A Blog About Intellectual Property Litigation and the District of Delaware

Entries for date: December 2023

Christmas Tree
Andrew E. Russell, displayed with permission

Merry Christmas and happy holidays to all! We'll be taking a break from posts for a bit as, historically, activity has been slow for the week between Christmas and New Year's. We'll see you in 2024!

"How much of the puzzle do we really have to give them . . . ?" Bianca Ackermann, Unsplash

The District of Delaware's Default Standard for Discovery requires contentions in patent cases.

One common Delaware counsel question is: what level of detail is required for contentions?

The answer varies on what the concern is. There is a certain level of detail that will probably preclude the Court from ordering you to supplement your contentions—but providing just that bare level of detail may not be enough to preserve all arguments that you later want to make.

On Monday, Judge Burke denied a motion to strike invalidity contentions where a party had disclosed an obviousness theory as to a patent based on modification of a prior art reference, but had not disclosed their intent to cite and rely on their own product as evidence that the modification was obvious.

The plaintiff had moved to strike the discussion of the defendants' own product from their expert reports, on the theory that their contentions failed to to disclose their intent to use that product in their obviousness analysis. Judge Burke denied the motion, and explained that a party need not disclose all evidence in support of its contentions:

Although this is a difficult issue, the Court is not prepared to say that Defendants' actions amounted to an untimely disclosure. This is because Defendants have affirmatively represented that they are not relying on the direct aortic Engager system as prior art itself; instead, they rely on it only as a piece of evidence that will be used to "show that a direct aortic version would have been an obvious modification to Engager 3.0 at the relevant time." (D.I. 361 at 2) In other words, Defendants are relying on the system simply as evidence in support of a theory that was itself timely disclosed. And as Defendants note, courts generally hold that: (a) in validity-related or infringement-related contentions, a party is not required to cite to every piece of evidence that will be used to support a given theory; and (b) it is proper for an expert to expand upon such theories in his expert report. . . . The Court also notes that it is not as if Plaintiff had zero prior knowledge of the existence of the [Defendants'] system. As Defendants point out, they produced documents in discovery regarding this system, and their engineers testified at some length about the device during depositions. . . . (4) In light of the above, the Court cannot say that Defendants' conduct amounts to untimely disclosure that should be stricken.

Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361, D.I. 447 (D. Del. Dec. 18, 2023).

In my view, the Court is not saying that no evidence at all needs to be disclosed in support of the contentions—just that this particular evidence went beyond what was necessary, under the facts of the case.

In fact, the Court seemed uncomfortable ...

Dauberts, especially of technical experts, are notoriously difficult. An error needs to be pretty blatant for the Court to find that it's not mere grounds for cross-examination. Moreover, it tends to be hard to find something useful to cite in a Daubert brief because the inquiry is often very fact-specific.

Thankfully we have Judge Bryson's opinion in Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-WCB (D. Del. Dec. 13, 2023) (Mem. Op.), which sets forth a pretty bright line rule on a technical failure that warrants exclusion—failure to use a control in an experiment.

AI-Generated, displayed with permission

The specific experiment at issue was elegant in its awfulness. The claims required that the lid to a device have a "tortuous passage" that assisted in preventing leakage. To test if the accused product's tortuous passage prevented leakage, the plaintiffs' expert filled up the device, turned it on its side and checked for leaks. Finding none, he opined that the passage prevented leakage.

Judge Bryson noted the obvious flaw in this test and excluded the experts opinion:

ScentAir’s third and most telling objection is that Dr. Hultmark did not also test a device similar to the Breeze cartridge but lacking a tortuous passage, in order to determine whether that device would leak when filled 45 percent full of fragrance oil and placed on its side . . . .Given that there was no control for Dr. Hultmark’s test, the fact that the Breeze product did not leak under those conditions does not show that it was the tortuous passage in the Breeze cartridge that was responsible for the absence of leakage. Because Prolitec has failed to provide a satisfactory answer to this flaw in Testing Configuration 1, I find that the evidence regarding that test would not be helpful to the jury, and the evidence will therefore be excluded.

Id. at 28-29.

That's about as straightforward a Daubert ruling as I've ever seen. I'll hope to cite it myself soon (enemies beware!)

It's impressive when an attorney files a short letter and gets the Court to do something that it is not often inclined to do.
It's impressive when an attorney files a short letter and gets the Court to do something that it is not often inclined to do. Immo Wegmann, Unsplash

The District of Delaware generally suspended its mediation program in 2021, and mediations before a magistrate judge rarely happen in patent cases these days (although they do sometimes happen in some other cases, such as employment cases).

Since then, parties have sometimes moved to private mediations—especially when ordered to—but generally in my experience the overall number of cases that go through mediation has declined, and there aren't a huge number of local patent-case mediators.

When we last discussed this, we noted from comments at the 2023 Bench and Bar conference that …

Jon Tyson, Unsplash

The District of Delaware has a 5pm ET filing deadline. This was originally instituted as a 6pm deadline, back in 2014, to improve quality of life for practitioners here. As I've said before—it has been extremely successful.

The 5pm deadlines keeps young associates and staff from having to unexpectedly stay until midnight, disrupting family plans (I recall this happening about once a week). It also keeps clients from having to pay attorneys and staff to sit around and wait for filings. And everyone quickly adapted to working towards either a 5 or 6pm deadline rather than a midnight deadline.

That said, whether the deadline is 5pm, 6pm, or midnight, it's not uncommon for parties to miss it by a few minutes. Often these delays relate to the fact that PACER and CM/ECF tend to slow down quite a bit around 5pm, especially before weekends, as everyone tries to file things simultaneously.

Normally this is not cause for panic. Unlike some jurisdictions, judges in D. Del. generally have not taken an interest in enforcing exact, precise compliance with the 5pm deadline. I have seen parties miss the 5pm by a few minutes countless times, with no response from the Court. Most Delaware counsel seem to agree that it's not worth the Court's or the parties' time to seek a remedy from the Court for a deadline that was missed by only a few minutes.

5 Hours May Be a Bit Much

So I thought it was worth pointing out an instance this week where a party pushed it to far. In Dental Monitoring v. Get-Grin Inc., C.A. No. 22-647-WCB (D. Del. Dec. 13, 2023), a party filed a letter brief at 10:14, and an unopposed motion for leave to file the brief late:

On Tuesday, December 5, 2023, the parties advised the court by email that they had a discovery dispute in this case. They suggested a briefing schedule granting the plaintiff one week to file its letter brief, followed by the defendant’s letter brief one week later. The court directed the parties to file their letter briefs on a shorter briefing schedule, giving the plaintiff until 5 p.m. Eastern Time on Friday, December 8, 2023, to file its three-page letter brief, followed by the defendant’s responsive three-page letter brief at 5 p.m. Eastern Time on Tuesday, December 12, 2023, and an optional reply brief for the plaintiff, to be filed by 5 p.m. Eastern Time on Wednesday, December 13, 2023.
The plaintiff filed its opening letter brief on time. The defendant did not. Instead, at 9:04 p.m. Eastern Time, after the deadline had passed, the defendant filed a motion to extend the time for filing its brief until 11:59 p.m. on December 12, 2023. The plaintiff did not oppose the motion, provided it was given a one-day extension for filing its one-page reply letter. At 10:14 p.m., more than five hours after the deadline, the defendant filed its responsive letter brief.

Id. at 1. Judge Bryson (sitting by designation) criticized the motion for an extension because ...

Paragraph 3 of Delaware's Default Standard for Discovery requires the parties to disclose, early in the case, "[t]he 10 custodians most likely to have discoverable information in their possession, custody or control, from the most likely to the least likely."

At a glance, this provision seems to require disclosing more or less the same universe of people as Rule 26(a), which requires disclosure of "the name and, if known, the address and telephone number of each individual likely to have discoverable information . . . ."

There wasn't really a relevant pic for this, so here's a cute bird
There wasn't really a relevant pic for this, so here's a cute bird Nate Hoeschen, displayed with permission

A recent decision from Judge Fallon in DataCore Software Corporation v. Scale Computing, Inc., C.A. No. 22-535-GBW-SRF (D. Del Nov. 30, 2023) (Mem. Order), however, illustrates one important difference between the two disclosures.

The Plaintiff there listed the inventors of the asserted patent on both their Paragraph 3 and Rule 26(a) disclosures. None of the inventors, however, were currently employed by the Plaintiff. Accordingly, the plaintiff had none of their ESI to produce to the Defendants. After realizing this, the defendant moved to replace those custodians with others who might actually have documents.

Judge Fallon rebuked Plaintiff for including the inventors on its paragraph 3 disclosures:

this ruling should not be construed to condone Plaintiff's identification of five ESI custodians who were later discovered to have no ESI. Plaintiff's suggestion that no large company retains ESI for twenty years, when the Asserted Patent was filed, begs the question of why these non-employee inventors were identified by Plaintiff as ESI custodians in the first instance.

Id. at 6-7.

As you might gather from the above, however, the Court actually denied the defendants motion to replace the custodians for two reasons. First, the plaintiff waited until well after the close of fact discovery to raise the dispute:

There is no evidence on the present record that Defendant challenged Plaintiff's Paragraph 3 designations after those designations were made, even though six of the nine designees are named inventors of the Asserted Patent, and only two of those inventors were highly ranked on the Paragraph 3 disclosure. Moreover, Defendant did not challenge the sufficiency of the custodial designations or production when the deadline for substantial completion of document production expired on June 1, 2023. Instead, Defendant first raised an issue regarding the lack of ESI production for five of the nine custodians on October 9, 2023, more than a month after the close of fact discovery.

Id. at 4.

Second, they failed to explain why they needed the particular additional custodians they selected:

Instead of targeting one or two additional custodians likely to have relevant information, Defendant lists five proposed replacement ESI custodians without adequately explaining why each of these individuals are believed to have relevant, noncumulative information tethered to the claims asserted in the case.

Id. at 5.

Pro-tip - if you see a bunch of inventors on a paragraph 3 disclosure, challenge that right quick.

Just imports - no exports? No, he's an importer and exporter.

Judge Choe-Groves, of the Court of International Trade, has been newly added to the list of Delaware’s visiting judges. In early November, she was reassigned a first handful of cases.

[Thanks to an unnamed colleague who mentioned this fact in passing today and expressed surprise that we hadn’t highlighted it on the blog. Keep giving us feedback - we love it!]

Judge Choe-Groves has served as a visiting judge in several other jurisdictions including the Southern District of New York, District of Idaho, Northern District of Oklahoma, and United States Court of Appeals for the Ninth Circuit.

Not all of Judge Choe-Groves’ visiting assignments have been patent cases. In fact, most of her earlier assignments appear to be …

Five Candles
Steve Johnson, Unsplash

Chief Judge Connolly's scheduling order requires parties to rank their Daubert motions, and gives the Court the discretion to automatically deny all lower-ranked motions if it denies any one motion. In other words, if a party files five Daubert motions, and the Court grants the first-ranked motion but denies the second, the Court can then deny motions three, four, and five:

If the Court decides to deny a motion filed by the party, barring exceptional reasons determined sua sponte by the Court, the Court will not review any further Daubert motions filed by the party.

It has a similar provision for summary judgment motions Thus, it's important that parties split up their motions and rank them. …

#EatFresh AI-Generated, displayed with permission

Last week, while I was wrapping presents with all the care and skill of a subway sandwich artisan, Judge McCalla weighed in on the issue of whether a complaint can establish knowledge for the purpose of willfulness, dealing with a novel argument in the process.

To begin, he sided with Chief Judge Connolly and Judge Williams, holding that the complaint cannot establish knowledge for the purpose of a claim of willful infringement:

In other words, post-suit knowledge alone is insufficient to sustain a claim for willfulness even at the motion to dismiss stage

Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158, D.I. 50 at 6 (D. Del. Dec. 8, 2023).

The …

"Please, dear Court, don't strike our new argument that totally prejudices the other side." Lampos Aritonang, Unsplash

It can sometimes be tough to decide whether to ask the Court permission, or to just do something. The answer can vary depending on the thing you are doing and the judge.

But certain things clearly require permission. Say, for example, offering a "supplemental" expert report with a new damages calculation almost two years after the reply expert report, and only 19 days before trial:

There is no dispute that MED-EL failed to disclose Barry Sussman’s most recent damages calculations based on survey results (set forth in Paragraph 11 of his Supplemental Expert Rebuttal Report) during the expert disclosure period. Indeed, the …