A Blog About Intellectual Property Litigation and the District of Delaware


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Judge Wolson Holds That "Oriented Toward a Horizon" Renders Claim Indefinite

Andrew E. Russell, Aug. 11, 2025
Indefiniteness Invalid

I have no idea if the equipment at issue even uses dish antennas, but this one looks cool.
I have no idea if the equipment at issue even uses dish antennas, but this one looks cool. Stellan Johansson, Unsplash

On Thursday, visiting Judge Wolson issued an opinion in SmartSky Networks, LLC v. Gogo Business Aviation, LLC, C.A. No. 22-266-JDW (D. Del.) addressing several summary judgment motions, one of which sought to invalidate a claim of one of the asserted patents as indefinite.

The claim related to a communication system for in-flight wifi, and required that a base station for the equipment emit a radiation pattern that is "oriented toward a horizon." The defendant claimed that that language is indefinite, and the Court agreed:

Claim 1 of the ‘717 Patent requires a radiation pattern that …
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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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Heads Up: Interesting Patent-Case Protective Order Violation Hearing at 10AM Tomorrow (Friday August 1)

Andrew E. Russell, July 31, 2025
Protective Order Protective Order Violation

Plaintiff's principal with his towering pillar of hats
Plaintiff's principal with his towering pillar of hats AI-Generated, displayed with permission

If you happen to be in Wilmington, DE tomorrow—perhaps as a summer associate—and feel like attending an interesting hearing, it could be worth stopping by Judge Noreika's Courtroom 4A at 10am.

The hearing involves an alleged protective order violation by plaintiff Rein Tech and its principal. See Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1683-MN, D.I. 170 (D. Del. May 16, 2025).

An Alleged Disclosure of AEO Information And an Alleged Prosecution Bar Violation

Rein Tech's principal apparently wears many hats. In addition to being the head of Rein Tech, he is also the named inventor on the asserted patents, the prosecuting attorney …

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Chief Judge Connolly Grants § 101 Motion to Invalidate Security Patent

Andrew E. Russell, July 28, 2025
FRCP 12(c) § 101

I couldn't find a real image of a border that is
I couldn't find a real image of a border that is "porous to the extent that it is decipherable" AI-Generated, displayed with permission

Even 10+ years after Alice, the standard for invalidity under § 101 feels inconsistent, and there is a lot of room for any two human beings (judges or otherwise) to look at the same patent and have different views. This is particularly true when you factor in the procedural hurdles, which ultimately give the Court a range of options on when to deal with a § 101 motion (e.g., before summary judgment, at summary judgment, or at trial/post trial).

So, when a D. Del. judge issues a § 101 decision, I often think it often …

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A Patent Invalidity Decision Worth Reading

Andrew E. Russell, July 25, 2025
Single Means FRCP 12(c)

An embodiment of the lens at issue—yes, this is a single claim
An embodiment of the lens at issue—yes, this is a single claim "element" U.S. Pat. No. 6,844,990

Judge Burke issued a fascinating invalidity decision yesterday in Immervision, Inc. v. Apple, Inc., C.A. No. 21-1484-MN-CJB (D. Del.). It addresses an invalidity issue I had honestly never seen litigated—a "'single means' claim"—and, along the way, it addresses what a claim "element" is and when the "clear and convincing" standard applies to invalidity.

Basically, the whole thing is a page-turner for someone who deals with these issues, and well worth reading. I'll outline some of the most interesting points below.

"Single Means" Invalidity Is a Thing

The invention at issue is an optical lens. The opinion involves an independent claim …

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Court Denies Request to Limit Scope of DJ Claims Via Motion to Dismiss for Subject Matter Jurisdiction

Andrew E. Russell, July 16, 2025
Motion to Dismiss Declaratory Judgment

Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance.
Photograph showing the proper procedural mechanism to undo subject matter jurisdiction in this instance. Delorean Rental, Unsplash

In CogniPower LLC v. Fantasia Trading LLC, d/b/a AnderDirect, C.A. No. 19-2293-JLH-SRF (D. Del.), a patent suit, the Court granted a third-party supplier's motion to intervene back in 2020. Since then, based on the docket, the patentee has been trying to dismiss the intervenor from the case.

Today, the Court issued its order denying a motion to dismiss by the patentee, and it addresses to interesting issues regarding an effort to limit the scope of the Court's judgment based on subject matter jurisdiction.

First, the patentee tried to dismiss the claims based on an argument that, five years after …

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Judge Burke Errs on the Side of Admissibility for "Close Call" Daubert Motion

Andrew E. Russell, June 20, 2025
Damages Apportionment

Even though Daubert is
Even though Daubert is "not that high" of a bar, some experts still fail to clear it. National Library of Scotland, Unsplash

I always find that it can be helpful to see how judges rule on things, even if the rulings are kind of fact-specific, because it can still give you a sense of how they will rule on other things. (Thus, we have a blog.)

In Attentive Mobile Inc. v. Stodge, Inc., d/b/a Postscript, C.A. No. 23-87-CJB (D. Del. Jun. 12, 2025), Judge Burke addressed a Daubert motion to preclude a damages opinion that included revenue from non-infringing functionality in its royalty base, on the basis that it failed to apportion damages.

The patentee argued …

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