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 …
I know that I promised a hard-hitting post on infringement stats in ANDA cases, and I was really going to post the update this time—really! But then the very first case I read had a neat issue that deserved a post on its own. We can only hope I remember to get to it next week.
In the meantime, today I have the rare case where the Court actually granted an adverse inference as a discovery sanction.
Central to infringement in Novartis Pharms. Corp v. MSN Pharms Inc., C.A. No. 22-1395-RGA, D.I. 523 (D. Del. July 11, 2025), was a factual issue that is only of interest to analytical chemistry …
Many years ago now, when I was still in the full flagrant flower of youth (38), I wrote a post discussing the relative rates at which various drug patents—compound, method of treatment, and formulation—were found invalid in Delaware.
Not analyzed at the time (because who has the time?) was the question of how often these various types of drug patents are found to be infringed in ANDA cases. I'll have a fuller post on this later in the week, but my guess is that it goes compound > method of treatment > formulation. If it turns out I am wrong, you will never be able to prove it because I will edit this post immediately.
AI-Generated, displayed with permission
In any case, method of treatment patents often follow trends with certain themes going into and out of vogue, so I suspect today's opinion from Chief Judge Connolly in Novo Nordisk, Inc. v. Mylan Pharms. Inc., C.A. No. 23-101-CFC (D. Del July 22, 2025), will be of general interest to our audience.
The patent there—for blockbuster drug Wegovy—required that the drug be administered "without another therapeutic agent," which the Court construed to mean "administered without another therapeutic agent as part of the method for reducing body weight, or for treating the conditions of diabetes or hypertension."
Mylan argued that their ANDA label could not induce infringement because, although it cautioned against using the drug with other GLP-1 inhibitors, it was agnostic as to any other weight loss drugs, merely saying that "[t]he safety and efficacy of coadministration with other products for weight loss have not been established."
Plaintiff argued that the this was sufficient to establish inducement because "the proposed label does not require patients to receive other treatment beyond a reduced-calorie diet and physical activity, 'physicians will inevitably prescribe Mylan's ANDA Product without another therapeutic agent.'"
Delaware FBA members should already have received an e-mail, but I know that some missed it or it got filtered out as spam, so here is a public service announcement. The 2025 District of Delaware Bench and Bar will take place at the Chase Center at the riverfront in Wilmington on September 25-26.
The District of Delaware Bench and Bar is a great event, and if you're a reader of this blog, it's well worth attending. It's great to see the judges and frequent litigators in person, and the judges on the panels always have useful insights. We'll likely have a summary post here on the blog, but the rules normally prohibit attribution, so you won't get the full effect …
A trial in a high-end competitor patent case can involve quite a lot of logistics. One of many items that attorneys and staff have to coordinate is hotel reservations and travel to Delaware. Between the attorneys, staff, experts, witnesses, and client representatives involved in trial, this can be quite a lot of hotel reservations and plane flights—not to mention related equipment rentals and setup.
Obviously, it can be good to make trial space and hotel reservations on the earlier side if possible. There is only so much trial space in Wilmington, and if you wait you may lose your preferred option (potentially to the trial team on the opposing side).
Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance.Delorean Rental, Unsplash
In CogniPower LLC v. Fantasia Trading LLC, d/b/a AnderDirect, C.A. No. 19-2293-JLH-SRF (D. Del.), a patent suit, the Court granted a third-party supplier's motion to intervene back in 2020. Since then, based on the docket, the patentee has been trying to dismiss the intervenor from the case.
Today, the Court issued its order denying a motion to dismiss by the patentee, and it addresses to interesting issues regarding an effort to limit the scope of the Court's judgment based on subject matter jurisdiction.
First, the patentee tried to dismiss the claims based on an argument that, five years after …
Pictured: a francophone. also, its good to know that chatgppt doesn't know how a rotary phone works (4,b,c,?)AI-Generated, displayed with permission
As a devoted francophile (and middling francophone), I'm ever intrigued by the concept of rank. One cannot watch the plays of Moliere or the films of Renoir without getting a sense for the pervasive role that rank plays in every aspect of society, amongst both the proud and the petty.
This of course brings me to the place I most commonly rub against the rigid hierarchies of rank—summary judgment motions. Long time readers will of course be aware that Judges Connolly and Williams require litigants to rank their summary judgment motions, so that once one is denied, the …
We're back! It looks like a fair number of opinions and orders have accumulated during out hiatus, and we're looking forward to digging into them (seriously—the hardest part of writing the blog is finding things to write about).
Last week, Judge Williams issued a fairly lengthy opinion on a motion to compel production of documents from before the Default Standard's 6-year discovery provision.
For those who are not aware, the District of Delaware's Default Standard limits "follow-up" discovery in patent actions, with some exceptions, to a period of six years prior to the complaint (tracking the limitation on patent damages under § 286) absent a showing of good cause:
Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.
This can be a real limitation on discovery for cases in which the Default Standard applies (which is not all cases). And while parties occasionally reach the Court with a dispute where one party is trying to make the required showing of good cause to get around it, it's not as common as you might think.
But it is an issue that applies to just about every patent case, so it is great to see a detailed opinion from the Court about it. In Roche Diabetes Care, Inc. v. Trvidia Health, Inc., C.A. No. 24-668-GBW (D. Del. July 9, 2025), Judge Williams addressed a motion to compel production of various discovery prior to the six-year cutoff under the default standard.
The Court addressed four categories of documents and interrogatory responses, and ordered production of most of them. The Court ordered production of:
Development documents
First sale / demonstrate / manufacture / launch documents
Documents regarding knowledge of the asserted patents, and the plaintiff's products and methods
The Court denied the motion to compel production as to:
Damages and reasonable royalty documents
The Court's reasoning for each category provided some useful insights.
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.
We missed this when it came out, but Judge Fallon issued an opinion in March that addressed whether a defendant could evade service of process by, he claims, not opening the door when the process server tried to serve him.
In Pelham v. Vbit Techs. Corp., C.A. No. 23-162-JLH-SRF (D. Del.), a securities action, the plaintiff filed a Return of Service from their process server stating that they had served one of the defendants by personally delivering the complaint to the defendant at home—but the defendant disagreed:
On March 17, 2023, Plaintiffs filed a Return of Service, of the original summons and complaint. (D.I. 6) The affidavit of the process server states that on March 7, 2023, he personally served Jin Gao at his residence. . . . Subsequently, on April 5, 2023, Gao's counsel emailed Pelham's counsel, who filed the Return of Service, informing counsel that Gao was not personally served. . . . Gao's counsel did not receive a response from Pelham's counsel.
Id., D.I. 70 at 13.
The defendant submitted what he claimed was doorbell camera video to rebut the claim that he was served—but the Court did not consider that video, because ...
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