The blog has many stories about the perils of over-redaction. Time and again the Court has chastised the parties for attempting to redact quotidian bits of agreements and correspondence, noting that the Court is not a "Star chamber."
Today's case, Inkit, Inc. v. Airslate, Inc., C.A. No. 23-793-RGA (D. Del. Mar. 26, 2025), shows that its also possible to redact too little. The parties thereby had a long-running dispute about trademark infringement which ultimately evolved into a dispute about whether the defendant had violated a settlement agreement which resolved an earlier case between the parties.
That settlement agreement -- like literally every other one I've ever seen -- contained a confidentiality provision. The issue that …
Local Rule 37.1 seems to often be forgotten. It requires a party bringing a discovery motion (which would include a discovery dispute) to recite or attach the discovery request or responses they are moving about:
Any discovery motion filed pursuant to Fed. R. Civ. P. 26 through 37 shall include, in the motion itself or in a memorandum, a verbatim recitation of each interrogatory, request, answer, response, or objection which is the subject of the motion or shall have attached a copy of the actual discovery document which is the subject of the motion.
Claim narrowing is such a common issue in Delaware that this blog has at least 431 entries with the tag.
(Eds. Note—I did not actually count, but you can click on the tag on the side and scroll down to prove me wrong).
I told it to draw a nerd, but it actually kind of looks like me...must be something wrong with the algorithm.AI-Generated, displayed with permission
Ironically this rich well of precedent can make it kind of hard to brief a dispute on claim narrowing. A dozen cases can be cited for any proposition you might want, which can make it hard to argue for one outcome over another -- especially to a judge that has seen similar disputes so many times before.
Judge McCalla's opinion last week in Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158-JPM (D. Del. Mar. 20, 2025), was thus a breath of fresh air as he writes unencumbered by a wealth of his own words on the issue.
In the opinion (which cites to a truly remarkable number of prior Delaware orders on the issue), he dealt with 3 relatively common questions in the district.
First, the parties disputed whether the plaintiff should narrow from 31 asserted claims down to 18 or 15 (I'll let you guess who was proposing which). Judge McCalla went with 18, citing Judge Fallon's Order in Twinstrand Bioscis., Inc. v. Guardant Health, C.A. No. 21-1126-GBW-SRF (D. Del. Oct. 18, 2022), which stated that “a reduction to approximately 20 claims by the deadline for service of final infringement contentions” is “consistent with other case narrowing order[s] from [the District of Delaware].”
Has it really been four years since Nate wrote this article on How to (Attempt to) Redact a Transcript? That post has aged like fine wine, and I still refer to it regularly as a refresher. Andrew has had a few follow-upposts as well. Redacting a transcript can be harder than it looks, as illustrated by Judge Burke's recent oral order.
In Astellas Pharma Inc. et al v. Ascent Pharmaceuticals, Inc. et al, C.A. 23-486, D.I. 166 (D. Del. Mar. 14, 2025), Judge Burke rejected a joint motion to redact portions of a transcript, citing failure to identify the confidentiality and anticipated harms of disclosure with specificity:
In looking for something to write about today, I happened across Local Rule 9.2, which governs requests for a "Three-Judge District Court":
RULE 9.2. Request for Three-Judge District Court.
If a party believes a civil action or proceeding must be heard by a three-judge district court, the notation “Three-Judge District Court Requested” or the equivalent shall be included on the front page immediately following the title of the first pleading filed in such action or proceeding. The basis for the request shall be set forth in the pleading or in a brief statement attached thereto. The words “Three-Judge District Court Requested” or the equivalent on a pleading is a sufficient request under 28 U.S.C. § 2284. …
Some among you will appreciate this joke. Others, baffled.AI-Generated, displayed with permission
Judge Andrews had a fun opinion yesterday on an issue that does not come up very much at all.
The plaintiff in Pioneer Hi-Bred Int'l Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA (D. Del. Mar. 19, 2025) dropped their infringement claims after claim construction. Rather than dismissing the case, they moved for partial summary judgment and asked Judge Andrews to enter final judgment so that they could appeal the otherwise dispositive Markman order.
The defendant, however, wanted to proceed to an invalidity trial, and thus opposed the entry of a final judgment. Judge Andrews declined to enter final judgment, noting that allowing appeal …
Those of a certain age might recall the Animaniacs. It was an absurdist cartoon with a lot of bits, many referencing the likes of George Burns, Marlon Brando, and other popular public figures from 30 years prior that meant absolutely nothing to 10-year-old me.
And then he puts an orange slice in his mouth and chases the kid around the laundry until he dies! It's amazing!AI-Generated, displayed with permission
One of the bits was "good idea, bad idea," the basic premise of which is right there in the name. I thought it would be fun to revive it for this post on an especially doomed motion before Judge Connolly. Because, while there is much to be learned from the man who climbed Everest, the lesson is often more easily grasped from those unfortunate souls who line the path.
In that vein, I present the lessons that I have gleaned from last Monday's decision in Drake v. General Electric Co., C.A. No. 24-281-CFC (D. Del. Mar. 10, 2025).
Good Idea - Attaching Factual Support for Your Motion
As we've covered in the past, one of the best strategies for a discovery dispute—or any motion—is creating a detailed factual record on, for instance, the actual costs of complying with some request, the difficulty of access some set of documents, or the high cost of vendors. One can find innumerable examples of the Court noting that the losing side of the dispute had presented no more than "attorney argument." At least Judge Burke explicitly encourages the parties to attach affidavits or declarations to their discovery dispute submissions.
Bad Idea - Attaching Your Secretly Recorded Phone Calls
Earlier this month we talked about the required structure for briefs in the District of Delaware. As to the required "argument" section, I said "We all know what this is." Maybe I was wrong.
An "Argument" Section That Wasn't
On Friday, the Court denied a motion for summary judgment for violating the local rule on briefing structure, because it's "argument" section failed to conform to the local rule on briefing structure, LR 7.1.3(c)(1)(f), and had exceeded the page limits for briefing. Roger P. Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 443 (D. Del. Mar. 14, 2025).
Basically, the patentee moved for summary judgment of infringement. But, rather than laying …
Today, Chief Judge Connolly issued a memorandum order in Stirista, LLC v. Skydeo Inc., C.A. No. 23-856-CFC denying a Daubert motion in part because it sought to strike the expert's expert report rather than excluding his testimony.
The Court actually agreed that the expert's testimonyought to be excluded under Rule 702—if only the moving party had filed a better motion:
In its briefing filed in support of the motion, Stirista argues that "Mr. Kelleher's opinions and conclusions related to market confusion should be excluded [under Rule 702] as unqualified, unreliable, and unhelpful to a trier of fact." . . . Having read the parties' briefing on this question, I'm inclined to agree with Stirista. …
Is the non-dispositive ruling in your case really special enough to warrant objections?AI Generated, displayed with permission
Unlike with R&Rs on dispositive matters, the magistrate judges do not typically flag the deadline for objections to non-dispositive orders. No surprise, then, that attorneys sometimes seem to forget that parties can object to even non-dispositive rulings by magistrate judges under FRCP 72(a). Yesterday Judge Williams overruled such an objection to a non-dispositive order by Magistrate Judge Burke.
As Nate discussed last month, Judge Burke had granted a motion to strike a late-disclosed disclosure-dedication argument, because the party making the argument had never disclosed it in response to a contention interrogatory, and instead (apparently) held it until the summary judgment stage.
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