A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

Discovery Motions, Like Chocolate, Should Not be Kept in Your Back Pocket

Nathan R. Hoeschen, Oct. 29, 2020
Motion to Strike Discovery Dispute

You really have to use it soon
Brown Chocolate, Kaffee Meister, Unsplash

More often than not, when the Court has a hearing on discovery disputes, both sides bring competing issues. No one likes to be totally on defense for an entire hearing, and even bringing a marginal dispute allows you to undermine the opposing party by pointing out their own wrongdoing. And of course, there's always the chance that you'll win.

Judge Burke showed the limits of this calculus earlier this week—it only works if you convince the Court you've got a real dispute. And It's very hard to do that if you admit that you wouldn't have filed your motion if the other side hadn't moved first.

That's what plaintiff did in in …

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If You Do Not Plead Indirect Infringement, You Cannot Argue It (Without Amending)

Andrew E. Russell, Oct. 14, 2020
FRCP 15 Final Infringement Contentions

Judge Burke granted a motion to strike yesterday where the plaintiff attempted to add indirect infringement allegations in final infringement contentions, but had not pled them in the complaint.

Per Judge Burke:

It is undisputed that Plaintiffs have never pleaded indirect infringement of these patents, (D.I. 170 at 1), and so any portion of their [final contentions] that relate to that subject matter are simply about infringement claims that are not a part of this case.

He also preemptively denied any future request to amend the complaint as coming too late:

Although they have not filed a formal motion seeking to amend their currently operative complaint to include such [indirect infringement] claims, to the extent Plaintiffs suggest they would …
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Substantial Completion Is Really More of a State of Mind

Nathan R. Hoeschen, Oct. 8, 2020
Substantial Completion Sanctions

Typical small production of recent unimportant documents served after substantial completion deadline
Typical small production of recent unimportant documents served after substantial completion deadline Can you find the book you need?, Carles Rabada, Unsplash

"Substantial completion of document production" is not exactly a bright line.

Is it more than half?

More than 90%?

At least in Delaware, cases interpreting the issue are light on the ground. Usually, when presented with a steaming pile of documents after the substantial completion deadline, the parties will work out some modest schedule extension without any court intervention. This is probably for the best, but it means that the parties are usually working from a blank slate when negotiating the necessity and length of any extension.

Luckily for us, Judge Burke issued an Oral Order …

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Court Permits Deposition Questions on Litigation Financing Arrangements

Andrew E. Russell, Oct. 5, 2020
Depositions MTC

I thought this was interesting. Last week Judge Burke granted a motion to compel a plaintiff's witness to respond on questions about the plaintiff's litigation financing arrangements.

Apparently plaintiff's attorneys instructed the witness not to answer at the deposition, but in the discovery dispute they only argued that the information is irrelevant, and did not raise privilege. Since relevance is not a valid justification for an instruction not to answer under FRCP 30, the Court permitted defendant to re-ask the question and held that plaintiff's witness must answer.

About Those Redacted Versions

I say plaintiff "apparently" objected only on reasonableness grounds because plaintiff never filed the redacted version of its sealed letter brief—a common problem.

If parties continue …

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Court: Document Production Two Months Before Trial Sufficient to Avoid Prejudice

Andrew E. Russell, Sept. 14, 2020
Motion to Strike Pennypack

In the holding below, Judge Burke found that, under Pennypack, producing documents just over two months before trial was sufficient to provide time for "Defendants to be able to appropriately respond to Plaintiffs' expert's related position."

This is a shorter timeline than typically comes up. For example, Judge Burke has previously struck late-produced material where there were six months remaining before trial, although in that case the other Pennypack factors also played a role.

The facts here were not terrible for defendants. The documents had been produced by individual defendants in a set of related cases. According to the plaintiff, the expert reports at issue used the documents from various defendants to respond to arguments from those defendants, although …

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New Standard for Striking a Theory from a Rebuttal Expert Report

Andrew E. Russell, Sept. 4, 2020
Pennypack Discovery

Stop Sign
Luke van Zyl, Unsplash

This week, Judge Burke issued an interesting oral order on a discovery dispute about the admissibility of "new" expert opinions in rebuttal reports.

In the order, he sets forth a simple baseline test for what a party has to show to strike purportedly "new" expert opinions in a rebuttal report. To succeed in striking a "new" theory, a party must show at least:

(a) how they clearly disclosed that theory well before final . . . contentions were due . . . ; (b) how the same theory was thereafter found in their opening expert reports . . . ; and (c) how [the opposing party] never provided any substantive response to that theory until …
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Judge Burke: Don't Just Say You're Burdened—Prove It

David M. Fry, Sept. 2, 2020
Discovery Dispute

Burden
Simon Migaj, Unsplash

Yesterday, Judge Burke ordered a plaintiff to collect documents from an additional custodian beyond the limit agreed to by the parties. But he also gave the plaintiff a road map for how they might have won with a little extra effort.

Judge Burke acknowledged that "the parties are not large companies, and that cost and burden were a factor in the parties' agreement to [a] seven-custodian limit in the first place."

But Plaintiff could have provided the Court with a record ... to help the Court conclude that the collection, search, review and production of [the custodian's] documents would be unduly burdensome or costly, or that it would be disproportionate to either the amount in controversy or …
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Judge Burke Sets Forth Views on Impermissible Discovery in Trade Secret Actions

Andrew E. Russell, Aug. 28, 2020
Discovery

Restricted Data Notice
"Restricted Data" stamp, RestrictedData, CC BY 2.0

In another part of the opinion mentioned earlier today, Judge Burke set forth his views on the scope of discovery in a trade secret action—an issue that comes up a lot, along with the related issue of the disclosure of the alleged trade secrets:

As to what is not relevant trade secret discovery: what [Plaintiff] is not entitled to do is to set out a claim in Count IX for trade secret misappropriation—i.e., a claim involving a certain set of alleged facts, occurring in a certain alleged time frame, involving a certain referenced set of persons and a certain type of purported misconduct—and then say to [Defendant], “Now that we have …
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The Court: Broad, General Interrogatories Merit Only Broad, General Answers

Andrew E. Russell, Aug. 28, 2020
Interrogatories Discovery

Judge Burke yesterday unsealed a lengthy opinion addressing a range of discovery disputes in a pending trade secret litigation.

In one instance, plaintiff sought to force a further response to a broad interrogatory, and complained that Defendant's broad answer omitted important time periods. The interrogatory asked:

[D]escribe in detail the stage of R&D, design, documentation, clinical work, marketing and/or sales of the [relevant product] at the time [Defendant] or anyone on behalf of [Defendant] was in first contact with any Former [Plaintiff] Employee . . . .

Judge Burke denied the request, noting that the time periods Plaintiff complained about were from before the alleged trade secret theft, and therefore it was not clear why they were relevant. He also …

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Judge Burke Rejects Attempt to Probe Communications with Prosecution Counsel

David M. Fry, Aug. 19, 2020
Privilege

You can't gain access to privileged communications by claiming your discovery request seeks "just the facts."

In a lengthy oral order yesterday, Judge Burke denied a motion to compel responses to interrogatories seeking plaintiffs' communications with their prosecution counsel.

For the first interrogatory, the decision was "not a difficult one." It sought "all facts" provided to prosecution counsel "regarding certain subject matter relevant to Defendants' inequitable conduct defenses and counterclaims." There's no way to respond to an interrogatory like this without revealing the substance of attorney-client communications.

The second was "a bit less sweeping[,]" but not by much. It asked the plaintiffs to identify all prior art and FDA correspondence provided to their prosecution counsel, including details like the day …

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