A Blog About Intellectual Property Litigation and the District of Delaware


Entries for date: 2021

Can a Party Redact "Irrelevant" Information from Relevant Documents in Discovery, on the Basis That It Is a Trade Secret?

Andrew E. Russell, June 28, 2021
Protective Order LR 26.2

Secret
"SECRET" stamp, RestrictedData, CC BY 2.0

The parties in Progressive Sterilization, LLC v. Turbett Surgical LLC, C.A. No. 19-637 (D. Del.) brought a dispute about "excessive" redactions to certain production in their patent action.

The defendant sought information from third parties who were under contract with the plaintiff, including various consultants and a former business partner.

Plaintiff apparently has confidentiality agreements with these people, and tried to filter their document production in the case, redacting information it thought should not be produced to the defendant. According to defendant's letter brief:

[Plaintiff] insisted on reviewing [the] third-party subpoena recipients’ responsive documents and redacting certain non-privileged content . . . prior to their production to Defendants

According …

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"Should this be a motion or a discovery dispute?" Tread carefully...

Andrew E. Russell, June 25, 2021
Discovery Dispute

Here's a new one: A defendant in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del.) wanted to delay the trial to coordinate the schedule with another case involving an overlapping patent. So it filed a letter asking for leave to file a 3-page letter briefs, or to have a teleconference:

Given the parties have been unable to agree on an appropriate approach for coordination of both cases, we respectfully request leave to submit the competing views to Your Honor during a status conference or 3-page letter briefs.

Chief Judge Stark denied the request, directing the parties to file a motion instead:

ORAL ORDER: Having reviewed the parties' letters . . . relating to [the …
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O2 Micro? More Like No2 Micro

Nathan R. Hoeschen, June 24, 2021
O2 Micro Claim Construction

We at IPDE have chronicled the Court's efforts to limit the number of terms it construes pretty extensively. Just last month, we discussed Judge Noreika's opinion in Sentient Sensors, LLC v. Cypress Semiconductor Corp., C.A. No. 19-1868-MN (D. Del. May 17, 2021) where she shot down the plaintiff's motion to reconsider one of her claim construction rulings, citing O2 Micro.

This week, there are some further claim construction developments worth talking about—but we'll start first with some interesting history that we overlooked last time around.

A Difficult Claim Construction Journey

Although we didn't discuss it in our previous post, this case had already had a tempestuous claim construction process. The parties had initially submitted 8 disputed …

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Judge Hall Denies Attorneys' Fees, Rejects Argument That ANDA Suit Triggering 30-Month Stay Was Unreasonable

Andrew E. Russell, June 23, 2021
ANDA 30-Month Stay

Pills
HalGatewood.com, Unsplash

Judge Hall today issued an R&R on attorneys fees in In Re Kerydin (Tavaborole) Topical Solution 5% Patent Litigation, MDL No. 19-md-2884-RGA (D. Del. June 23, 2021), an ANDA case.

There, the plaintiff filed suit on four patents even though the PTAB had previously found an earlier patent in the family invalid in an IPR, and even though IPRs were pending on each of the four patents-in-suit.

Filing suit triggered the 30-month stay of FDA approval. Shortly after the suit was filed, one of the defendants moved to stay; plaintiff did not oppose, and actually filed a cross-motion to stay its own action against the other defendants (who opposed).

The Court granted the …

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Update on Judge Andrews' Order to File Settlement Agreements to Determine Damages After Default

Andrew E. Russell, June 22, 2021
Damages Settlement Agreements

Last month we wrote about Judge Andrews' order that a plaintiff who won a default judgment against Aston Martin, LLC must file any settlement agreements from seven other patent suits, in order to help the Court determine the proper damages award.

Plaintiff has now responded.

We wondered in our last post whether the Court would permit plaintiff to file under seal. The answer is yes: the Court found the following short paragraph from the briefing to be sufficient to permit filing the settlement agreements and settlement amounts under seal:

Good cause exists to seal these Settlement and License Agreements. The Agreements contain confidentiality clauses such that if the documents were not filed under seal, Plaintiff might be in breach …
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Can a Defendant's Own Patents Support an Allegation of Infringement of a Plaintiff's Patent? Yes, per Judge Bibas.

Andrew E. Russell, June 21, 2021
FRCP 12 MTD

I wonder how many actual schoolbooks use the
I wonder how many actual schoolbooks use the "Century Schoolbook" font? Hope House Press - Leather Diary Studio, Unsplash

As we mentioned in our last post, Judge Bibas of the Third Circuit has taken two D. Del. patent cases by designation, along with a number of other cases.

I've seen a number of his opinions in other cases come through over the course of the year. They are easy to identify, as his writing style differs from any other judge we've had, in a way that is interesting to see.

One particularly notable opinion of his issued back in March, and apparently slipped our notice at the time. In it, he denies an FRCP 12(b)(6) motion, holding that a defendant's own patents can serve as circumstantial evidence that its products practice the claims, if those patents describe an infringing configuration. ...

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Judge Bibas Stays Patent Action Less Than One Month From Trial, Pending Decision on Daubert & SJ Motions

Andrew E. Russell, June 18, 2021
Sua Sponte Trial Calendar

Hit the brakes!
Hit the brakes! Arthur Poulin, Unsplash

For the first time, Judge Stephanos Bibas of the Court of Appeals for the Third Circuit has taken at least two patent cases by designation in the District of Delaware this year (along with a number of non-patent cases):

  • TexasLDPC Inc. v. Broadcom Inc., C.A. No. 18-1966-SB (D. Del.)
  • Boston Scientific Corporation et al v. Micro-Tech Endoscopy USA Inc., C.A. No. 18-1869-SB (D. Del.)

We mentioned Boston Scientific earlier this week; it was set to go to a jury trial July 12, 2021.

On Wednesday Judge Bibas entered the following order on the docket, staying the case one day before the pretrial conference:

ORAL ORDER, The pretrial …
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The Magistrate and the Clock

Nathan R. Hoeschen, June 16, 2021
Motion to Stay Litigation

insung-yoon-w2JtIQQXoRU-unsplash.jpg
Alarm Clock, Insung Yoon, Unsplash

Delaware judges routinely refer motions to one of our four regular magistrate judges. This is no surprise in a court with such a busy docket, especially when so many of our cases are complex patent matters.

One question I'm frequently asked when a matter is referred to a magistrate judge is "how will this affect the decision time?" It's a sensible question, and one might imagine that a referral from a busy Article III judge to a magistrate judge might result in a quicker resolution. The answer, however, appears to be that magistrate judges take about the same amount of time to resolve issues as the Article III judges.

Looking at a commonly referred …

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On the Importance of Claim Construction Meet and Confers

David M. Fry, June 16, 2021
Claim Construction

We've written in the past about the ongoing struggle to reduce disputed claim terms. Judge Connolly's form scheduling order requires parties to meet and confer to try to reduce disputes before the Markman hearing, and Judge Noreika frequently imposes a similar requirement after briefing is complete.

Some parties treat this process as a formality, believing that they can comply with a short, perfunctory phone call and a letter stating that the parties couldn't agree. This is a dangerous approach to claim construction meet-and-confers, and it doesn't comply with the letter (or the spirit) of the judges' orders.

Judge Connolly drove this point home in a recent oral order, issued the day before a Markman hearing:

Having reviewed the claim construction …
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Do You Need a COVID-19 Jury Instruction?

Jeff Castellano, June 15, 2021
Jury Trials COVID-19

As jury trials re-start in this District and elsewhere, litigants may wonder whether and how to help the jury understand the impact of the pandemic on the court and, more specifically, the proceedings they are about to witness. In at least one case in this District, competing jury instructions touching on those topics were proposed by the parties just prior to the start of a jury trial last month. In that case—In re Chanbond, LLC Patent Litigation, C.A. 15-842-RGA—the parties took slightly different approaches, although they seemed to agree that the jury should be instructed not to read anything into the precautionary measures taken by the Court and the parties. ...

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