A Blog About Intellectual Property Litigation and the District of Delaware


DED
United States District Court for the District of Delaware

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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Court Compels Defendant to Provide Witness on 30(b)(6) Topics Even If "Many (If Not Most, or All)" Questions Likely to Draw Privilege-Related Instructions Not to Answer

Andrew E. Russell, April 29, 2022
MTC Motion to Compel

Illustration of the stone wall plaintiff will face when they actually depose this person.
Illustration of the stone wall plaintiff will face when they actually depose this person. eberhard grossgasteiger, Unsplash

In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103-MN (D. Del.), plaintiff moved to compel defendant to produce a 30(b)(6) witness on various topics, including on "[a]ll bases" for certain statements by defendant's CEO, including statements about a decision not to challenge the validity of certain patents.

As to two of those topics, the defendant argued in its responsive letter that the CEO's statements were "based entirely on communications and memoranda prepared by Gilead’s in-house counsel and outside counsel," which are privileged. The Court generally agreed:

[T]he Court definitely acknowledges Defendants' point[, ]i.e., …
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Successful Motion for Reconsideration Lops About Seven Months' Time Off of Fee Award

Andrew E. Russell, April 28, 2022
LR 7.1.5 Reargument

Money
Pepi Stojanovski, Unsplash

As we've recognized before, motions for reconsideration can be tough.

First, the deadline to move for reargument or reconsideration is fairly easy to miss. It's just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.

Second, the standard for reconsideration is fairly narrow. As we've discussed, you can't rehash arguments you already made—but you also can't make new arguments you could have raised earlier.

What does that leave? New arguments that you couldn't have raised earlier. And those typically result from something unanticipated in the Court's ruling or order.

This week we had a good example of a worthwhile motion for reconsideration. In …

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Can You Show the Jury a 10 Minute Video of the Other Side's Expert Just Saying "I Don't Know"?

Andrew E. Russell, April 26, 2022
Trial Video

Question Marks
Véronique Debord-Lazaro, CC BY-SA 2.0

It's great that we are getting to point of having frequent jury trials again here in Delaware. Trial is the most dynamic and interesting part of the litigation process. It's where you get to address classic questions like "Can we get this admitted into evidence even though it's not on our exhibit list?", "Where was THAT in his expert report?", and "Can we show the jury this video of the other side's expert saying 'I don't know' for ten minutes straight?"

Luckily, on that last question, we now have some precedent. According to Judge Andrews last week:

I agree with First Quality that Dr. Mitton's availability does not make the deposition inadmissible. But I nevertheless …
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Refusal to Narrow the Number of Asserted Claims Results in Reduced Relief in Narrowing Invalidity Contentions

Emily DiBenedetto, April 25, 2022
Claim Narrowing Contentions

Upturned Nose
Zayn Shah, Unsplash

As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.

However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.

Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.

The Court found that the Initial Invalidity Contentions were sufficient in most respects:

In general, they provide real detail, including significant specificity as to ...
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Defendant's Own Importation Cannot Serve as the Basis for an Inducement Claim

Andrew E. Russell, April 22, 2022
Importation Motion to Amend

Monkey inducing itself to infringe
Andre Mouton, Unsplash

In rejecting a motion to amend a complaint almost two weeks ago (while we were indisposed), Judge Andrews held that a defendant's own importation under 35 USC 271(g) cannot serve as a basis for induced infringement:

Defendant argues Plaintiffs’ proposed amendment to assert induced infringement is futile, because Plaintiffs do not plausibly allege any of the three elements required for a claim of induced infringement – direct infringement, knowledge, and specific intent. . . . I find that because Plaintiffs have not alleged any acts of direct infringement by a third party in the United States, Plaintiffs have not stated a claim of induced infringement under § 271(b). . . . Plaintiffs’ argument that their …
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Court Denies Motion to Strike Bare-Bones Infringement Contentions, Suggests Motion to Strike Later Expert Reports Instead

Andrew E. Russell, April 21, 2022
Infringement Pennypack

Bare Bones
Mathew Schwartz, Unsplash

Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.

Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).

Having a reasonable idea …

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Judge Andrews: 25-Reference Obviousness Analysis Without Specific Combinations Is Not a Daubert Problem

Andrew E. Russell, April 20, 2022
Expert Witness Obviousness

"Pick a card, any card . . . that's our secondary obviousness reference." Aditya Chinchure, Unsplash

Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.

The analysis apparently sorted the prior art into categories:

The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”

As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:

My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be ...
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Here Is the New Nominee for the District of Delaware: Gregory B. Williams

Emily DiBenedetto, April 18, 2022
Congestion Vacant Judgship

Into Focus

Change is afoot in the District of Delaware! Last week, President Biden nominated Gregory B. Williams, a partner in Fox Rothschild LLP’s Wilmington office, to fill Judge Stark’s vacancy in the District of Delaware. (See Judge Stark’s confirmation history here.)

About the Nominee

The White House provided a helpful and succinct summary of Mr. Williams' qualifications: “Gregory B. Williams is a partner in the Wilmington, DE office of Fox Rothschild LLP. He joined the firm in 1995 as an associate and was elevated to partner in 2003. He has served as special master in complex civil cases for the District of Delaware since 2020. From 1986 to 1992, Mr. Williams served in the U.S. Army Reserve. He received his …

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Judge Connolly Issues New Standing Orders, Including Requirement to Disclose Litigation Funding

Andrew E. Russell, April 18, 2022
Standing ANDA

Standing Stones
Andreas Brunn, Unsplash

Today, Judge Connolly issued four new standing orders. These orders include:

  1. A requirement to disclose third-party litigation funding arrangements on the docket;
  2. A requirement in diversity cases to disclose the name and citizenship of every individual and corporation with a direct or indirect interest in every party;
  3. An order expanding disclosure requirements under Federal Rule of Civil Procedure 7.1 for non-governmental joint ventures, LLCs, partnerships, and LLPs;
  4. A requirement for the defendant in ANDA cases where there was a Paragraph IV certification to produce the ANDA when responding to the complaint;

The above are numbered only for reference below.

Each of these orders explicitly applies only in Chief Judge Connolly cases.

Order 1: Litigation …

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