Apparenly this is a picture of a large magnet, rather than a particle accelerator. Either way, it looks like someone left their binder in it.Brandon Style, Unsplash
We've talked about this before, but it was so long ago that I think it's worth pointing out again. Typically, left to their own devices, parties in patent cases will schedule initial contentions, then claim construction and a Markman hearing, and then final contentions.
In theory, the final contentions can then reflect claim constructions. In practice, it doesn't always work out that way, given that a Markman opinion may come out after the hearing anyway. If you want to have constructions before final contentions, you need to leave a fair …
Lawyers have the odd habit of speaking in our own, often pointless, patois. Why do we say inter alia? Ceteris paribus? De benne esse? Is it all to save the occasional word through the vagaries of Latin grammar? Is it a plot to make our work less comprehensible to the layman, and thus to puff ourselves up? Are we just word nerds?
Portrait of the author as a young manAI-Generated, displayed with permission
The issue is often worsened when legalese butts up again other technical jargon, as in a patent specification. Hence the constant claim construction battles over the "plain and ordinary meaning" of a crumfustulator among wild-animal podiatrists.
(Eds. note—should have saved the picture for the crumfustulator. You'll just have to use your imaginations for that one)
But what happens when the patent does use words with a plain meanings to both the expert and the novice? Would that intriguing state of affairs be a boon or a curse in a patent case?
Last week's opinion in Lab. Corp. of Am. Holdings v. Natera, Inc., C.A. No. 21-669-GBW (D. Del. June 5, 2025) (Mem. Order) shed some light on the question. The plaintiff there had a source code expert who opined on how the code operated, but explicitly did not provide any opinion on whether the relevant product infringed (that was done by a different expert who relied on the source code expert's report). Indeed, he testified that when he wrote the report he hadn't even read the Court's claim construction opinion. Nevertheless, his report used several common phrases contained in both the patents and the Court's Markman Order including "sequence reads" and "combining."
Worst place I've seen for a meet-and-confer? The courtroom, during a break in a trial -- when a juror from the trial wandered in.AI-Generated, displayed with permission
Delaware's Local Rule 7.1.1 requires, in cases that don't involve pro se parties, that the parties must have a verbal meet-and-confer before either party files a non-dispositive motion:
Except for civil cases involving pro se parties or motions brought by nonparties, every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. …
Earlier this week, visiting Judge McCalla issued an order denying a motion to preclude a third-party factual declaration. Along the way, the Court addressed an ethics rule that should probably come up more often than it does.
As set forth by the Court, ABA Model Rule 3.4(f) precludes attorneys from requesting that third parties withhold relevant information from another party:
Model Rule 3.4(f) states a “lawyer shall not . . . request a person other than a client to refrain from voluntarily giving relevant information to another party.”
Arctic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158-JPM, at 4 (D. Del. June 4, 2025).
The Delaware Chapter of the Federal Bar Association held its annual lunch today and, as usual, the District and Bankruptcy Courts provided updates on the state of the courts. There wasn't a lot of new information this year, but here are some quick notes on some relevant items:
District court case filings here in D. Del. were down only 2%, compared to 14% nationally
Criminal filings were up 14%
There was a 7% drop in patent case filings, but we still have 39% of all ANDA cases
We are still the biggest court for competitor case filings
The Court strives to be fair and not partial to either plaintiffs or defendants
Entering into a stipulation is easy. You say we both agree to move this date or not assert that patent, and normally the court signs it and everyone goes about their business.
Getting out of a stipulation is harder.
AI-Generated, displayed with permission
If you're wondering just how hard, I present to you Judge Bataillon's opinion this week in Astellas Pharma Inc. v. Zydus, Inc., C.A. No. 20-1589-WCB (D. Del. May 30, 2025).
In that case Judge Bataillon resolved the rare "motion for relief from stipulation." The parties had long ago entered into a case narrowing stipulation in which the defendants dropped their obviousness and anticipation defenses.
Following a trial, then an appeal and a remand, the case was back in Judge Bataillon's hands, and was a bit more complicated. In the interim, it had been consolidated with related cases against other defendants and new claims from a related patent.
Because those other claims and other defendants were not bound by the prior stipulation, Lupin and Zydus argued that ...
This is something you don't see often. In Kaneka Corporation v. Designs For Health, Inc., C.A. No. 21-209-WCB (D. Del.), the plaintiff contacted the Court after defendant's counsel offered only a single potential date for the deposition of the defendant's expert, and that date was just five days (and three business days) after the expert's non-infringement report.
The case has been going since 2022, with many twists and turns and amended scheduling orders. One of the most recent scheduling orders set deadlines of May 16 for opening expert reports and May 30 for responsive reports, with the close of expert discovery to close on June 13.
"Back in my day, we locked our first year associates in a room stacked with banker's boxes for weeks on end! None of this 'search term' mumbo jumbo!"AI-Generated, displayed with permission
Judge Williams issued a lengthy decision today in GlaxoSmithKline Biologicals SA v. Pfizer Inc., C.A. No. 24-512-GBW (D. Del.), addressing a number of disputes relating to proposed protective and ESI orders in multiple related actions.
There is a lot of interesting material in the decision, but one ruling in particular caught my eye, because it's an issue that comes up a lot: whether a party has to use search terms to search ESI.
Most, but not all, of our judges have adopted the Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI")—a document that, despite it's catchy name, is usually referred to as the "Default Standard."
The Default Standard places the option of using search terms in the producing party's hands:
If the producing party elects to use search terms to locate potentially responsive ESI, it shall disclose the search terms to the requesting party. Absent a showing of good cause, a requesting party may request no more than 10 additional terms terms to be used in connection with the electronic search. Focused terms, rather than over-broad terms (e.g., product and company names), shall be employed. The producing party shall search (i) the non-custodial data sources identified in accordance with paragraph 3(b); and (ii) emails and other ESI maintained by the custodians identified in accordance with paragraph 3(a).
Thus, producing parties sometimes decide not to use search terms, and to instead review and produce their ESI the old-fashioned way (potentially including hours of brutal contract-attorney document-by-document review).
Occasionally the opposing party will ask the producing party to use search terms. In cases governed by the Default Standard, I would expect a producing party to feel little pressure in responding "no," since the Default Standard recognizes that using search terms is optional.
Disco on disco, babyAI-Generated, displayed with permission
Discovery on discovery -- i.e., discovery asking how you're collecting documents, or when you started your litigation hold, or why all your documents smell like bubblegum -- is generally not allowed in Delaware (and most other districts I'm aware of). To get that sweet, sweet, disco on disco, you need to make a "threshold showing that significant, relevant, and non-cumulative information has been withheld or overlooked." British Telcoms. PLC v. IAC/Interactivecorp,. C.A. No. 18-366-WCB, 2020 U.S. Dist. LEXIS 37271, at *21 (D. Del. Mar. 4, 2020). This is a pretty big ask in the context of a discovery dispute, so we only rarely see the issue come up.
We missed an interesting decision from Judge Fallon last month. In Marquinez et al v. Dole Food Company Inc., C.A. No. 12-695-RGA-SRF, D.I. 582 (D. Del. Apr. 24, 2025), Judge Fallon rejected an attempt to "recycle" an expert opinion from a prior, related action.
Apparently the plaintiff had previously retained the experts, and attempted to re-use their prior expert opinions, by admitting the transcript of their prior testimony:
The Hendler Declaration confirms that both witnesses were formally retained as expert witnesses in a prior litigation, they served expert reports in the prior litigation, and both were asked but declined to serve as retained expert witnesses in this case. (D.I. 580 at ¶¶ 9-13) Plaintiffs …
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