A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

How to Win a Discovery Dispute

Nathan R. Hoeschen, Aug. 8, 2023
Protective Order Discovery Dispute

Bonjour dear readers! I have missed you all so. The blog vacation has been a real boon for us, and we've got a whole trove of opinions, orders, and shouted comments built up to discuss over the next few weeks.

One of the first that caught my eye was an order from Judge Burke that contained that rarest of gems -- praise for a party to a discovery dispute -- and included a neat primer on what the Court likes to see when ruling on them.

I don't know why, but whenever you ask it to include text it always sort of converts it into a realistic seeming eastern european language
I don't know why, but whenever you ask it to include text it always sort of converts it into a realistic seeming eastern european language AI-Generated, displayed with permission

The dispute in question was pretty standard stuff, with the defendant wanting a supplemental protective order that gave extra protections to design files that it likened to source code. As the party seeking the stricter protective order, they bore the burden which the Court found they met easily:

Defendant did here what too few parties in discovery disputes do: it made a detailed factual record, supported by multiple sworn declarations, that strongly supported its arguments. That is, Defendant has demonstrated that the "highly technical details necessary to fabricate [its] proprietary... lens designs" are, "in effect, the source code of lenses" and "are as commercially sensitive as any other form of source code[,]" such that they should receive the heightened form of protection set out in the SPO.

ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484, D.I. 136 (D. Del. Aug. 4, 2023) (Oral Order).

The "detailed factual record" here was more straightforward [read: achievable] than you might think. The defendant submitted 2 declarations: a 3-pager from ...

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Patentee Successfully Reverses Court's § 101 Ineligibility Finding by Amending Complaint

Andrew E. Russell, July 9, 2023
§ 101 Motion to Amend

All across the district, defendants silenty wonder:
All across the district, defendants silenty wonder: "Oh crap, is this gonna be a thing now?" NASA, Unsplash

Here's one you don't see every day. Back in March, Judge Burke granted a § 101 motion to dismiss as to the claims of two of the six asserted patents in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB (D. Del. Mar. 31, 2023).

In that opinion, the patentee did not dispute that the claims were directed to the abstract idea of synchronizing a file across a network:

Plaintiff, for its part, does[ not] dispute that synchronizing multiple versions of a file across network computers is an abstract idea, and the Court agrees that it is. Again, …
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Court Rejects Attempt to Use Error in Running Searches as Excuse to Re-Negotiate ESI Search Terms

Andrew E. Russell, July 5, 2023
Search Terms Discovery Dispute

Yeah. Everybody can see the frog.
Yeah. Everybody can see the frog. Kieran Wood, Unsplash

As Delaware counsel, I sometimes have to say something along the lines of "the Court is going to see right through that" or "nobody is as sly as they think they are."

Usually this is in the context of something like slipping wholesale invalidity arguments into a claim construction brief (seriously? You think you are going to win SJ of anticipation at claim construction?) or "just flagging" a completely unrelated and irrelevant issue in a discovery dispute.

I saw an example of this last week in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361−GBW−CJB, D.I. 290 (D. Del. Jun. 26, 2023).

In Speyside, the …

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Counting By Argument, Rather Than By Claim, When Narrowing Claims

Andrew E. Russell, May 1, 2023
Claim Narrowing § 112

Abacus
Sami, CC BY 2.0

There was an interesting oral order from Judge Burke last week in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38 (D. Del. Apr. 28, 2023). Defendant apparently asserted a large number of § 112 defenses based on lack of enablement or written description. The Court held that the defendant had to narrow it's defenses.

The parties further disputed whether the parties should count § 112 arguments by limitation or by claim. The Court held that they should be counted by claim limitation, not by claim:

With respect to the parties' dispute as to whether an argument that a claim is invalid under section 112 based on a particular claim limitation counts …
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Judge Burke Applies "Motion Day" Procedure to non-§ 101 Motions

Andrew E. Russell, April 17, 2023
§ 101 Days

Two birds with one stone—Or three, I suppose.
Two birds with one stone—Or three, I suppose. Dulcey Lima, Unsplash

As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.

These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:

WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
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How Much is Too Much? The Answer: Three Discovery Dispute Teleconferences in Two Months (Involving Nine Disputes)

Andrew E. Russell, March 24, 2023
Discovery Dispute Congestion

"From now on, your discovery disputes will be heard at the summit . . . " Alexander Milo, Unsplash

It's always good to know the limits when it comes to discovery disputes. In some cases, parties just can't seem to work together on discovery, and the parties end up bringing a lot of disputes.

At some point, the number of disputes may push the Court over the line. Famously (in Delaware—so perhaps not "famously" at all), former Chief Judge Sleet used to limit parties to three discovery disputes in patent cases before requiring them to seek leave. I don't know of any similar explicit limits set by any of our current judges, but pushing things too far can still …

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A Protective Order Loophole

Nathan R. Hoeschen, Feb. 16, 2023
Protective Order

I was always disappointed when I became a lawyer that my day-to-day work did not involve more loopholes. You watch any TV show -- Law & Order (original or extra crispy (that's SVU)), The Good Wife, Matlock, all you hear is loophole this and loophole that. But every day I come into the office and its just the regular old law. It just seemed less clever than a loophole.

I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet
I didn't ask for him to be holding a cheeto, and I can't explain why he is #Snacknet AI-Generated, displayed with permission

I was thus borderline ecstatic to see Judge Burke deciding a discovery dispute over what seems to be a genuine loophole in a protective order.

The prosecution bar in FedEx Corporate Services, Inc. v. Roambee Corp., C.A. No. 21-175-CFC-CJB (D. Del. Feb. 13, 2023) had three distinct parts.

The first was a basic prosecution bar:

[P]ersons . . . who have received access to Designated Material, shall not be engaged . . . in prosecution of patent applications on behalf of the Receiving Party . . . claiming tracking devices used in systems that monitor shipments, without prior approval to do so from the Producing Party.

The second allowed persons otherwise covered by the bar to advise on subjects other than the drafting crafting or amending of claims before the ...

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Don't Waive Your Daubert Motion by Waiting Until the Motion In Limine Stage

Andrew E. Russell, Jan. 30, 2023
FRCP 702 Motion to Strike

Stealth Bomber
Matt Artz, Unsplash

We've talked before about MILs that are really stealth summary judgment motions, but now let's talk about MILs that are stealth Daubert motions and stealth motions to strike!

On Friday, Judge Burke denied a motion in limine to preclude the testimony, holding that it was really a Daubert motion, and the party had waived it by failing to present it by the deadline for Daubert motions:

ORAL ORDER: The Court . . . hereby DENIES [Defendants' Motion in Limine No. 1] for the following reasons: (1) [T]he Scheduling Order in this case provided that "[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the [C]ourt at [the status conference …
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A Simple Sale

Nathan R. Hoeschen, Jan. 12, 2023
Inducement Indirect Infringement

AI-Generated, displayed with permission

Interesting opinion from Judge Burke today on indirect infringement allegations, and what constitutes an "active step" to encourage the direct infringement.

The defendants in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Jan. 12, 2023) (Mem. Order) sold a sort of refined coal that was a necessary agreement in an allegedly infringing process performed by power plants. They moved to dismiss the complaint for indirect infringement, arguing that, while they knew it was likely to be used in an infringing manner, they did not communicate with the end users in any way that actively induced infringement. I.e., they did not take any active steps.

Judge Burke …

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Plaintiff's "'Cut and Paste' Approach Cannot Be a Viable Pleading Strategy"

Andrew E. Russell, Sept. 23, 2022
Complaint Legal Writing

Mel Poole
Mel Poole, Unsplash

Judge Burke issued an oral order earlier this week with some interesting language criticizing the party's attempt at an amended complaint.

In Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del.), the plaintiff accused a very large number of entities—More than 50, it looks like—with infringement of a number of patents, all in a single combined action.

Earlier this year, it moved to amend its complaint to add additional defendants it alleged were parent companies of defendants who were as acting as the parent companies' "alter egos and agents." Judge Burke granted this request as to one party, for which the complaint included more detailed factual allegations, …

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