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The Very Worst of the Worst

Nathan R. Hoeschen, March 4, 2025
101

OOOF!
OOOF! Zachary Kadolph, Unsplash

As I was reading through Judge Andrews' opinion in Election Systems & Software, LLC v. Smartmatic USA Corporation, C.A. No. 18-1259-RGA (D. Del. Feb. 28 , 2025)—a fairly standard opinion denying a motion for attorney's fees—I noticed an interesting callout:

It is within my discretion to find a case exceptional on the grounds of a plaintiff's meritless section 101 argument so as to "deter similarly weak arguments in the future."On the rare (and I believe only) occasion that I have done so, however, the patent asserted was obviously unpatentable. See Finnavations LLC v. Payoneer, Inc., 2019 WL 1236358, at *l (D. Del. Mar. 18, 2019) ("I have rarely been more confident …
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Court Grants § 101 Motion: "Calling Something a Technical Solution Does Not Make It So."

Andrew E. Russell, Feb. 24, 2025
Summary Judgment § 101

Hole in One
Jason Abrams, Unsplash

Looks like someone got a hole in one. On Friday, Judge Hall issued a relatively short memorandum order granting a § 101 summary judgment motion, and it neatly encapsulates what § 101 analyses seem to be trending towards.

The Court found that the 10 asserted claims, across three patents, are all directed to a simple abstract idea:

I agree with Netflix that each and every one of the asserted claims is directed to “the abstract idea of collecting, organizing, and automatically displaying content (e.g., a playlist of Internet content).” . . . The asserted claims contain a lot of words, and some of those words sound complicated.[] But what the claims cover is not complicated. …
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Unlike in the Eastern District of Texas, Delaware Scheduling Orders Avoid Potential Rule 11 Pitfalls at the Pleadings Stage

Emily S. DiBenedetto, Feb. 19, 2025
Scheduling Order Sanctions

Parade of Horribles.jpg
The Looming Parade of Horribles, AI-Generated, displayed with permission

I’m partial to percussion and noticed that there was a gaping hole of staccato in the rising swell of the IPDE music videos, subtle though it may have been in the background of Andrew's singing and Nate’s interpretive dance performances. Leaving the snare drum at home, today I chime in only with the lonely voice of a wistful triangle to supplement this week’s stories with a tale from a faraway land—the Eastern District of Texas.

Why do we in Delaware care about this opinion? It gave me a fresh appreciation for the orderly composition of Delaware scheduling orders. It involved a problem that cannot arise in a District of Delaware …

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Your Biennial Reminder That the Reverse Doctrine of Equivalents and Ensnarement Exist (Plus Some Guidance from the Court)

Andrew E. Russell, Feb. 14, 2025
Reverse DOE Ensnarement

Fish Traps
Chris J Walker, Unsplash

We first posted a reminder that reverse DOE and ensnarement exist back in 2021, and then again in 2023. But here, now, in 2025, we just got some nice guidance from the Court about ensnarement, and it seems like a great time to put out another reminder.

What Are They?

The Reverse Doctrine of Equivalents deals with a situation where the accused product literally reads on the claims, but is not actually doing what the patent is meant to cover. As we noted last time:

The [reverse doctrine of equivalents] rescues from infringement devices that literally satisfy the elements of a claim but perform the same function of the invention in a …
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Injunction Junction

Nathan R. Hoeschen, Feb. 13, 2025
Preliminary Injunction ANDA

I hope some of you saw the musical video Andrew posted yesterday before it was taken down in a copyright strike by the Prince Estate due to his eerily pitch perfect parody. The costumes alone were worth the price of admission.

Honestly the photo doesn't do it justice
Honestly the photo doesn't do it justice AI-Generated, displayed with permission

Hopefully tomorrow's video—Injunction Junction—fairs better.

Mallinkrodt Pharms. Ireland Ltd. v. Airgas Therapeutics LLC, C.A. No. 22-1648-RGA (D. Del. Feb 12, 2025). presented an interesting twist on the tried and true preliminary injunction formula.

The likelihood of success analysis was pretty standard (although it touched on one of my favorite issues—drug interaction). Ditto for irreparable harm, with the Court finding allegations of lost sales and …

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AI Companies Have a Rough Road Ahead on Copyright Issues

Andrew E. Russell, Feb. 12, 2025
AI Summary Judgment

Proof I have other hobbies
Andrew E. Russell, displayed with permission

I don't talk about it much on the blog, but my other hobby (beyond writing about litigation and the District of Delaware for funsies, photography, and having an absurd-by-today's-standards number of children) is writing and speaking about AI and the law. I've been speaking about AI issues on panels at conferences since 2018. Most recently, I moderated a Sedona Conference panel about Copyright and AI.

In the context of copyright and AI, the question of whether training an AI model on copyrighted content is fair use is basically life-or-death for a lot of current AI models. Big generative models like ChatGPT are (typically) trained on giant masses of data collected from books, …

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Sanction Sanctuary

Nathan R. Hoeschen, Feb. 11, 2025
Musical Theater Sanctions

I am pleased to announce that, starting with Andrew's next post, we will be pivoting to a new format. No longer will we be analyzing the developments in IP law with mere written words. Instead, we will be creating Schoolhouse Rock style musical videos. Andrew's surprisingly moving singing voice will be accompanied by my own interpretive dance—leading you through the intricacies of the days' cases like a bee describing the way to honey.

This is perhaps my favorite picture I've used on the blog
This is perhaps my favorite picture I've used on the blog AI-Generated, displayed with permission

The subject of today's post, CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-CFC-CJB, D.I. 413 (D. Del. Feb. 7, 2025) will also be the subject of our first song, "Sanction Sanctuary."

The title comes from the plaintiff's motion for sanctions -- unusual in the district outside of the Pennypack context. The issue there was that the defendant had produced almost all of its documents after the substantial completion deadline, resulting in extra work for the plaintiff, who sought fees as compensation. The defendant argued that the late production was not sanctionable because it was caused in large part by an error in their document collection that had initially missed all documents before 2018.

Judge Burke ...

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Is the Law on Contention Interrogatory Responses Evolving? Judges OK Deferring Contention Interrogatory Response Until After Claim Construction Ruling, or Even After Expert Reports

Andrew E. Russell, Feb. 7, 2025
Contention Interrogatories

Zig Zag
Jack Finnigan, Unsplash

Contention interrogatory responses are a frequent topic of dispute. In theory, using damages as an example, the way it works is this:

  1. Defendant, who does not have the burden, sends a contention interrogatory.
  2. Plaintiff provides contentions.
  3. Defendant takes discovery based on the contentions.
  4. Plaintiff provides expert reports that fairly elaborate on the contentions.
  5. Defendant responds using the discovery it took based on the contentions.
  6. Plaintiff offers expert testimony at trial that is a fair elaboration on their reports.
  7. Defendant moves to strike any testimony that goes beyond the reports.

The process can get hung up on step 2, however, because parties may try to short-circuit the process and avoid giving away or getting nailed down on …

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I Grant Thee Leave

Nathan R. Hoeschen, Feb. 4, 2025
Summary Judgment

All of the Delaware judges have rules in their form scheduling orders limiting the circumstances in which summary judgment motions can be filed. Most notably, each forbids the filing of summary judgment motions in ANDA cases absent leave. In other patent cases, SJ motions cannot be filed more than 10 days before the deadline for dispositive motions without leave.

Lawrence Kayku, Unsplash

As part of my ongoing series of posts about analytics when I have nothing else to write about (why can't I find Al Capone's cave?), I've compiled some statistics on how likely these motions are to be granted, based on the issue (infringement, validity, something weird).

Looking at all the cases for the last three years (and a bit extra so I could get to 20 and not have to do math) the general success rates for these is a pretty abysmal 20%. Validity issues fair a bit better at about 29%. Infringement/noninfringement also beat the average at about 25%. Weirdly, inequitable conduct seems to fair the worst, at a whopping 0.0% (rounding up).

I've got some more analytics on specific judges, but I'm saving them in case I need another one of these on Thursday.

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Court Orders Each of Seven Attorneys Involved in § 1782 Application to Show Cause for Why They Have Not Violated the Rules of Professional Conduct

Andrew E. Russell, Feb. 3, 2025
Model Rules of Professional Conduct § 1782

Lego
Jackson Simmer, Unsplash

We were a bit slow on the draw on this one. You may have already read about it in Law360. But it's significant enough that I think we should post about it anyway.

Last month, in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.), two applicants filed a 28 U.S.C. § 1782 application seeking leave to serve subpoenas on a company in the United States to get discovery related to a foreign proceeding.

The application itself referred only to subpoenas against the company, but the proposed order incorporated a subpoena against an individual, who was not mentioned in the application itself.

The Court rejected the application, at least initially, …

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