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Judge Williams Holds That Claims Dropped During Claim Narrowing Are Gone Forever

Andrew E. Russell, Oct. 22, 2025

No U-Turns
Pedro Honn, Unsplash

The Court seems to be trending towards holding that patent claims dropped during the claim narrowing process are gone for good.

Yesterday, in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), Judge Williams held that a patentee cannot re-assert claims that it dropped prior to trial:

[T]his Court . . . finds that the case narrowing process in the instant action was even-handed and fair since it required Nexus to narrow its asserted claims and required Exela to narrow its asserted defenses. The fact that Nexus was unsuccessful at trial should not allow Nexus to get a second bite at the apple by now asserting those claims that …
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KB-Tagged Articles on IPDE

Andrew E. Russell, Oct. 20, 2025
IPDE

Great Sand Dunes National Park
Andrew E. Russell, displayed with permission

Here at IPDE, our posts often fall into a few distinct categories. The most common type of post is "look at this interesting opinion that issued! Here is what happened, along with some context and meta-commentary."

(The second most common is probably some variation on "look at this Pennypack decision!" or "here is yet another post about redactions"—but we'll set those aside for now).

My favorite kind of post that we do, though, are our broader discussions that cut across multiple cases or judges, that address a fundamental District of Delaware practices, or that are just helpful tips for attorneys.

These are a bit more timeless—things like District of Delaware deposition tips, …

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Court Cancels Trial, and Instead Schedules Third, Fourth, and Fifth Hearings on Summary Judgment

Andrew E. Russell, Oct. 17, 2025
Trial Trial Practice

Calendar
Adam Tinworth, Unsplash

Hearings on motions for summary judgment in patent cases in the District of Delaware can vary in length, but they are typically measured in hours, rather than days.

That's why it was interesting to see the below order by Judge Burke in Scale Biosciences, Inc. v. Parse Biosciences, Inc., C.A. No. 22-1597-CJB (D. Del.) earlier this week.

In it, the Court cancelled a trial set to start Monday, and instead scheduled almost three full days' worth of hearings next week on six pending motions for summary judgment, plus two other motions:

ORAL ORDER: For the reasons discussed with the parties at last Friday’s hearing, the trial previously scheduled to begin on October 20, …
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Chief Judge Connolly Holds, Sua Sponte, That Willfulness Cannot Be Dismissed, and States That He Will No Longer Entertain Such Motions

Andrew E. Russell, Oct. 15, 2025
FRCP 12(b)(6) Willfulness

Lightning
Yoav Aziz, Unsplash

We've talked a lot about how hard it can be to plead indirect infringement and willfulness before Chief Judge Connolly. He set forth his views on the subject in ZapFraud, Inc. v. Barracuda Networks, Inc., C.A. No. 19-1687-CFC-CJB (Mar. 24, 2021), where he held that a complaint cannot form the basis for an allegation of willful infringement in the same action:

[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that …
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The Stars At Night Are Big And Bright (clap clap clap)

Nathan R. Hoeschen, Oct. 14, 2025
Venue

We mentioned a while ago that Judge Barker, visiting from Texas, had filed orders in at least 17 of his cases asking if the parties consented to holding hearings and/or trial in the Eastern District of Texas.

Micah Boswell, Unsplash

At the time, most of the plaintiffs agreed to hearings and trials in Texas, while most defendants did not. There was no case where both parties assented to trial in Texas, but there were a few where the parties agreed to pretrial hearings there.

Just last week, Judge Barker entered a new order in several cases with pending motions that gave the parties a few more venue options:

Now before the court is a motion to dismiss for failure …
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Where do our witnesses have to be deposed, anyway?

Andrew E. Russell, Oct. 13, 2025
KB Scheduling Orders

Where?!
Greg Rosenke, Unsplash

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 …
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Court Grants Transfer Motion Despite Alleged Inaccessibility of Accused Website in Transferee Jurisdiction

Andrew E. Russell, Oct. 10, 2025
Jumara Motion to Transfer

This is a USB hub, not the kind of
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.

Judge Williams granted the motion …

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Court Denies Motion to Redact Names of Non-Party from Counterclaims, Notes Issues with Briefing

Andrew E. Russell, Oct. 8, 2025
Motion to Seal Third Party Discovery

Just your typical light redactions, from a real case (but not this one).
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:

ORAL ORDER re 130 Joint Motion for …
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"Those Words Don't Mean Much to the Court"

Nathan R. Hoeschen, Oct. 7, 2025
Contentions

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.

Christa Dodoo, Unsplash

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.

But we got a nice neat rule from Judge Burke …

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Heads Up: Upcoming IP Litigation CLE with Former, Current, and Visiting D. Del. Judges on Oct. 30, 2025

Andrew E. Russell, Oct. 6, 2025

Media, PA
Media, PA Smallbones

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 …

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