A Blog About Intellectual Property Litigation and the District of Delaware


Courts
All courts

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 …

View

Court Rejects Attempt to Evade Service of Process By (Allegedly) Not Opening the Door

Andrew E. Russell, June 18, 2025
Service of Process Multimedia Filing

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 ...

View

Court Dismisses TGL Golf DJ Trademark Action (And Cites Caddyshack, Tin Cup, and Happy Gilmore)

Andrew E. Russell, June 16, 2025
Declaratory Judgment

The Cliffs of Insanity (from The Princess Bride)
The Cliffs of Insanity (from The Princess Bride) Saad Chaudhry, Unsplash

I saw this opinion last week and figured it would make for a nice lighthearted Friday post, but it got bumped to today when I decided to instead post about parties consenting (or not) to hearings and trial in E.D. Tx. So this is now a lighthearted Monday post.

Decades ago, former Chief Judge Robinson was known to occasionally include Princess Bride movie references in her opinions. See, e.g., Adkins v. E.I. du Pont de Nemours & Co., C.A. No. 95-315-SLR, 1995 U.S. Dist. LEXIS 17707, at *19 n.5 (D. Del. Nov. 21, 1995) (after a party called offering a more specific amended pleading …

View

Visiting Judge Barker Asked Parties Whether They Consent to Hearings or Trial in the Eastern District of Texas Rather Than the District of Delaware. Here Is What They Said.

Andrew E. Russell, June 13, 2025
Visiting Judges

Texas
Micah Boswell, Unsplash

We noted last month that there have been more assignments to visiting judges lately, including to visiting Judge Campbell Barker of the Eastern District of Texas.

Later last month, Judge Barker issued an order in 17 cases asking parties to let the Court know whether they consent to hearings or trial in the Eastern District of Texas:

Within 28 days . . . . each party shall file a notice stating whether the party consents to trial, see 28 U.S.C. § 1404(a), hearings, see Fed. R. Civ. P. 77(b), or both in the Eastern District of Texas, Tyler Division.

Yesterday was the deadline to respond for most cases. We put together some quick, rough statistics of …

View

Infringement By Any Other Name

Nathan R. Hoeschen, June 12, 2025
Preemption

Federal Courts is one of those classes that everyone has a tumultuous relationship with. My own professor on the subject continues to vex me by running a rival legal blog. Like Boat News before them, they shall be long forgotten to history whilst IP/DE reigns ascendant. Their name spoken only by those frightened few who stumbled upon their dark and damp remains.

Perhaps they can still pivot to video
Perhaps they can still pivot to video NOAA, Unsplash

In any event, while issues of federalism, preemption, and the like do not often rear their heads in my practice, they often spawn an interesting opinion when they do. Case in point, Judge Fallon's opinion in Convatec, Inc. v. HR Pharms., Inc., C.A. No. 24-1248-RGA-SRF (D. Del …

View

Judge Noreika Reminds Parties of Her Preference That Markman Take Place After Final Contentions

Andrew E. Russell, June 11, 2025
Stipulation Scheduling Order

Apparenly this is a picture of a large magnet, rather than a particle accelerator. Either way, it looks like someone left their binder in it.
Apparenly this is a picture of a large magnet, rather than a particle accelerator. Either way, it looks like someone left their binder in it. Brandon Style, Unsplash

We've talked about this before, but it was so long ago that I think it's worth pointing out again. Typically, left to their own devices, parties in patent cases will schedule initial contentions, then claim construction and a Markman hearing, and then final contentions.

In theory, the final contentions can then reflect claim constructions. In practice, it doesn't always work out that way, given that a Markman opinion may come out after the hearing anyway. If you want to have constructions before final contentions, you need to leave a fair …

View

Reminder: The Ethics Rules Prohibit Attorneys From Asking a Third Party to Withhold Information

Andrew E. Russell, June 6, 2025
Third Party Discovery Ethics

Danger Keep Out
Edwin Hooper, Unsplash

Earlier this week, visiting Judge McCalla issued an order denying a motion to preclude a third-party factual declaration. Along the way, the Court addressed an ethics rule that should probably come up more often than it does.

As set forth by the Court, ABA Model Rule 3.4(f) precludes attorneys from requesting that third parties withhold relevant information from another party:

Model Rule 3.4(f) states a “lawyer shall not . . . request a person other than a client to refrain from voluntarily giving relevant information to another party.”

Arctic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158-JPM, at 4 (D. Del. June 4, 2025).

This could be a land mine for the …

View

Some Quick Updates from the District of Delaware Federal Bar Association Lunch

Andrew E. Russell, June 4, 2025
Annual Report Congestion

District Court Seal

The Delaware Chapter of the Federal Bar Association held its annual lunch today and, as usual, the District and Bankruptcy Courts provided updates on the state of the courts. There wasn't a lot of new information this year, but here are some quick notes on some relevant items:

  • District court case filings here in D. Del. were down only 2%, compared to 14% nationally
  • Criminal filings were up 14%
  • There was a 7% drop in patent case filings, but we still have 39% of all ANDA cases
  • We are still the biggest court for competitor case filings
  • The Court strives to be fair and not partial to either plaintiffs or defendants
  • Judge Andrews is continuing to take almost a …
View

I Can Go to Trial Again!

Nathan R. Hoeschen, June 3, 2025
Stipulation

Entering into a stipulation is easy. You say we both agree to move this date or not assert that patent, and normally the court signs it and everyone goes about their business.

Getting out of a stipulation is harder.

AI-Generated, displayed with permission

If you're wondering just how hard, I present to you Judge Bataillon's opinion this week in Astellas Pharma Inc. v. Zydus, Inc., C.A. No. 20-1589-WCB (D. Del. May 30, 2025).

In that case Judge Bataillon resolved the rare "motion for relief from stipulation." The parties had long ago entered into a case narrowing stipulation in which the defendants dropped their obviousness and anticipation defenses.

Following a trial, then an appeal and a remand, the case was back in Judge Bataillon's hands, and was a bit more complicated. In the interim, it had been consolidated with related cases against other defendants and new claims from a related patent.

Because those other claims and other defendants were not bound by the prior stipulation, Lupin and Zydus argued that ...

View

Court Orders Party to Make Unavailable Expert Witness Available for Deposition on a Better Date, or Face Potential Preclusion

Andrew E. Russell, June 2, 2025
Expert Witness Expert Discovery

Turn Around
Jim Wilson, Unsplash

This is something you don't see often. In Kaneka Corporation v. Designs For Health, Inc., C.A. No. 21-209-WCB (D. Del.), the plaintiff contacted the Court after defendant's counsel offered only a single potential date for the deposition of the defendant's expert, and that date was just five days (and three business days) after the expert's non-infringement report.

The case has been going since 2022, with many twists and turns and amended scheduling orders. One of the most recent scheduling orders set deadlines of May 16 for opening expert reports and May 30 for responsive reports, with the close of expert discovery to close on June 13.

The defendant offered an opening report from …

View
Older

Archive