Although the Pennypack factors for exclusion are notoriously difficult to meet, judges in D. Del. have been excluding late-disclosed theories more frequently than in the past.

Case in point: on Friday, Judge Andrews granted a motion to strike DOE theories asserted for the first time in an opening expert report. The plaintiff offered a number of excuses for disclosing the theories when it did—"it was only able to collect evidence to support its new DOE theories" after a COVID-delayed source code review, it lacked supporting evidence until a technical deposition in November 2020, and so on.

Judge Andrews not only rejected these excuses, but took it a step further—coming very close to finding that the plaintiff acted in …

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.

Continuing in the vein of last week's discussion of claim narrowing, Judge Andrews issued an interesting opinion on Friday discussing the number of invalidity arguments a defendant was allowed to present at trial.

Although we still occasionally see orders in the district limiting the number of prior art references a defendant is allowed to assert, it has become increasingly common in recent years to see the Court limit the number of prior art arguments or combinations or defenses an accused infringer can assert -- either instead of, or in addition to, a set number of references.

The question of how to count "arguments" has generated a fair amount of opinions in the district, with slightly varying results. Judge Burke gave …

Moving to transfer a case out of Delaware is tough. This is doubly true when Delaware is the Plaintiff's "Home Turf," in which case its choice of forum is entitled to "paramount consideration." See Intellectual Ventures I LLC v. Altera Corp, 842 F. Supp. 2d 744, 754 (D. Del. 2015).

We've previously covered the split in district on the question of whether Delaware is necessarily the home turf of every entity incorporated here, or if a plaintiff needs more than a P.O. box and a certificate on file with the Secretary of State for its choice of venue to warrant "paramount consideration."

As he noted in FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-LPS, D.I. 34 (D. Del. Feb. 10, 2021), Judge Stark "believe[s] that an entity's state of incorporation is part of its home turf" regardless of any other connections it may or may not have with the district. See id. at 6-7.

The interesting bit about the FG decision is the Judge Stark's analysis was unaffected by the fact that the Plaintiff had admittedly chosen to assert the same patents against another Delaware entity in a different district (W.D. Tex.) just one week prior. See id. n.3. Although defendant pointed out that this pretty strongly suggested that the plaintiffs interest in litigating this particular suit in Delaware was more a product of strategy than a commitment to litigating in its beloved state of incorporation, Judge Stark was unmoved and proceeded to deny the motion to transfer.

While motions for reconsideration are frequently filed, they are not frequently granted. Typically they are shut down pretty easily. The rules put the moving party in a box, because parties can neither repeat arguments from their brief nor offer new arguments.

These motions are sometimes granted, though, and Judge Connolly granted one such motion late last month. I thought it would be interesting to look at what worked.

What happened?

The Court had originally granted a motion to exclude expert testimony from a defendant's infringement expert, on the grounds that the expert had testified that the presence of additional structure in a means-plus-function claim results in non-infringement.

We discussed this opinion at the time, pointing out that violating a well-established rule like that one is a great way to get an expert opinion excluded. ...

Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.

The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.

Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:

Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.

Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …

Judge Andrews recently rejected the requests of several defendants in a Hatch-Waxman (or "ANDA") case to file an early motion for summary judgment, calling the request a "pig in a poke."

Judge Andrews, like most judges in this District, does not as a matter of course permit dispositive motions in ANDA cases or early dispositive motions in general. Nonetheless, two defendants in Astrazeneca AB v. Alembic Pharms. Ltd., C.A. No. 20-202-RGA, sought leave to file an early motion for summary judgment of no infringement under the doctrine of equivalents (plaintiff's only infringement theory).

Judge Andrews made short work of the request, first noting that the

defendants do not make a …

Case narrowing is an issue that comes up in most patent cases at some point, whether in the scheduling order, as a discovery dispute, or at the pretrial conference (or, possibly, all three).

When requested, judges in Delaware typically implement an initial two-stage reduction in asserted claims and prior art references, with the first stage occurring before claim construction, and the second afterward.

Of course, sometimes they will implement other schedules depending on the needs of the case and the requests of the parties. And, for cases that reach a pretrial conference, the Court often imposes an additional limit on the number of claims for …

In May 2020, West Publishing and Thomson Reuters filed a copyright action against ROSS Intelligence LLC, alleging that ROSS (through a third party) scraped content from WestLaw to start its own Artificial-Intelligence-based legal research platform. (ROSS has since ceased operations but persists solely to litigate this case.)

Down the line, I imagine the case may raise some interesting questions about AI and copyright. For example, what are the copyright implications of ROSS's use of Westlaw's copyrighted compilation of otherwise public domain materials to train an AI? Isn't that fair use (talk about transformative!)? If not, what are the damages? And so on.

For now, ROSS has moved to dismiss on the ground that West failed to …

As we discussed in our primer on bringing a discovery dispute in Delaware, each judge has their own procedures for scheduling a hearing on discovery disputes. Perhaps because of these different procedures, the time between request and conference varies quite a bit. Because it's sometimes useful to know how long you might expect to wait before receiving a decision on your dispute, I present you, dear reader, with the average time from request to hearing for each of the Article III Delaware Judges as of today (based on their 5 most recent scheduled conferences):

• Judge Andrews - 21 Days
• Judge Connolly - 19 days
• Judge Noreika - 25 Days
• Judge Stark - 39 Days