A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

The Show Must Go On

Nathan R. Hoeschen, Oct. 30, 2025
Summary Judgment Stay

It can take quite a while to resolve summary judgment motions. In essentially every patent case they take up hundreds of pages of briefing accompanied by hundreds more pages of declarations, reports, and exhibits on the most arcane technical matters.

Stack of Papers
Stack of Papers Christa Dodoo, Unsplash

For this reason, all of our Article III judges' form scheduling orders (except Judge Andrews) explicitly instruct the parties to leave 3 or 4 months (3 for Judge Connolly, 4 for the remainder) between the close of briefing and the pretrial conference.

Because a modern patent trial tends to involve a great deal of back and forth on exhibit lists, designations, statements of facts, etc., the pretrial order is usually prepared -- or …

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Judge Williams Issues Orders Across Ten Cases Directing Discovery to Move Forward Pending Resolution of Motions to Dismiss

Andrew E. Russell, Oct. 29, 2025
Discovery Pending MTD MTD

Logjam
AI-Generated, displayed with permission

When you file a motion to dismiss in the District of Delaware, the case case go one of two ways, depending on the judge. Most of our current judges do not require discovery to move forward if a motion to dismiss is filed, at least absent action from the parties. Some District of Delaware judges, though, have required discovery to move forward pending a motion to dismiss. Former Chief Judge Stark made this explicit in his procedures, for example, and Judge Burke has also adopted this practice.

This seemingly minor difference in policy can make a huge difference in how a case proceeds. A complicated motion to dismiss can sometimes take a busy court anywhere from …

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Judge Williams Rejects Dicta from Two Federal Circuit Cases, Denies Summary Judgment

Andrew E. Russell, Oct. 27, 2025
Invalidity § 102(b)

Sale
Markus Spiske, Unsplash

Judge Williams issued a noteworthy SJ opinion last week in Cisco Systems, Inc. v. Ramot at Tel Aviv University, Ltd., C.A. No. 21-1365-GBW (D. Del.).

Cisco involves a DJ action where the accused infringer is challenging the validity of a patent based on the pre-AIA § 102 on sale bar, alleging that a a third party sold a product that embodied the claimed method more than one year before the patent application.

The patentee seemingly agreed with the basic facts, but moved for summary judgment of no invalidity on the theory that the the sales were "secret."

What does "secret" mean here? At least for the purposes of this motion, the parties assume …

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Dark Portends and Collateral Estoppel

Nathan R. Hoeschen, Oct. 23, 2025
Collateral Estoppel

As our AI overloads approach a dark singularity, I occasionally amuse myself by asking it increasingly obtuse questions just to see what it spits out. Today, for instance, I asked it for a cartoon depicting the abstract legal concept of collateral estoppel:

AI-Generated, displayed with permission

I'm not entirely sure the old fella hit the mark on this one, but I'm honestly not sure what I would come with that's any better. Another draw on the Turing test.

Anyway...

Judge Hall issued an interesting opinion on last week on collateral estoppel. The plaintiff in Ingenus Pharms., LLC v. Hetero USA, Inc., C.A. No. 24-1025-JLH (D. Del. Oct. 21, 2025), had several suits pending in different districts regarding …

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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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