A Blog About Intellectual Property Litigation and the District of Delaware


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Intellectual Property

But I Thought I Could Do the Bare Minimum!

Lindsey M. Gellar, March 31, 2025
FRCP 8 Affirmative Defenses

Me, emerging to make my IP/DE debut.
Me, emerging to make my IP/DE debut. Bankim Desai, Unsplash

My name is Lindsey Gellar, and I am an associate at Shaw Keller, posting for the first time here. Yes, Andrew has finally managed to rope another lackey (associate) into writing for the blog. Today, I'm going to look at what it takes to plead equitable defenses in the District of Delaware.

When it comes to pleading most affirmative defenses, the bar is on the floor. An affirmative defense does not need to be plausible to survive; it must merely provide fair notice of the issue involved. Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR, 2012 U.S. Dist. LEXIS 126788, at *7 (D. Del. …

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Court Denies Summary Judgment Motion That Failed to Include Adequate Argument (and Violated the Page Limit)

Andrew E. Russell, March 17, 2025
Page Limits Summary Judgment

Green Frog
Andrew E. Russell, displayed with permission

Earlier this month we talked about the required structure for briefs in the District of Delaware. As to the required "argument" section, I said "We all know what this is." Maybe I was wrong.

An "Argument" Section That Wasn't

On Friday, the Court denied a motion for summary judgment for violating the local rule on briefing structure, because it's "argument" section failed to conform to the local rule on briefing structure, LR 7.1.3(c)(1)(f), and had exceeded the page limits for briefing. Roger P. Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 443 (D. Del. Mar. 14, 2025).

Basically, the patentee moved for summary judgment of infringement. But, rather than laying …

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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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Court Orders Production of Litigation Funding Information—But Only to the Extent It Relates to the Value of the Patents

Andrew E. Russell, Jan. 29, 2025
Litigation Funding

Is he watching via Robocast, I wonder?
AI-Generated, displayed with permission

When people say that D. Del. is "against litigation funding," they imply that the Court has some kind of general bias against parties who use litigation funding. That's wrong. I've never seen a Delaware judge dislike or rule against a party because the party used litigation funding. And the Court as a whole is certainly not biased against plaintiffs (or defendants), funding or no funding.

With all of that said, I thought it was worth noting that Judge Burke recently ordered production of litigation funding material to the extent it related to the value of the patents.

After reviewing litigation-funding-related documents in camera, he ordered production of those that relate to the value of …

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This Is Why You Should Identify Claim Construction Issues Early—If You Can

Andrew E. Russell, Jan. 24, 2025

Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it.
Claim construction in this case was originally set for 2020—before the parties stipulated to cancel it. Kelly Sikkema, Unsplash

Yesterday, Judge Hall granted a post-trial JMOL motion in Taiho Pharmaceutical Co., Ltd. v. MSN Laboratories Private Ltd., C.A. No. 19-2342-JLH (D. Del.), finding no infringement as a matter of law.

The motion resolved a relatively straightforward claim construction issue: what the word "purity" means in the claims.

The patentee said it meant chemical purity, while the accused infringer argued it meant "polymorphic" purity. The patent as a whole is directed towards crystal forms of a drug, and discussed purity of the crystal form—"polymorphic" purity—but also mentions chemical purity. The patenteee agreed that, if "purity" means polymorphic …

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Court Grants Rule 12(c) Judgment on the Pleadings of No Contributory Infringement

Andrew E. Russell, Jan. 13, 2025
FRCP 12(c) Motion for Judgment on the Pleadings

Pills
HalGatewood.com, Unsplash

Defendants are always on the lookout for ways resolve patent cases (and other cases) early. One potential avenue is an FRCP 12(c) motion for judgment on the pleadings—but it only works in uncommon circumstance that the pleadings themselves show a lack of infringement or validity.

It's an uncommon circumstance—but not unheard of. Last week, the Court granted an FRCP 12(c) motion of no contributory infringement in Boehringer Ingelheim Pharma. Inc. v. Apotex Inc., C.A. No. 23-685-CFC (D. Del.), after a plaintiff's own complaint showed a lack of infringement.

Boehringer is an ANDA action. The patent claims a drug used to treat a disease in patients who—critically—are ineligible to receive a second drug. The label …

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Something to Consider When Considering a 12(b)(6) Motion to Dismiss a Patent Case

Andrew E. Russell, Jan. 8, 2025
MTD FRCP 12(b)(6)

Robot
AI-Generated, displayed with permission

Back in 2021 the Federal Circuit issued an opinion in Bot M8 LLC v. Sony Corp. of Am. that raised the standard for granting a motion to dismiss in a patent action. C.A. No. 2020-2218, 2021 U.S. App. LEXIS 20624 (Fed. Cir. July 13, 2021). The Federal Circuit held that "[a] plaintiff is not required to plead infringement on an element-by-element basis"—which was news to the patent practitioners who had filed (and won) motions on that basis.

We haven't written much about that decision in the time since, but it's still out there, and it's something to keep in mind as you weigh your options in response to a patent infringement complaint.

Last month, during our …

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Ruling on Post-Trial Motions Shows What Not to Do

Andrew E. Russell, Jan. 6, 2025
Trial Trial Practice

Snow day!
Snow day! Hide Obara, Unsplash

We're back! Just in time to be snowed in—the Court is closed today due to inclement weather.

While we were out last week, Chief Judge Connolly issued an interesting opinion on post-trial motions in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38-CJB (D. Del.).

That case went to trial in January 2024, with plaintiff Natera winning a $96 million verdict on the first of two patents, but receiving a verdict of no infringement of the second patent. The Court's opinion addresses their motion for JMOL of infringement on the second patent.

Did a Poorly Phrased Question Doom JMOL of Infringement?

The arguments turned on a single claim limitation. The Court found …

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Court Holds Claim Indefinite Where One of Two Claimed Ways to Infringe Is Scientifically Impossible

Andrew E. Russell, Dec. 16, 2024
Indefiniteness Claim Construction

An electric signal transmitted over the air?
An electric signal transmitted over the air? Brandon Morgan, Unsplash

Judge Burke issued an interesting claim construction opinion on Thursday of last week, invalidating a claim where one of two ways to infringe was scientifically impossible.

One claim limitation was set forth in the alternative:

A communications apparatus for transmitting electric or electromagnetic signals over air

Satius Holding, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 18-850-CJB (D. Del. Dec. 12, 2024).

The parties agreed the it is "scientifically possible" to transmit "electromagnetic signals" over air, but the defendant argued that it was impossible to transmit "electric" signals over the air:

Defendants assert that one of those two options—“transmitting electric . . . signals over air”—amounts …
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Patentee's Own Weak Interrogatory Responses Cause Denial of Its Motion to Strike Opposing Party's Late Expert Argument

Andrew E. Russell, Dec. 11, 2024
Expert Discovery Expert Reports

"Behold, our fulsome and complete damages theory disclosure. I'm sure this won't cause us any problems down the line." Andy Bridge, Unsplash

Parties in patent cases are often tempted to provide bare-bones responses to contention interrogatories, offering just enough to preserve their ability to expand on the arguments later during expert reports. That's easier, obviously, than providing more detailed contentions, and it also maintains flexibility as discovery develops.

Plus, parties simply may not have fully developed their theories at the time contention interrogatories are due. Expert reports are when theories are typically fully fleshed out, after discovery has closed and the universe of information is set, more or less.

But there is another consideration as well, beyond preventing a …

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