On Friday, March 14, 2025, Delaware's own Judge Andrews provided important guidance on key patent issues, relevant to pharmaceutical and technology companies alike: (1) the decisive impact of local patent rules on summary judgment and (2) mitigating the risks of an IPXL challenge by careful claim drafting.
In Jackson v. NuVasive, the court denied plaintiff's motion for partial summary judgment on infringement, not after assessing the merits of the argument but for failure to adhere to the local rules. C.A. No. 21-53-RGA. Local District of Delaware Rule 7.1.3(c)(1)(D) requires a party to include "[a] summary of argument setting forth in separately numbered paragraphs the legal propositions upon which the party relies" in its brief. Instead, in support of its motion for summary judgment, Jackson provided a succinct summary of arguments but sought to incorporate by reference approximately 1,600 pages of expert report. Instead of outlining the expert testimony with respect to the elements of the 17 contested claims, Jackson's brief largely directed the reader to "read our expert's report." Judge Andrews noted that, aside from a brief section titled "Twist-in-Place technology," the movant's brief contained minimal original work or argumentation. The substantive arguments and evidence were buried in a voluminous expert report. The court explained that this did not meet the requirement to present arguments in a clear, structured manner and that a brief that fails to meet Delaware court requirements will not support a party's motion.
Practice Tip #1: Going forward, Delaware litigants should note that even a well-reasoned argument will be dismissed if it does not meet the local court requirements. This cautionary tale warrants incorporating rigorous review of local rules in early case strategies in order to avoid increased litigation costs and uncertainty down the road. For multijurisdictional litigants, moreover, familiarity with local rules of each jurisdiction in which the litigation is conducted is indispensable. A true balance of substantive patent strategy and procedural diligence is critical in achieving favorable outcomes in all phases of litigation.
In a separate but equally critical aspect of the case, the court provided clarity on the IPXL doctrine. The doctrine, stemming from IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), is a potential minefield for patentees when claims improperly mix apparatus limitations with method steps. In such claims there is always uncertainty as to whether infringement occurs at the time of manufacture or only when an end user operates the manufactured device. This is essentially the argument the defendant put forth, arguing that the disputed claims of the '932, '200, and '444 patents were indefinite because, by requiring the pressure and compression inserts in medical implant assemblies to be rotated, the patentee added "a temporal element to the claims[,]" making it unclear when infringement would occur. Judge Andrews clearly rejected this argument on the facts of the case, holding that the challenged claims were not indefinite under IPXL because the rotation is performed during product assembly by the manufacturer, not the end user, i.e., the surgeon. This fact distinguishes the claims from those that mix structural and method limitations in a manner that could cloud the precise moment of infringement, the court explained.
Practice Tip #2: This ruling also serves as a reminder that patent claims should be drafted to clearly delineate the role of each element in a claim. Emphasis should be placed on ensuring that any functional language does not inadvertently imply an element of user action when that is not intended. Judge Andrews' ruling on IPXL clarifies that a well drafted claim that distinctly separates manufacturing actions from user operations is not only critical in ensuring that one having ordinary skill in the art accurately deciphers when infringement occurs but also in avoiding an IPXL based indefiniteness challenge during litigation.