A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: August 2021

Initial Production of Only 13 E-mails, and Counsel's Shifting Explanations, Results in Sanctions on Patent Defendant

Andrew E. Russell, Aug. 18, 2021
E-mail Production Discovery Dispute

PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails RCA

Yesterday, Magistrate Judge Fallon granted a motion for sanctions against One World Technologies, Inc., a defendant in a patent action, for failing to produce the bulk of its e-mail until 13 months after the plaintiff's initial request.

Defendant One World initially produced only 13 e-mails in response to plaintiff's requests, served back in April 2020. According to a later declaration of counsel, One World's attorneys had received multiple gigabyte's worth of .pst files containing e-mail from the agreed-upon custodians. But they found those files to be corrupted, and they relied on their clients' determination that all but 134 of the e-mails were unrecoverable. …

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Heads Up, D. Del. Practitioners: The Free Ride on Redacting Sealed Exhibits May Be Ending

Andrew E. Russell, Aug. 17, 2021
Protective Order Star Chamber

Is the dam about to break on over-redaction of filings?
Is the dam about to break on over-redaction of filings? Thomas Dumortier, Unsplash

Most patent cases involve a protective order, and the parties tend mark documents other than prior art as confidential or attorney's eyes only. As a result, many of the more substantive filings—particularly discovery motions, summary judgment motions, and pretrial orders—are filed under seal.

Unlike some other jurisdictions, particularly the Northern District of California, the District of Delaware's procedure for filing under seal is not burdensome. Once a protective order is entered, no motion is required to file a document under seal, and the parties simply file redactions within seven days.

Over time, parties have become more and more liberal with their redactions, often heavily redacting sealed …

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Judge Stark Declined to Limit a Plaintiff to Fewer than 27 Asserted Claims for a Jury Trial

Andrew E. Russell, Aug. 16, 2021
Claim Narrowing Case Narrowing

Narrows
Karan Chawla, Unsplash

Case narrowing is an issue that eventually comes up in most patent cases—the idea that each party should have to reduce the number of claims and prior art references at points during the case.

How Claim Narrowing Usually Goes in a Patent Action

If parties want to avoid a dispute down the line, they can include case narrowing in the scheduling order. More often, however, it comes up at some point after the plaintiffs makes its initial election of asserted claims, and the parties start to get an understanding of the scope of the case.

Typically the initial narrowing occurs before claim construction, and a second round occurs afterwards, sometimes around the time of final contentions. …

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August Update on Upcoming D. Del. Jury Trials

Emily DiBenedetto, Aug. 12, 2021
COVID-19 Trial Calendar

Autumn trials are adding up
Kelly Sikkema, Unsplash

The District of Delaware has many more jury trials scheduled in the next two months than it has in recent months, and several of the upcoming trials were originally postponed for COVID-19 reasons. The September calendar looks particularly busy at the moment, but several case dockets indicate steps toward resolving before trial, suggesting that several of these trials may not be on the calendar much longer.

Remaining August Jury Trials

District of Delaware continues to permit multiple simultaneous jury trials, as evidenced by the three trials to begin on the same day this month:

  • 8/16/2021: McClanahan v. Priority 1 Air Rescue Operations Arizona, LP., et al., C.A. 18-1237-CFC-SRF (D. Del.): …
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A Very Long Deposition

Nathan R. Hoeschen, Aug. 12, 2021
Depositions

Technical difficulties
Technical difficulties Glitch While Streaming, Michael Dziedzic, Unsplash

As we've previously discussed the district's local rules and longstanding practice prohibit speaking to a witness about the substance of his testimony during a deposition. Specifically, D. Del. local rule 30.6 states:

From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.

Normally, the application of this rule is pretty straightforward. But what …

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"You Get What You Give": Contention Discovery in Delaware

David M. Fry, Aug. 11, 2021
Motion to Compel Contentions

Tug of War
Merritt Thomas, Unsplash

For many years, the prevailing view in D. Del. has been that "you get what you give" when it comes to contention discovery. In other words, if you want a defendant to serve detailed non-infringement contentions, your infringement contentions should have a similar level of detail.

This standard is built into several of the judges' form scheduling orders, including Judges Stark, Noreika, Burke, Fallon, and Hall. For example, Judge Burke's form provides that:

In the absence of agreement of the parties, contention interrogatories, if filed, shall first be addressed by the party with the burden of proof. The adequacy of all interrogatory answers shall, in part, be judged by the level of detail each party provides; i.e., the more detail a party provides, the more detail a party shall receive.

On Monday, Judge Burke issued an order illustrating the implications of this standard (and the importance of serving detailed contentions).

A defendant moved to compel a response to an interrogatory seeking the plaintiff's detailed validity contentions. Judge Burke granted the motion, but with a catch:

As for the portion of ROG 15 that asks ...
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Covenant Not to Sue Results In Dismissal With Prejudice

Jeff Castellano, Aug. 10, 2021
Covenant Dismissal

Although a plaintiff may seek to dismiss its claims of infringement without prejudice after providing a covenant not to sue, the Court has discretion to impose a dismissal with prejudice, depending on the terms of the covenant and other factors.

In that vein, the plaintiff in a patent infringement suit pending before Judge Andrews argued "that the Court should dismiss its infringement claims without prejudice because the covenant it has provided to [defendant] CSL prevents their reassertion." Judge Andrews rejected this "paradoxical" argument ...

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Judge Andrews Reverses Magistrate Judge's Finding of Prosecution Disclaimer

Andrew E. Russell, Aug. 9, 2021
Magistrate Judges Claim Construction

This remote definitely can't decode compressed video streams by itself.
This remote definitely can't decode compressed video streams by itself. Glenn Carstens-Peters, Unsplash

Prosecution disclaimer can be tough to prove. Practiced prosecution counsel seem to know how to phrase things in such a way that a patent examiner understands them to be different from the claimed invention, but a later court may still find the opposite.

In an opinion today, Judge Andrews reversed a prosecution disclaimer finding by Magistrate Judge Fallon. The patent claims involves a "tethered digital butler" that can perform smartphone-like functions in a lower-cost way by using cheaper hardware that may be "tethered" to a desktop computer, which takes care of the heavy lifting.

Specifically, the claims discuss a "palm held remote," and the parties disputed …

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How Many Hours of Trial Time Do You Get For a Five-Day Jury Trial? Fewer Than You Might Think

Andrew E. Russell, Aug. 6, 2021
Trial KB

Chalkboard Math
Roman Mager, Unsplash

By default, patent cases in Delaware are typically scheduled for a five-day jury trial in the initial scheduling order. Sometimes, however, it seems that parties don't give any further thought about what the actually means until they need to file a pretrial order much later in the case.

Delaware jury trials are strictly timed. Those who are less familiar with how jury trials typically go may expect that they'll have more time than they really will. A simple back-of-the-envelope calculation by someone who is not in-the-know might be:

40 hours per week / 2 sides = 20 hours per side

That would be wrong. The actual, practical number of hours per side for a five-day patent …

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Uncertain Times (ANDA Amendments)

Nathan R. Hoeschen, Aug. 5, 2021
ANDA Stay

ANDA litigation can be an odd beast. You file a case based on a product that a defendant has only applied to manufacture—what then, when the FDA requires an amendment? What of the litigation that may be years in the making and heading into the home stretch?

The somewhat tortured history of Biodelivery Sciences International, Inc. et al. v. Chemo Research, S.L., C.A. No. 19-444-CFC-CJB, gives us several examples of exactly how the Court deals with this situation.

An Early Change to an ANDA Does Not Warrant a New Trial Date

Early on in that case (about 6 months after the scheduling order was entered) one of the defendants—Chemo—received a complete response letter ("CRL") from the FDA requiring them …

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