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A 353-Page-Long Statement of Contested Facts in a Pretrial Order Is "Ridiculous No Matter What"

Andrew E. Russell, Aug. 23, 2021
Trial LR 16.3

353? Ridiculous.
Andrew E. Russell, CC BY 2.0

Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."

These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …

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Pennypack Strikes Back: The Return of Curative Discovery

David M. Fry, Aug. 23, 2021
Motion to Strike Pennypack

Cave
Cade Roberts, Unsplash

Over the past year, we've noticed that the D. Del. judges have shown an increasing willingness to exclude late-disclosed evidence and theories. Until recently, motions to strike were difficult to win under the Third Circuit's Pennypack standard. If the prejudice caused by the late disclosure could be cured, it was almost impossible to get anything excluded.

Today, harkening back to an earlier time, Judge Andrews denied cross-motions to strike allegedly late-disclosed theories from the parties' opening expert reports. Although he found that the defendant's motion presented a close call on late disclosure, he concluded that "[e]ven if these infringement theories were untimely, I find, under the Pennypack factors, that their exclusion is not warranted."

At …

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Judge Burke Denies Discovery on Non-Accused Products

Jeff Castellano, Aug. 20, 2021
Infringement Contentions Motion to Compel

Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.

Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.

That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates...

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The Limits of § 285 Fees

Nathan R. Hoeschen, Aug. 19, 2021
Fees IPR

alexander-mils-lCPhGxs7pww-unsplash.jpg
Girl holding American Dollar Bills, Alexander Mils, Unsplash

An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?

The answer, apparently, is no.

Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:

The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he …
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Initial Production of Only 13 E-mails, and Counsel's Shifting Explanations, Results in Sanctions on Patent Defendant

Andrew E. Russell, Aug. 18, 2021
E-mail Production Discovery Dispute

PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails RCA

Yesterday, Magistrate Judge Fallon granted a motion for sanctions against One World Technologies, Inc., a defendant in a patent action, for failing to produce the bulk of its e-mail until 13 months after the plaintiff's initial request.

Defendant One World initially produced only 13 e-mails in response to plaintiff's requests, served back in April 2020. According to a later declaration of counsel, One World's attorneys had received multiple gigabyte's worth of .pst files containing e-mail from the agreed-upon custodians. But they found those files to be corrupted, and they relied on their clients' determination that all but 134 of the e-mails were unrecoverable. …

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Heads Up, D. Del. Practitioners: The Free Ride on Redacting Sealed Exhibits May Be Ending

Andrew E. Russell, Aug. 17, 2021
Protective Order Star Chamber

Is the dam about to break on over-redaction of filings?
Is the dam about to break on over-redaction of filings? Thomas Dumortier, Unsplash

Most patent cases involve a protective order, and the parties tend mark documents other than prior art as confidential or attorney's eyes only. As a result, many of the more substantive filings—particularly discovery motions, summary judgment motions, and pretrial orders—are filed under seal.

Unlike some other jurisdictions, particularly the Northern District of California, the District of Delaware's procedure for filing under seal is not burdensome. Once a protective order is entered, no motion is required to file a document under seal, and the parties simply file redactions within seven days.

Over time, parties have become more and more liberal with their redactions, often heavily redacting sealed …

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Judge Stark Declined to Limit a Plaintiff to Fewer than 27 Asserted Claims for a Jury Trial

Andrew E. Russell, Aug. 16, 2021
Claim Narrowing Case Narrowing

Narrows
Karan Chawla, Unsplash

Case narrowing is an issue that eventually comes up in most patent cases—the idea that each party should have to reduce the number of claims and prior art references at points during the case.

How Claim Narrowing Usually Goes in a Patent Action

If parties want to avoid a dispute down the line, they can include case narrowing in the scheduling order. More often, however, it comes up at some point after the plaintiffs makes its initial election of asserted claims, and the parties start to get an understanding of the scope of the case.

Typically the initial narrowing occurs before claim construction, and a second round occurs afterwards, sometimes around the time of final contentions. …

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August Update on Upcoming D. Del. Jury Trials

Emily S. DiBenedetto, Aug. 12, 2021
COVID-19 Trial Calendar

Autumn trials are adding up
Kelly Sikkema, Unsplash

The District of Delaware has many more jury trials scheduled in the next two months than it has in recent months, and several of the upcoming trials were originally postponed for COVID-19 reasons. The September calendar looks particularly busy at the moment, but several case dockets indicate steps toward resolving before trial, suggesting that several of these trials may not be on the calendar much longer.

Remaining August Jury Trials

District of Delaware continues to permit multiple simultaneous jury trials, as evidenced by the three trials to begin on the same day this month:

  • 8/16/2021: McClanahan v. Priority 1 Air Rescue Operations Arizona, LP., et al., C.A. 18-1237-CFC-SRF (D. Del.): …
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A Very Long Deposition

Nathan R. Hoeschen, Aug. 12, 2021
Depositions

Technical difficulties
Technical difficulties Glitch While Streaming, Michael Dziedzic, Unsplash

As we've previously discussed the district's local rules and longstanding practice prohibit speaking to a witness about the substance of his testimony during a deposition. Specifically, D. Del. local rule 30.6 states:

From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.

Normally, the application of this rule is pretty straightforward. But what …

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"You Get What You Give": Contention Discovery in Delaware

David M. Fry, Aug. 11, 2021
Motion to Compel Contentions

Tug of War
Merritt Thomas, Unsplash

For many years, the prevailing view in D. Del. has been that "you get what you give" when it comes to contention discovery. In other words, if you want a defendant to serve detailed non-infringement contentions, your infringement contentions should have a similar level of detail.

This standard is built into several of the judges' form scheduling orders, including Judges Stark, Noreika, Burke, Fallon, and Hall. For example, Judge Burke's form provides that:

In the absence of agreement of the parties, contention interrogatories, if filed, shall first be addressed by the party with the burden of proof. The adequacy of all interrogatory answers shall, in part, be judged by the level of detail each party provides; i.e., the more detail a party provides, the more detail a party shall receive.

On Monday, Judge Burke issued an order illustrating the implications of this standard (and the importance of serving detailed contentions).

A defendant moved to compel a response to an interrogatory seeking the plaintiff's detailed validity contentions. Judge Burke granted the motion, but with a catch:

As for the portion of ROG 15 that asks ...
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