A Blog About Intellectual Property Litigation and the District of Delaware


Judge Bryson Sua Sponte Demands Explanation After Party Files Its Brief Five Hours After the 5pm Deadline

Andrew E. Russell, Dec. 15, 2023
5pm Deadline Filing Deadline

Clocks
Jon Tyson, Unsplash

The District of Delaware has a 5pm ET filing deadline. This was originally instituted as a 6pm deadline, back in 2014, to improve quality of life for practitioners here. As I've said before—it has been extremely successful.

The 5pm deadlines keeps young associates and staff from having to unexpectedly stay until midnight, disrupting family plans (I recall this happening about once a week). It also keeps clients from having to pay attorneys and staff to sit around and wait for filings. And everyone quickly adapted to working towards either a 5 or 6pm deadline rather than a midnight deadline.

That said, whether the deadline is 5pm, 6pm, or midnight, it's not uncommon for parties to miss it by a few minutes. Often these delays relate to the fact that PACER and CM/ECF tend to slow down quite a bit around 5pm, especially before weekends, as everyone tries to file things simultaneously.

Normally this is not cause for panic. Unlike some jurisdictions, judges in D. Del. generally have not taken an interest in enforcing exact, precise compliance with the 5pm deadline. I have seen parties miss the 5pm by a few minutes countless times, with no response from the Court. Most Delaware counsel seem to agree that it's not worth the Court's or the parties' time to seek a remedy from the Court for a deadline that was missed by only a few minutes.

5 Hours May Be a Bit Much

So I thought it was worth pointing out an instance this week where a party pushed it to far. In Dental Monitoring v. Get-Grin Inc., C.A. No. 22-647-WCB (D. Del. Dec. 13, 2023), a party filed a letter brief at 10:14, and an unopposed motion for leave to file the brief late:

On Tuesday, December 5, 2023, the parties advised the court by email that they had a discovery dispute in this case. They suggested a briefing schedule granting the plaintiff one week to file its letter brief, followed by the defendant’s letter brief one week later. The court directed the parties to file their letter briefs on a shorter briefing schedule, giving the plaintiff until 5 p.m. Eastern Time on Friday, December 8, 2023, to file its three-page letter brief, followed by the defendant’s responsive three-page letter brief at 5 p.m. Eastern Time on Tuesday, December 12, 2023, and an optional reply brief for the plaintiff, to be filed by 5 p.m. Eastern Time on Wednesday, December 13, 2023.
The plaintiff filed its opening letter brief on time. The defendant did not. Instead, at 9:04 p.m. Eastern Time, after the deadline had passed, the defendant filed a motion to extend the time for filing its brief until 11:59 p.m. on December 12, 2023. The plaintiff did not oppose the motion, provided it was given a one-day extension for filing its one-page reply letter. At 10:14 p.m., more than five hours after the deadline, the defendant filed its responsive letter brief.

Id. at 1. Judge Bryson (sitting by designation) criticized the motion for an extension because ...

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Quis Custodiet Ipsos Custodians

Nathan R. Hoeschen, Dec. 14, 2023
Initial Disclosures

Paragraph 3 of Delaware's Default Standard for Discovery requires the parties to disclose, early in the case, "[t]he 10 custodians most likely to have discoverable information in their possession, custody or control, from the most likely to the least likely."

At a glance, this provision seems to require disclosing more or less the same universe of people as Rule 26(a), which requires disclosure of "the name and, if known, the address and telephone number of each individual likely to have discoverable information . . . ."

There wasn't really a relevant pic for this, so here's a cute bird
There wasn't really a relevant pic for this, so here's a cute bird Nate Hoeschen, displayed with permission

A recent decision from Judge Fallon in DataCore Software Corporation v. Scale Computing, Inc., C.A. No. 22-535-GBW-SRF (D. Del Nov. 30, 2023) (Mem. Order), however, illustrates one important difference between the two disclosures.

The Plaintiff there listed the inventors of the asserted patent on both their Paragraph 3 and Rule 26(a) disclosures. None of the inventors, however, were currently employed by the Plaintiff. Accordingly, the plaintiff had none of their ESI to produce to the Defendants. After realizing this, the defendant moved to replace those custodians with others who might actually have documents.

Judge Fallon rebuked Plaintiff for including the inventors on its paragraph 3 disclosures:

this ruling should not be construed to condone Plaintiff's identification of five ESI custodians who were later discovered to have no ESI. Plaintiff's suggestion that no large company retains ESI for twenty years, when the Asserted Patent was filed, begs the question of why these non-employee inventors were identified by Plaintiff as ESI custodians in the first instance.

Id. at 6-7.

As you might gather from the above, however, the Court actually denied the defendants motion to replace the custodians for two reasons. First, the plaintiff waited until well after the close of fact discovery to raise the dispute:

There is no evidence on the present record that Defendant challenged Plaintiff's Paragraph 3 designations after those designations were made, even though six of the nine designees are named inventors of the Asserted Patent, and only two of those inventors were highly ranked on the Paragraph 3 disclosure. Moreover, Defendant did not challenge the sufficiency of the custodial designations or production when the deadline for substantial completion of document production expired on June 1, 2023. Instead, Defendant first raised an issue regarding the lack of ESI production for five of the nine custodians on October 9, 2023, more than a month after the close of fact discovery.

Id. at 4.

Second, they failed to explain why they needed the particular additional custodians they selected:

Instead of targeting one or two additional custodians likely to have relevant information, Defendant lists five proposed replacement ESI custodians without adequately explaining why each of these individuals are believed to have relevant, noncumulative information tethered to the claims asserted in the case.

Id. at 5.

Pro-tip - if you see a bunch of inventors on a paragraph 3 disclosure, challenge that right quick.

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Judge Choe-Groves of the Court of International Trade Joins Delaware's List of Visiting Judges

Emily S. DiBenedetto, Dec. 13, 2023
Visiting Judges Standing Orders

Just imports - no exports? No, he's an importer and exporter.

Judge Choe-Groves, of the Court of International Trade, has been newly added to the list of Delaware’s visiting judges. In early November, she was reassigned a first handful of cases.

[Thanks to an unnamed colleague who mentioned this fact in passing today and expressed surprise that we hadn’t highlighted it on the blog. Keep giving us feedback - we love it!]

Judge Choe-Groves has served as a visiting judge in several other jurisdictions including the Southern District of New York, District of Idaho, Northern District of Oklahoma, and United States Court of Appeals for the Ninth Circuit.

Not all of Judge Choe-Groves’ visiting assignments have been patent cases. In fact, most of her earlier assignments appear to be …

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Chief Judge Connolly Denies Daubert Motion Regarding Five Experts, Holding That Party Should Have Filed Five Separate Motions

Andrew E. Russell, Dec. 13, 2023
ETSI Congestion

Five Candles
Steve Johnson, Unsplash

Chief Judge Connolly's scheduling order requires parties to rank their Daubert motions, and gives the Court the discretion to automatically deny all lower-ranked motions if it denies any one motion. In other words, if a party files five Daubert motions, and the Court grants the first-ranked motion but denies the second, the Court can then deny motions three, four, and five:

If the Court decides to deny a motion filed by the party, barring exceptional reasons determined sua sponte by the Court, the Court will not review any further Daubert motions filed by the party.

It has a similar provision for summary judgment motions Thus, it's important that parties split up their motions and rank them. …

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... Because Of The Continuation

Nathan R. Hoeschen, Dec. 12, 2023
Post-Filing Willfulness

#EatFresh
#EatFresh AI-Generated, displayed with permission

Last week, while I was wrapping presents with all the care and skill of a subway sandwich artisan, Judge McCalla weighed in on the issue of whether a complaint can establish knowledge for the purpose of willfulness, dealing with a novel argument in the process.

To begin, he sided with Chief Judge Connolly and Judge Williams, holding that the complaint cannot establish knowledge for the purpose of a claim of willful infringement:

In other words, post-suit knowledge alone is insufficient to sustain a claim for willfulness even at the motion to dismiss stage

Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158, D.I. 50 at 6 (D. Del. Dec. 8, 2023).

The …

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"While opting to seek forgiveness rather than permission may not rise to the level of bad faith, there are consequences to such behavior . . ."

Andrew E. Russell, Dec. 11, 2023
MTS Motion to Strike

"Please, dear Court, don't strike our new argument that totally prejudices the other side." Lampos Aritonang, Unsplash

It can sometimes be tough to decide whether to ask the Court permission, or to just do something. The answer can vary depending on the thing you are doing and the judge.

But certain things clearly require permission. Say, for example, offering a "supplemental" expert report with a new damages calculation almost two years after the reply expert report, and only 19 days before trial:

There is no dispute that MED-EL failed to disclose Barry Sussman’s most recent damages calculations based on survey results (set forth in Paragraph 11 of his Supplemental Expert Rebuttal Report) during the expert disclosure period. Indeed, the …
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A Quick Note on How to Request Permission to Bring Electronics into the Courthouse in D. Del.

Andrew E. Russell, Dec. 8, 2023
Personal Electronics

Maybe leave the headphones at the office.
Maybe leave the headphones at the office. Christopher Gower, Unsplash

Earlier this year, the District of Delaware implemented a new policy of requiring bar cards, or an order from the Court, to bring electronics into the courthouse.

Courthouse staff have accepted out-of-state bar cards just fine. But one recurring issue is that some states simply do not issue bar cards, or only issue them optionally. Not all out-of-state attorneys have them.

As a result, in the lead up to hearings, parties often file stipulations or unopposed motions for leave for various people to bring electronics into the courthouse. The Court usually—but not always—grants these.

This post is just a reminder that, in such stipulations and motions, it's best …

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How Not To Save Words

Nathan R. Hoeschen, Dec. 7, 2023
Page Limits Summary Judgment

Many years ago now (I'm so old), then-Judge Connolly (now Chief Judge Connolly) brought forth onto this district the gift of the word limit (at least in cases assigned to Judge Connolly). Nevermore would Delaware counsel spend hours futzing (technical term) with fonts and orphan control (it really sounds ominous to put those words together) in an effort to get our briefs down to the mandated 20 pages (this paragraph has waaay too many parentheticals).

For a time it seemed we would have a new golden age of beautiful briefs where every section began proudly atop its own page.

(hums patriotic tune while shedding a single tear)
(hums patriotic tune while shedding a single tear) National Archives

But alas, the conversion to a word limit spawned its own set of tactics to limit the number of words that must be counted. One such tactic—borrowed, in fact, from the days of the page limit—is the use of a table of abbreviations at the front of the document. Judge Connolly's opinion yesterday in Synopsys, Inc. v. Bell Semiconductor, LLC, C.A. No. 22-1512-CFC (D. Del. Dec. 6, 2023) (Mem. Op.), neatly illustrates the pitfalls of this method.

The infringement defendant, Synopsis (plaintiff in the DJ action), moved for SJ of no indirect infringement. As a result of filing three other SJ motions and two Dauberts, Synopsis was running up against the combined word limit. Accordingly, each of the SJ briefs had a table of abbreviations right after the table authorities, seting forth the definitions of, among other things the "asserted claims." The body of the brief, however, did not specifically mention this table and just referred to the Asserted Claims generally throughout.

Chief Judge Connolly found this practice unclear, particularly because ...

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Court Grants Motion to Withdraw as Counsel, Leaving Corporate Defendants Unrepresentated And at Risk of Default

Andrew E. Russell, Dec. 6, 2023
Motion to Withdraw Litigation

Any time someone moves to withdraw, the question is: Will the client be able to convince the next set of lawyers that the client will pay?
Any time someone moves to withdraw, the question is: Will the client be able to convince the next set of lawyers that the client will pay? Micaela Parente, Unsplash

Having to move to withdraw because a client won't pay is the absolute worst. You have ethical duties to your client, but you can't work for free. You are stuck in a position where you need to tell the Court enough that it will let you out—but you can't tell it everything without violating the ethics rules. The local rules also place some procedural hoops in the way of a motion to withdraw. It's tricky!

Even worse is when the other side opposes your withdrawal, because then you are potentially …

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Fun With Fees Discovery

Nathan R. Hoeschen, Dec. 5, 2023
Litigation Funding

Typically, if you want know how much the opposing counsel is spending on a case, you can come to a rough estimate based on how much they seem to be filing. Alternatively, you can just ask, which usually goes something like this:

Q. So . . . uh, how much are you spending?
A. None of your beeswax nerd.

Fin.

Hold your applause please
Hold your applause please AI-Generated, displayed with permission

Over the summer, however, there was a rather unique case where the Court ordered the production of documents showing the plaintiffs' costs of litigation thus far and future estimates.

It started with an offhanded request in a discovery dispute letter. The defendant requested production responsive to RFPs on litigation funding documents generally, which they claimed were "relevant to damages and, as this Court has found, for purposes of cross-examination about bias." Oasis Tooling, Inc. v. GlobalFoundries US Inc., C.A. No 22-312-CJB, D.I. 184. The briefing on the issue was no more than a quarter-page.

Judge Burke granted the motion—which at this point clearly implicate litigation costs—in a brief oral order. Id., D.I. 211. Thereafter plaintiff produced the litigation funding agreement (redacted to remove the expected spend at various case milestones) but refused to produce the actual invoices or provide an overall amount paid to date.

Hence another discovery dispute aimed at "enforcing" the Court's ...

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