites Ltd v. Dish Technologies LLC, C.A. No. 24-086-GBW (D. Del.), the plaintiff had originally brought a declaratory judgment claim in N.D. Cal., which was dismissed for lack of personal jurisdiction.
The accused infringer then filed suit here in Delaware. That same day, the patentee filed a complaint in the District of Utah, where it had also previously sued some related entities. Both of the D. Utah cases are stayed pending IPR.
The patentee then moved to transfer the DJ complaint from D. Del. to the District of Utah.
Just your typical light redactions, from a real case (but not this one).Public Filing
Last week in Voxtur Analytics Corp. v. Haldane, C.A. No. 25-742-GBW-SRF (D. Del.), the Court addressed a plaintiff's request to redact some information from the defendant's counterclaims.
It's hard to tell from the docket (most of the filings are still sealed), but it appears that the plaintiff was under an NDA with a third party regarding some information that may have been produced in the case. The defendant's counterclaims included that information.
The Court held that the fact that plaintiff was subject to an NDA, alone, was not sufficient to support a motion to seal:
Contentions are often contentious. The parties argue about how much detail is included, they argue about how to count references and accused products, they argue about what's actually disclosed and what's implied. My conservative estimate is that there are over 10 trillion opinions on contention topics issued every week in the district of Delaware.
Given the fact-specific nature of all these decisions, its often hard to draw bright line rules. Instead, you must engage in the tedious business of explaining why your contentions are really more like the ones in this case, and not at all like the ones in that case, because yadda, yadda, yadda.
Someone asked me to help get the word out about this CLE that is being hosted by the Delaware County (not state) Bar Association at the end of this month in Media, PA.
The topic is "Advice and Guidance on IP Litigation," and the panelists include Third Circuit Judge Restrepo, Federal Circuit Judge Stark (who is the former Chief Judge of the District of Delaware, and a current visiting judge), frequent District of Delaware Visiting Judge Goldberg of E.D. Pa., and current D. Del. Magistrate Judge Burke.
The panel is set for October 30, 2025 from 6-8 pm, and the event is free. You can register here. The CLE will be in Media, PA, which …
Last week in Eagle Pharmaceuticals, Inc. v. Apotex Inc., C.A. No. 24-64-JLH (D. Del.), the Court partially granted a motion to compel production of sales documents in a patent case.
The plaintiff moved to compel production of communications between the defendant's "sales force":
The Court should order Apotex to produce communications among its sales force regarding the sale, marketing, pricing, and promotion of Apotex’s NDA product. Eagle’s RFP No. 57 seeks: “All communications between Your sales force, sales personnel, or marketing personnel that refer or relate to the sale, marketing, pricing, and/or promotion of Your NDA [New Drug Application] Product, including but not limited to by way of any group chat, texts, text …
I have no idea what image would go with this, so here is a mildly interested chipmunk.Andrew E. Russell, displayed with permission
Yesterday, Judge Andrews granted two motions to dismiss willfulness allegations for a failure to allege knowledge. The orders are short and sweet, and provide some examples of the kinds of allegations that are not sufficient to allege knowledge of the asserted patent in support of a willfulness claim.
First, in New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA (D. Del.), the Court granted the willfulness portion of a motion to dismiss in just three sentences:
The motion to dismiss the willfulness allegations is GRANTED. Alleging that employees of Defendants attended a 2016 presentation on the topic of "Benefits of IP Partnering for Drug Delivery Telemanagement" provides no factual basis for an allegation of willfulness. Nor does the allegation that in 2021 an online article "Patents are Important for Smart Healthcare Products"-- described the patents and that Defendants subscribe to the online publication.
New Directions Technology Consulting, LLC v. Abbott Laboratories Inc., C.A. No. 25-506-RGA, D.I. 18 (D. Del. Oct. 2, 2025).
This decision was quick, issuing less than two motions after the motion to dismiss, although it only addressed the motion in part. The Court referred the motion's remaining allegation re: § 101 to Magistrate Judge Tennyson.
Sailing is one of those endeavors that really make you respect the ancestors. As a kid (and indeed, a thirty-something) it seemed like a simple matter or pointing a sheet in the wind to go forward. Then you actually go on one of these crazy things and—even setting aside the knots—there's this mad calculus that goes into what turns where when that somehow makes you best off when you're perpendicular to the actual wind. Real witchcraft.
This, of course, brings us to one of my favorite areas of patent law, the safe harbor provision. For those, less familiar, Judge Barker's opinion this week in Merus N.V. v. Xencor, Inc., C.A. No. 24-913-JCB, D.I. 35 (D. Del. Sep. 30, 2025), gives a good overview.
Briefly, 35 U.S.C. § 271(e)(1) allows one to make/use/etc, a patented invention "solely for uses reasonably related to the development and submission of information under" a qualifying regulatory regime. This most often comes into play in the ANDA context where the generic manufacturer can use the otherwise patented drug to perform the necessary studies to submit their ANDA to the FDA.
The situation is somewhat more complicated in Merus. The patents there
"Did I forget to say why we should win the motion?"AI-Generated, displayed with permission
When you're drafting a brief, it can easy to get bogged down in all of the in-the-weeds counter-arguments and surrounding issues, and to kind of forget about the main point you need to make.
Years ago, in a patent case, I wound up needing to write three initial drafts of three summary judgment briefs in a week. Fun, right? The first two came together OK. The third one, not so much. It was a complicated motion involving many potential counter-arguments.
I remember thinking the initial draft was pretty good when I clicked send on the e-mail attaching it. How could it not be? In just …
Anyone who's been a lawyer long enough to read blogs about will have purchased some custom-made legal accessories. A monogrammed briefcase is a classic, as are cuff links and (for the daring) a bolo tie. The especially theatrical amongst you might get a cape, walking stick or dark altar. The important thing is that it fits, and is monogrammed.
I wasn't sold on the dark altar, but it actually came with a monogrammed cape, so...AI-Generated, displayed with permission
This of course, naturally leads me to contributory infringement and especially whether a product is "especially made or adapted for use" in an infringing process and not "suitable for substantial non-infringing use."
This analysis is often factually intense, but it doesn't …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
