A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

A Hypothetical

Nathan R. Hoeschen, Aug. 21, 2025
Damages ANDA

Judge Andrews had an interesting decision yesterday on the hypothetical negotiation date in an ANDA case.

Sebastian Herrmann, Unsplash

Obviously, damages issues like a hypothetical negotiation date don't come up very often in an ANDA case. Mallinckrodt PLC v. Airgast Therapeutics LLC, C.A. No. 22-1648-RGA, D.I. 461 (D. Del. Aug. 20, 2025), was a little different, however. In that case, the Defendant Airgas had actually filed its ANDA 12 years before the case was filed, and before any of the asserted patents were added to the orange book. Accordingly, there was no 30-month stay.

By the time summary judgment came around, Airgas had launched its product and damages were thus in play. The parties disputed whether …

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Limits of Lanham

Nathan R. Hoeschen, Aug. 19, 2025
Supplemental Jurisdiction Preclusion

Judge Burke unsealed an interesting opinion last week on the applicability of Lanham act claims to pharmaceuticals.

Sharon McCutcheon, Unsplash

In Vanda Pharms., Inc. v. MSN Pharms., Inc., C.A. No. 24-505-JLH (D. Del. July 31, 2025), the Plaintiff accused various generic drug manufacturers of violating the Lanham by allegedly making false statements in their label and advertisements. In particular, Plaintiff alleged that the Defendants described Plaintiff's product "Hetlioz" as the brand reference for their generic products when "the reference product used in Defendants’ Bioequivalence Study was not actually Hetlioz, or because that study was so flawed that it undermines any assertion that Defendants’ product is bioequivalent to Hetlioz." Id. at 14 (quoting complaint).

The issue was …

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Court Sends Parties Back to the Drawing Board After Insufficient Markman Process That "Waste[d] Judicial Resources"

Andrew E. Russell, Aug. 18, 2025
Markman Briefing Markman

Confusing
AI-Generated, displayed with permission

Judge Burke issued an oral order on Thursday in OmniVision Technologies, Inc. v. RE Secured Networks, LLC, C.A. No. 24-187-JLH-CJB (D. Del.) expressing frustration due to the parties' inadequate claim construction briefing, and the resulting "inefficient" Markman hearing.

The parties submitted their joint claim chart back in March, identifying seven groups of terms. For three of the seven groups, the patentee offered positions like "Needs no construction" or "Not indefinite." D.I. 78-1 at 2-6. Some of these term groups were a bit odd (including, for example, a group called "preambles," which addressed three separate preambles across six claims spanning three patents). Counted separately, the parties sought to construe more than the 10 terms …

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Getty Images Voluntarily Dismisses AI Action to Re-File in N.D. Cal.

Andrew E. Russell, Aug. 15, 2025
Voluntary Dismissal AI

You may remember this guy from our original post.
You may remember this guy from our original post. AI-Generated

In February 2023, we wrote about a case by Getty Images against Stability AI involving copyright claims on AI-generated content. That case was filed near the start of the current AI mania, and it looked to potentially be significant.

Since then, the case has suffered from some party-driven delays. The parties agreed to extend the answer deadline, and then Getty Images filed an amended complaint. D.I. 12, 13. This was followed by another stipulated extension, and a motion to dismiss or transfer. D.I. 15, 16.

The Court then granted a motion for jurisdictional discovery, D.I. 30, and that process seems to have gone on for about a year, until Getty …

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PDF Metadata From PACER Filing Used to Support Allegation of Protective Order Violation

Andrew E. Russell, Aug. 13, 2025
CM/ECF Metadata

In our recent post about the Court finding a protective order violation by an inventor / principal / expert / man of many hats, we promised a second post about how the accused infringer used PDF metadata from PACER in a clever way to establish the protective order violation. This is that second post.

Basically, the parties disputed who had edited a document containing Attorney's Eyes Only information. The inventor had switched counsel, but the moving party claimed that the edits were made by the inventor, not counsel.

Screenshot of the metadata for a highlight as it appears in Adobe Acrobat
Screenshot of the metadata for a highlight as it appears in Adobe Acrobat D.I. 81-17

The moving party showed that the PDF with the AEO information included highlights, and that the metadata …

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Pick Your Favorite State

Nathan R. Hoeschen, Aug. 12, 2025
Personal Jurisdiction Forum Shopping

Everyone has a favorite state. Maybe it's where you grew up. Maybe it's where you went on vacation as a child. Maybe it's just the first state?

AI-Generated, displayed with permission

Not everyone is so fortunate to live in their favorite state -- but if you play your cards right, you can apparently choose to be sued there.

The issue came up last week in Guangzhou Lightsource Elecs. Ltd. v. Pine Locks, C.A. No. 24-543-JCB, D.I. 30 (D. Del. Aug 5, 2025). Pine Locks (incorporated on the Isle of Mad) had allegedly filed a complaint with Amazon requesting that some of Gaungzhou's (a Chinese company) products be taken down because they infringed Pine Locks' patents. Guangzhou then …

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Court Disqualifies Testifying Expert and Sanctions Unrepentant Party for Protective Order Violation

Andrew E. Russell, Aug. 8, 2025
Protective Order Protective Order Violation

Andrew E. Russell, CC BY 2.0

The protective order hearing last week was even more interesting than anticipated. We laid out the background our last post, but here are the basics:

In this patent action, the inventor of the patents-in-suit is also a principal of the plaintiff entity Rein Tech, as well as the prosecuting attorney, the testifying expert, and (likely) a fact witness. He's doing a lot here.

Because he is the principal and a competitive decision maker, and even though he is a testifying expert who apparently issued a report, the parties (more or less) agreed that he is precluded from seeing Attorneys' Eyes Only ("AEO") information under the protective order in the action.

Beyond that, the …

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Judge Hall Declines to Grant Summary Judgment That Some (But Not All) Claim Elements are Met

Andrew E. Russell, Aug. 6, 2025
Summary Judgment Individual Claim Elements

A very blurry picture of a claim from one of the asserted patents, highlighting roughly the text that the patentee seemed to seek summary judgment on.
A very blurry picture of a claim from one of the asserted patents, highlighting roughly the text that the patentee seemed to seek summary judgment on. RE47,031

It's common for parties to not dispute the presence of some portions of a patent claim in an accused product. For example, in a patent for a "computing device" with software meeting certain limitations, the defendant may not dispute that the presence of a "computing device"—but might vigorously dispute that the software it runs meets the remaining claim limitations.

In most patent cases, the presence of at least some portion of the claim limitations in the accused product is not disputed—and often, quite a few limitations are not disputed. But the parties regularly …

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In Resolving Case Narrowing Dispute, Judge Williams Holds that a Prior Art Product Is a Single Reference, Even If Described by Multiple Documents

Andrew E. Russell, Aug. 4, 2025
Prior Art Case Narrowing

A patent figure. It has an indisputable date, a specific technical diagram, and a description. How much clearer can you get?
A patent figure. It has an indisputable date, a specific technical diagram, and a description. How much clearer can you get? U.S. Pat. No. 777,777 ("Hat-Clasp")

On Friday, Judge Williams resolved a case narrowing dispute in Nexus Pharmaceuticals, Inc. v. Execla Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.).

The parties disputed the numerical limits for case narrowing. The Court adopted a proposed limit of 4 obviousness combinations per claim, with no more than eight combinations total, and 10 total prior art references. The patentee offered to narrow to 7 asserted claims.

The Court noted that the order was consistent with its precedent, in which it allowed no more than 10 claims, 10 prior art references, and 20 prior art arguments.

The Court also addressed what counts as a "reference." The patentee tried to limit the accused infringer so that every document counts as its own reference, even if the asserted obviousness combination is a prior art device, product, or system itself rather than the documents that describe that system.

The Court rejected that idea, and held that ...

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Court Denies "Easy" Stay Motion That Was Based on Hypothetical Future Patent Challenge

Andrew E. Russell, Aug. 1, 2025
Stay Pending IPR Stay

"Just imagine this page holds one of the in-depth and fulsome post-grant review petitions we're totally going to file on these patents" Kelly Sikkema, Unsplash

I know some readers probably want an update on the protective order hearing. I expect that will be a hefty post of interest to all D. Del. litigants—but I need to get the transcript first. In the mean time, though, please enjoy this spare and jargon-filled post which is only going to be of interest to patent practitioners.

We've talked about pre-institution stays before, and how hard they are to achieve. What's even harder? A stay of patent litigation before a patent challenge has even been filed.

Chief Judge Connolly …

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