More and More, case narrowing has become a fact of life in Delaware. What was once an ad-hoc process recorded in a handful of unpublished orders has become more formal, and the various by-laws and codicils that govern it are congealing into something knowable, citable, and inevitable.
But we're not there yet, and even I can still be surprised by a novel ruling on the intricacies of the process. Such was the case in Tonal Systems, Inc. v. iFIT Inc., C.A. No. 20-1197-VAC-CJB, D.I. 100 (D. Del. May 16, 2022). Following an earlier dispute on the schedule for narrowing, The parties there were set to narrow of both claims and prior art, following the disclosure of initial infringement and invalidity contentions. So far, normal.
The wrinkle was that the narrowing schedule left more than 30 days between the service of Defendant's initial invalidity contentions and the deadline by which they had to narrow their prior art. They thus took the clever step of serving a rog requesting plaintiffs validity contentions -- a response to which would have been due before Defendant had to pick their prior art arguments. Plaintiffs objected, stating "[t]he Court ordered [Defendant] to narrow its Section 102/103 invalidity case to no more than 50 prior art references and 75 grounds (D.I. 59) by May 4, 2022. Once [Defendant] has narrowed its invalidity case on May 4, 2022, [Plaintiff] will supplement its answer to this Interrogatory within 30 days." Naturally, a dispute followed with defendant arguing that it should not have to narrow its prior art references until plaintiff responded to this timely interrogatory.
Judge Burke ultimately sided with the plaintiff, holding that they did not have respond to the validity rog until after Defendant narrowed their prior art, stating:
The Court agrees with iFit's position that so long as iFit engaged in the substantial work necessary to produce initial infringement contentions, and Tonal then engaged in the substantial work necessary to produce initial invalidity contentions, as the parties did here, then that work would sufficiently establish a fair record upon which iFit could then narrow the number of asserted claims, and for Tonal to then narrow the number of prior art references and grounds. In light of this, the Court's prior order on case narrowing had required Tonal to narrow its invalidity case "by May 4, 2022" (i.e., after these two sets of contentions had been served); that order did not say that Tonal should narrow its invalidity case "by May 4, 2022 (but only if iFit also provides validity contentions by that date)[.]" (D.I. 59) Accordingly, within 7 days of the date of this Order, Tonal shall narrow its Section 102/103 invalidity case to no more than 50 prior art references and 75 grounds ("Tonal's First Narrowing").
Interestingly, the order did not directly address burden or any of the other normal grounds for objecting to an interrogatory, but instead treated the interrogatory as merely an unscheduled portion of the claim narrowing process.
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