It's always good to know where the lines are. Today, Judge Williams awarded attorneys fees after the plaintiff in a Defend Trade Secrets Act action maintained an "objectively specious" argument after the close of fact discovery:
A claim is objectively specious where there is a complete lack of evidentiary proof from the party suing. . . . [T]he Court agrees with [defendant] Backer that [plaintiff] ZIM litigated this matter with knowledge that its claims were objectively specious. While Backer contends that ZIM knew that its claims were objectively baseless when it filed the Complaint, the Court finds that ZIM understood that its claims were objectively specious by the close of fact discovery on January 12, …
The judges' form scheduling orders in D. Del. have deadlines for "substantial completion" of document production. Generally, this deadline is set so that the parties can get most of their documents out and then proceed to depositions.
This tends to be one of the key deadlines in cases, and it often the subject of disputes. We've talked before about how a party cannot withhold a category of documents until after the deadline, and how waiting to produce things until after the deadline can result in exclusion.
Parties typically agree to make "rolling productions" up until that deadline. But, sometimes, the "rolling production" is a trickle, with the bulk of the documents coming just before the deadline—leaving the other side to scramble to review everything in time for depositions.
This week we got some useful precedent from Judge Burke about how that technique is inappropriate, and how parties need to spread their "rolling" production out proportionally:
ORAL ORDER: The Court, having reviewed Plaintiff's discovery dispute motion ("Motion"), (D.I. 73), and the briefing related thereto, (D.I. 70; D.I. 72; D.I. 82), hereby ORDERS that the Motion is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) The Court agrees with Plaintiff that Defendants should make an orderly and proportional production of their ESI discovery, such that they should not be dumping the bulk of those remaining documents on Plaintiff at or near the December 5 substantial completion deadline. But the Court sees that Defendants have begun to move forward with those productions (perhaps spurred by Plaintiff's Motion), and it also agrees with Defendants that it is not in a good position to set an arbitrary number of ESI documents that should be produced each X days on Y dates.; and (2) So the Court will simply order that between now and December 5, Defendants should produce their remaining ESI discovery on a consistent, roughly proportional, rolling basis, such that Plaintiff does not get the bulk of the remaining documents at or near the deadline. Ordered by Judge Christopher J. Burke on 11/6/2023. (mlc) (Entered: 11/06/2023)
State Farm Mutual Automobile Insurance Co. v. Amazon.com, Inc., C.A. No. 22-1447-CJB, D.I. 91 (D. Del. Nov. 6, 2023).
The plaintiff had sought an order compelling the defendant to produce "50,000 documents per week" over the 7 weeks that were then remaining before the substantial completion deadline. The Court rejected that part of the request, possibly because the defendant argued it didn't have all that many documents.
But the order makes clear that the defendant has to roll out what it does have in a "roughly proportional, rolling basis" before the final deadline. Nice!
I've attached the order below so that we can all find it next time this issue comes up in a discovery dispute.
The doctrine of equivalents is often treated as the legal equivalent of going "c'mon....c'mon! its all the same."
AI-Generated, displayed with permission
It's not uncommon to see it included in infringement contentions in terms that just note that, to the extent the noodlewiggler (TM) does not literally infringe claim 38 of of the '123 patent, it's insubstantially different, and performs the same function in the same way to achieve the same result, and is lame."
Judge Andrews issued an opinion today that neatly illustrates the problem with that tactic. The defendant in Carrum Techs., LLC v. Ford Motor Comp. C.A. No. 18-1647-RGA (D. Del. Nov. 9, 2023) (Mem. Op.) moved for summary judgment on the basis of a …
"Yes, your honor, it literally meets the claim elements of an 'animal' in a 'structure' with a 'gable roof.' But under the reverse doctrine of equivalents . . ."Go to Tomas Tuma's profile Tomas Tuma, Unsplash
The reverse doctrine of equivalents and ensnarement are great for accused infringers, but for whatever reason they often seem to get set by the wayside.
Reverse doctrine of equivalents has a terrible name. It's really just the argument that even if the accused product meets the literal elements of the claim, it does not infringe because it is performs the claimed function in a substantially different way than the claimed invention.
The parties in Stragent, LLC v. Volvo Car USA, LLC, C.A. No. 22-293-JDW (D. Del.) filed a joint appendix of exhibits alongside some supplemental SJ briefing. The defendant filed a motion to seal its SJ brief, which apparently discussed internal software specifications.
The Court granted the motion to seal the SJ brief, but criticized the brief in strong terms:
Volvo seeks to file its supplemental summary judgment brief under seal, but it’s supporting brief doesn’t say much. For example, while Volvo makes generic references to “proprietary commercial, financial and business information” and …
In D. Del., stipulated extensions of the schedule are routine and are normally granted, with occasional exceptions. Usually, when the Court grants them, it results in an unremarkable order like this:
There's really nothing there. Occasionally, though, it results in an order like the below. Can you spot the difference?
Can you see it? It's tiny. The only difference is that the docket number ("52") is a link. I don't blame you if you missed it.
Usually, clicking on that link, you'll find a plain-Jane stamped or signed version of the stip as filed. Nothing remarkable or meaningful at all. It feels wrong to bill .1 hours to a client to click on the stip and look at …
When you think about it, pleading on the basis of "information and belief" is sort of funny. What else are you going to plead on? Hopes? Dreams? The lost souls of wayward lawyers past?
I just can't get the timing right on these Halloween posts . . .AI-Generated, displayed with permission
In any case, its something you see all the time, and it usually goes unchallenged. Today though, Judge Bryson issued an opinion explaining the situations where such pleading is appropriate, and those where doing so is grounds for dismissal.
The test boils down to, are the facts you plead "on information and belief" uniquely within the defendant's possession, or are supported by other factual allegations (plead not on information and belief, but on immutable and unchallengeable fact known amongst the plaintiff's brood for countless generations, all hail facts, all hail allegations)?
The use of “information and belief” pleading in the complaint is consistent with the purposes previously approved by the Third Circuit and other courts. The “information and belief” allegations relate to limitations that address the process for manufacturing the accused products, information to which DSM is not privy, or details regarding the composition of Honeywell’s products that may be difficult to ascertain by testing the finished products, but which would be readily known to the manufacturer. Those allegations are therefore made in circumstances in which the factual information in question is peculiarly within the defendant’s knowledge or control. Moreover, the various other allegations that are not made on information and belief, such as the allegation that the SPECTRA Blue products exhibit characteristics substantially similar to the characteristics of the multi-filament yarns of the ’532 patent, constitute factual allegations that make DSM’s “theoretically viable claim plausible.”
DSM IP Assets, B.V. et al v. Honeywell International, Inc., C.A. No. 23-675-WCB, 10 (D. Del. Nov. 2, 2023) (Mem. Op.).
The Court also made a note that pleading willfulness on information and belief is ...
Ouch. This week in MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 30, 2023), Judge Wolson addressed a motion in limine to exclude testimony from both of the accused infringer's witnesses on their prior use defense.
The accused infringer didn't offer expert testimony at all on invalidity, according to the briefing. D.I. 399 at 3. Instead, it asserted a prior use defense in its contentions, presumably intending get it in through fact witness testimony.
The patentee first moved in limine to preclude the defense due to a lack of expert testimony. But the Court held that a party can present an invalidity defense without it—and compared the motion to an improper SJ motion:
The first part of AB’s Motion In Limine #1 is a summary judgment motion in disguise. MED-EL asserts invalidity in this case. If AB had a basis to argue that the absence of expert testimony dooms that claim, then it should have moved for summary judgment on the issue. It didn’t, and it can’t use an in limine motion to dispose of MED-EL’s claim. If AB believes that the lack of expert testimony means that MED-EL cannot meet its burden, then AB can seek relief under Rule 50 at the close of MED-EL’s case at trial.
(We've talked before about the risks of bringing what should be an SJ motion as a MIL.)
In other words, offering no expert testimony could be OK. The accused infringer, however, also failed to ...
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