A Blog About Intellectual Property Litigation and the District of Delaware


Caution Tape
Hiroshi Kimura, Unsplash

I came across this case today, and I thought it was a good example of why, in Delaware, it can be dangerous to be seen as acting unreasonably, particularly when it comes to things like discovery disputes and case management.

Plaintiffs filed a first case in 2018, asserting infringement of a single patent. Earlier this year, it filed a second case against the same defendant for a newly-issued patent relating to the same subject matter.

Plaintiffs sought to consolidate the two cases because they involved similar facts:

[The cases involve] identical parties, identical accused acts of infringement, the same accused process, and related patents with identical inventors, materially identical specifications, and overlapping claim terms.

Defendants opposed consolidation unless plaintiff agreed to a single request: that the parties use the same experts, so that when the two cases go to trial together, the jury is not confused by two sets of experts testifying on the same subject matter.

Plaintiff refused, ostensibly on the basis that expert discovery remained open in the first case.

Judge Connolly denied consolidation within a week of receiving the request, characterizing the defendants' proposal as reasonable:

The Court will not consolidate this action with any other action absent Defendants' agreement. . . . Defendants reasonably agreed to consolidate the two cases if the parties agreed to use in the consolidated case the same experts employed by the parties in [the first action]. Plaintiffs refused to agree to this request, and therefore Plaintiffs should bear the consequences of litigating separately an action it filed almost two years after it filed [the first action]. The Court will entertain Defendants' proposed motion to stay.

This week, Judge Connolly granted defendants' proposed stay, again noting the reasonableness of defendants' initial request. The first trial is set for May of this year, and the stay will expire 14 days after the trial.

Thus, by leaving the impression that they were being unreasonable, plaintiffs' resolution on their second infringement action may be delayed for a year or more.

I have to think that plaintiffs might have fared better had they given a reason for needing to use different experts, or if they had shown a willingness to compromise in some way (perhaps by limiting the scope of testimony by any additional experts).

Reading their letter, the tone was more "we're asserting our rights" rather than "we're trying to make things easier for the parties and the Court," but taking a hard line is not usually the most effective way to handle these kinds of disputes in Delaware.

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