A Blog About Intellectual Property Litigation and the District of Delaware


RGA
The Honorable Richard G. Andrews

You Still Can't Serve Contention Topics in D. Del.

David M. Fry, Dec. 23, 2020
Depositions Motion to Compel

For decades, judges in D. Del. have enforced a general rule that you can’t serve 30(b)(6) topics on a party’s contentions. The rationale is simple: it just isn’t fair to burden a single witness with that much information. Contention interrogatories can achieve the same the same goal, without forcing a 30(b)(6) witness to sit for the most stressful memory test of their life.

In a discovery order on Friday, Judge Andrews highlighted an important corollary to this rule: you can’t get around it by framing your contention topic as a request for “all facts” about a party’s contentions. The judge found that all four of these examples were improper contention topics:

  • Investigations, tests, studies, surveys, interviews, reviews, analyses and …
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Public Access Wins Again

Jeff Castellano, Dec. 22, 2020
Sealing

Consistent with the trend in this District, Judge Andrews recently rejected a defendant's unopposed request to seal the [virtual] courtroom and exhibits for a preliminary injunction hearing, despite the defendant's assertions that its presentation might include trade secrets and other highly confidential technical and financial information, and that it would be "prevented from effectively offering its arguments" if the proceedings were not sealed.

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No, You Cannot Call the Plaintiff a "Patent Troll" at Trial (and Other Recent In Limine Results)

Andrew E. Russell, Dec. 21, 2020
Trial Trial Calendar

Bridge
Jamie Street, Unsplash

Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.

Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.

Last week, Judge Andrews …

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Court Attributes Expert's Knowledge to Party Itself, Strikes Invalidity Arguments

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

Stop Sign
Luke van Zyl, Unsplash

In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
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"Failure of the Defendant to Concede [Does Not] Automatically Convert . . . a Non-Willfulness Case into a Willfulness Case"

Andrew E. Russell, Dec. 9, 2020
Willfulness Indirect Infringement

Illustration of plaintiff's willfulness allegations
Illustration of plaintiff's willfulness allegations Head Of A Skeleton With A Burning Cigarette, Vincent van Gogh

Judge Andrews, in granting a motion to dismiss a patentee's willfulness allegations:

The allegations could charitably be described as bare-bones. There is nothing to suggest any pre-suit knowledge of the two asserted patents. Thus, Plaintiff’s position is that failure of the Defendant to concede after a suit is filed automatically converts a non-willfulness case into a willfulness case. I disagree. Thus, I will grant the motion as to willfulness.

In the same short order, he set out his view on the difference in pleading standards between willfulness and indirect infringement:

As to indirect infringement, I think the allegations make out a case for post-December 2014 indirect infringement. (I do not think Plaintiff is arguing that there was any pre-December 2014 indirect infringement, and, in any event, there are no allegations that would provide any basis for such a theory.). I do not think the requirements in regard to state of mind for indirect infringement are as great as they are for willfulness. Thus, I will deny the motion as to indirect infringement.
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Filed Under: Things That Make You Say "Huh."

Andrew E. Russell, Dec. 9, 2020
SJ MIL

Lightbulb
Person Catching Light Bulb, Júnior Ferreira, Unsplash

This week, Judge Andrews dismissed a summary judgment motion on inequitable conduct.

Plaintiff argued—apparently correctly—that the defendant had never pled inequitable conduct at all. And, when the plaintiff moved for summary judgment on inequitable conduct, the defendant did not file any answering brief opposing the motion (although a defendant in a related action filed brief a brief for "all Defendants").

So why was the seemingly unopposed motion dismissed rather than granted? As explained by Judge Andrews:

I do not think I can grant summary judgment against a party on an issue that is neither raised by the pleadings nor asserted by the party in the briefing. Inequitable conduct is not an …
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Judge Andrews Strikes Down "Frivolous" Privilege Claims

Jeff Castellano, Dec. 8, 2020
Privilege Discovery Dispute

Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."

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Court Raises Doubts About Feasibility of February 1 Jury Trial in the District of Delaware

Andrew E. Russell, Dec. 3, 2020
Bench Trial COVID-19

In light of the ongoing delays in restarting patent jury trials, and the rising COVID-19 numbers nationwide, it's no surprise to see Judge Andrews recognize that parties may be better served by having a bench trial in the near future rather than waiting an indeterminate time for a jury to be available:

ORAL ORDER: The court doubts that a jury trial will be feasible on Feb. 1. On the other hand, a bench trial would be very feasible. The parties are requested to discuss with each other whether they would mutually agree to a bench trial on Feb. 1, and, if they both do agree, report that fact to the court by no later than Dec. 9. If one …
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Judge Andrews Gives Parties Homework to Discourage Discovery Disputes

Nathan R. Hoeschen, Dec. 3, 2020
Discovery Dispute Sanctions

Excellent, now set it on fire . . . the hoop
Excellent, now set it on fire . . . the hoop Border Collie jumping through the hoop at NZDAC Gore New Zealand, Andrea Lightfoot, Unsplash

In Delaware, there are a few hoops to jump through if you want to bring a discovery dispute before the Court. Local Rule 7.1.1 is the most basic, and requires the parties to make "reasonable efforts" to resolve their disputes, including verbal communications between opposing Delaware Counsel.

Next, each Judge has their particular procedures for bringing the dispute, either requiring a joint phone call to chambers (Judges Connolly, Noreika, and Andrews) or a joint letter outlining the issues and confirming that the parties have met and conferred (Judge Stark). In either case, the parties …

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