A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Discovery Dispute

A Citation for the Petty

Nathan R. Hoeschen, Feb. 23, 2023
Discovery Dispute Scheduling Order

Delaware regulars will know that a stipulation to extend a deadline will—with certain limited exceptions—usually be granted as a matter of course. Moreover, the common wisdom is that one ought to agree to a short extension of a discovery or briefing deadline, absent some strong reason not to. Such is the DELAWARE WAY (TM).

Sometimes, though, a request for an extension just rubs you the wrong way. Maybe they ask late, maybe they jerked you around when you asked for an extension last time, maybe you saw them double-dip a chip at the last bar mixer and you just can't get over it. In those times, it's nice to be able to point to case where the court denied a …

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Another Order to Produce Litigation Funding Discovery—This Time Against What Looks Like a Practicing Entity

Andrew E. Russell, Dec. 5, 2022
Litigation Funding Discovery Dispute

Money
Pepi Stojanovski, Unsplash

Last week, Chief Magistrate Judge Thynge issued an opinion addressing a motion by accused infringers to compel the patentee to produce litigation funding discovery and opinion letters relating to the patents-in-suit.

While it involves litigation funding discovery, this case is a bit different from the recent Mavexar hearings. Here, the patentee is MHL Custom, Inc. who, it appears, is a practicing company and not an NPE. Beyond that, the case is still active (unlike some of the Mavexar cases) and the discovery is sought by the defendant, not the Court itself. In other words, this is a more typical ruling.

But the opinion is still notable. The Court granted the accused infringers' motion for three categories …

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A Handy Transcript

Andrew E. Russell, Nov. 9, 2022
Contentions KB

Bookmarks
Chiara F, Unsplash

I thought I'd share an old transcript that has come in handy a number of times since it issued back in 2013, where Judge Andrews made a helpful ruling about how and when patentees must respond to conception date interrogatories—an issue that comes up frequently.

In Vehicle Interface Techs., LLC v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA (D. Del.), the defendant filed a discovery dispute to compel a full response to an interrogatory asking for the date of conception and reduction to practice.

The patentee had responded, but the answer was not very helpful. According to the discovery dispute letter:

[The patentee] stated that the sole inventor . . …
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Disagreement With the Substance of Infringement Contentions Does Not Mean Those Contentions Are Inadequte—And Can't Be the Basis to Withhold Discovery

Andrew E. Russell, Oct. 31, 2022
Motion to Strike MTC

"I'm a motion to strike, not a stealth motion for summary judgment" Braydon Anderson, Unsplash

One of the more common District of Delaware questions you get as local counsel is "can we move to strike opposing counsel's (infringement or invalidity) contentions?"

That may seem like a simple question, but the answer depends many things, like: What is wrong with those contentions? How were our contentions in comparison? Which judge is this in front of? How long ago did they serve them? (And, sometimes, things like: Why are you asking this now, when we are two weeks from trial?)

Challenging contention disclosures can be tough even if you have what seem like fairly good arguments. The Court is generally not …

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Non-Infringement Is No Reason to Withhold Core Technical Documents, At Least When the Infringement Allegation is Not Baseless

Andrew E. Russell, Sept. 7, 2022
Infringement Contentions Core Technical Documents

Television
Ajeet Mestry, Unsplash

Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:

Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.

He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:

The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.

He also rejected the ...

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Source Code Is Not a Core Technical Document

Andrew E. Russell, May 18, 2022
Source Code Discovery Dispute

Source Code
Markus Spiske, Unsplash

Delaware's Default Standard requires defendants to produce "core technical documents" on the accused products, even absent discovery requests from the plaintiff.

These core technical documents "includ[e] but [are] not limited to operation manuals, product literature, schematics, and specifications." Often parties interpret this as a relatively light production of just the core non-public material that a plaintiff needs to make out its infringement contentions.

Sometimes, however, plaintiffs will push back and demand production of source code, saying that a defendant must produce source code as part of its core technical documents.

This is a recurring issue, so I thought it was worth noting that, in Judge Fallon's discovery dispute order that we discussed earlier, she also …

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What Does a Party Need to Include in a Patent Complaint? Definitely All Asserted Patents...

Andrew E. Russell, May 18, 2022
Default Standard Twombly

Hawk
Mathew Schwartz, Unsplash

One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"

It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.

Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .

The Court normally permits parties to later add or remove asserted claims or accused products as ...

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"Remember That Time a Plaintiff Tried to Serve 23,668 RFAs?"

Andrew E. Russell, May 10, 2022
RFAs Discovery Dispute

"Our RFAs will blot out the sun!" Possessed Photography, Unsplash

I have a feeling that, when the question of "how many RFAs can we serve if there is no limit" comes up going forward, we are all going to remember this case.

In FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-WCB (D. Del.), plaintiff apparently served 23,688 RFAs on the defendant, each one requesting an admission that a document produced by the defendant was authentic.

You may be thinking "Was this all in one set of RFAs?? Did they type this all out?!?" and it appears that the answer is "yes." According to the Court, the plaintiff served a "3,604-page document entitled 'First Requests for Admission of Authenticity.'" That's 9.1 RFAs per page.

I have to imagine they used a computer script or something similar to draft these. I hope they didn't condemn a poor associate or paralegal to their office for a week to type these out.

In any case, the defendant—shockingly!—objected that having to respond to 23,668 individual RFAs was "abusive, unreasonable, and oppressive." Judge Bryson ...

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Reminder: "Relevancy Redactions" Are Not a Thing

Andrew E. Russell, May 3, 2022
Discovery Dispute Document Production

REDACTED PAGE
Jeff Castellano

Judge Andrews resolved a discovery dispute yesterday where plaintiff challenged defendant's "relevancy redactions." According to the plaintiff:

[Defendant] DuBois routinely applied, and refuses to remove, so-called relevancy redactions to the few documents it has produced in this case. . . . The DuBois redactions that [plaintiff] Ecolab has challenged are not addressed to preserving any privilege and are improper, particularly in view of the protective order that serves to safeguard DuBois’ confidential information in this case.

Judge Andrews seems to have shot this down quickly, holding that the defendant cannot redact for reasons other than privilege:

ORDER: By no later than May 30, 2022, Defendant shall produce to Plaintiffs all documents redacted for reasons other than preservation of …
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Plaintiff Loses Discovery Dispute Because of Its “Basic . . . Playbook” to Not Produce Material Until Threatened, Then to Back Down

Andrew E. Russell, May 2, 2022
Discovery Dispute

Arrow Bullseye Target
Ricardo Arce, Unsplash

I came across an interesting discovery dispute transcript that hit the docket last week in Peloton Interactive, Inc. v. Echelon Fitness, LLC, C.A. No. 19-1903-RGA (D. Del.).

Plaintiff Peloton had asserted the patents-in-suit against another defendant in another action in E.D. Tex., and ultimately settled that casein part by buying the defendant's business for $24.5m.

The defendant here, Echelon, asked plaintiff to produce various communications related to that previous litigation and sale, including communications among counsel.

Plaintiff initially refused, until defendant brought a motion to compel; then plaintiff agreed in exchange for withdrawal the motion. But plaintiff never produced the documents.

Defendant moved again, noting the prior history. The Court ordered production: …

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