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Always Be Supplementing

Nathan R. Hoeschen, Aug. 20, 2020
Expert Discovery Deposition

Unusually Spry Expert Rushes to Supplement Report
Unusually Spry Expert Rushes to Supplement Report Man Holding Handbag, Andy Beales, Unsplash

Judge Andrews recently granted a motion in limine precluding a party from presenting expert opinions that were not disclosed until the expert's deposition -- without analyzing the Pennypack factors.

The correct procedure for challenging a late disclosure of theories or evidence has long been a matter of some debate in Delaware. There are cases suggesting that the party seeking to update its contentions should move for leave to do.

More commonly, a party will simply serve updated contentions or expert reports that the opposing party moves to strike. Regardless, the motions are generally analyzed under the demanding Pennypack factors, with the usual result that the …

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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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Court Orders Remote Bench Trial Despite Defendants' Emergency Due Process Objections

Andrew E. Russell, Aug. 18, 2020
Bench Trial COVID-19

COVID-19
COVID-19, CDC/Hannah A Bullock; Azaibi Tamin

Chief Judge Stark today denied an emergency request by defendants to delay a remote bench trial scheduled to start next week.

The Court had previously solicited the parties' preferences on how to handle trial and, before the pretrial conference, ordered that the trial would be fully remote. At the pretrial conference, neither party objected to that ruling.

Last week, however, Defendants sought emergency relief to delay the trial in order to convert it to a "partially remote" trial, submitting a declaration from their client that they had not authorized their now-former in-house counsel to agree to a fully virtual trial.

They cited due process rights and the importance of in-person testimony …

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Trade Secret Allegations in Sealed Complaint Fail, Judge Andrews Rules

Jeff Castellano, Aug. 18, 2020
DTSA 12(b)(6)

In trade secret litigation, parties often fight bitterly over the level of particularity with which the party asserting misappropriation has described its trade secrets. That dispute frequently plays out in connection with interrogatory responses or other trade secret contentions, served after the initial pleadings are closed.

However, it can arise earlier in the case. In a recent order, Judge Andrews dismissed a federal trade secret misappropriation claim under Rule 12(b)(6) because the complaint identified "large, general areas of information that Plaintiff alleges to have shared with Defendant" but failed to "identify what the trade secrets are within those general areas."

Notably, the order, issued in Lithero, LLC v. Astrazeneca Pharms. LP, C.A. No. 19-2320-RGA (D. Del.), states …

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Chief Judge Stark Explains His Thoughts on Indefiniteness Issues Going to the Jury

Andrew E. Russell, Aug. 17, 2020
Indefiniteness Jury

In his lengthy ruling on the post-trial motions in Pacific Biosciences, Chief Judge Stark also set forth his views on whether indefiniteness may be tried to a jury, an issue that seems to come up repeatedly:

[Defendant] insists that the Supreme Court's decision in Teva vs. Sandoz[, 574 U.S. 318 (2015),] made indefiniteness an issue exclusively for the court to decide. I disagree. I continue to believe that I have discretion to put . . . indefiniteness before the jury where[,] as here, there are subsidiary fact disputes that inform the indefiniteness decision as a matter of law. [Defendant] has cited no contrary Federal Circuit case.
In fact, instead, the Federal Circuit [has] made clear that indefiniteness is …
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No New Trial After Both Sides Cited Coronavirus Benefits of Invention in March Trial

Andrew E. Russell, Aug. 17, 2020
Post-trial Motions COVID-19

On Friday, Chief Judge Stark issued his opinion on post-trial motions in Pacific Biosciences of California, Inc. v. Oxfore Nanopore Tech., Inc., C.A. No. 17-275-LPS-CJB (D. Del.).

You may remember it as the case which made news at the time due in part to the mention of coronavirus in the opening statements.

The trial took place March 9-18, just as the first COVID-19 lock downs were ramping up.

Incredibly, both parties touted coronavirus-related effects of their products in their opening statements at trial. Plaintiff suggested that its product could "help develop a vaccine" for the coronavirus. Defendant went even further:

[Defendant made] a product that is changing lives as we speak. Whether it is helping people …
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Judge Andrews "Really Doubts A Jury Trial Is Feasible" in September Due To Travel Concerns

Nathan R. Hoeschen, Aug. 14, 2020
Jury Trials COVID-19

Artist's Rendering of Delaware Courtroom in September
Artist's Rendering of Delaware Courtroom in September Jean Wimmerlin, Unsplash

Judge Andrews recently postponed another patent jury trial that had been scheduled for September 21, 2020.

The ruling in Baxalta Incorporated v. Bayer Healthcare LLC, C.A. No. 17-1316-RGA, D.I. 529 (D. Del. Aug 12, 2020) followed the submission of a joint status report where the plaintiffs suggested the case should go forward, citing prejudice to them if the case remains unresolved for the foreseeable future.

The defendant responded by pointing to the obvious difficulties of holding a trial when "no witness resides in Delaware" and lead counsel and their "entourages" are from out of state.

Judge Andrews notably stated that he believed it would be possible …

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Whoops, Better Make Sure The Entity You Are Suing Is Actually a Delaware Corporation

Andrew E. Russell, Aug. 13, 2020
Jumara Transfer

I'm not sure that these are actually Georgia peaches.
I'm not sure that these are actually Georgia peaches. Joanna Stołowicz, Unsplash

Judge Noreika granted a motion to transfer yesterday in a case against an Equifax entity, where 3 of the Third Circuit's Jumara factors favored transfer, and only one (plaintiff's choice of forum) weighed against.

My first thought was—Did the plaintiff really have only one factor in it's favor?

Judge Noreika usually credits the fact that the Defendant is a Delaware corporation, and I thought Equifax was one.

Turns out, so did plaintiff. The complaint lists the defendant as a Delaware corporation. But—as the Court notes—Equifax Information Services is actually a Georgia entity. Plaintiff messed up.

So the transfer makes sense. The plaintiff is Hawaiian, meaning …

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Restraint in Claim Construction

Jeff Castellano, Aug. 11, 2020

"Plain and ordinary meaning" has a mixed record as a claim construction position. Despite the fact that the claim language itself is the heart of claim construction, litigants and judges may feel pressure to define claim language that is already reasonably clear, especially if there is a dispute tied to that language. In fact, judges in this District have expressly discouraged litigants from advancing "plain and ordinary meaning" as a proposed construction during the Markman process.

However, there is no reason that the language of the claim itself - if sufficiently clear - cannot stand on its own, even if there is a dispute. The challenge (and burden) for the Court lies in sorting through the alleged disputes, discarding those …

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