This is a dispute I've seen come up in a few cases. The D. Del. Default Standard for Discovery includes a provision about search terms, setting forth that if a party uses search terms to locate responsive documents, it must disclose the search terms and allow the opposing party to request up to 10 additional terms.
This provision can cause some confusion. Sometimes parties read the Court's Default Standard, see the search term provision, and think that's the only way to collect ESI. Or, sometimes, a party really wants to dictate search terms to the other side, and argues that the Default Standard requires the use of search terms.
Claim construction is one of the classic decision points in patent litigation. Like the cherry blossoms portend spring, a ripening Markman signals to litigants that the season of claim narrowing and expert reports has come at last.
AI-Generated, displayed with permission
But sometimes the winter is long and cold. Although several of our Judges formally endeavor to issue a Markman decision within 60 days of the hearing, their busy dockets often make that impossible. You'll thus sometimes see the parties try and push off the various deadlines that would normally be a bit easier with a Markman in place—most notably expert reports, which otherwise might have to be done with alternative constructions.
(Eds. note - an earlier draft of this post extended the spring metaphor a further two paragraphs. I think Valentine's Day is affecting me.)
An Oral Order from Judge Burke last week serves as a reminder that the lack of Markman order is not good cause per se to push those other deadlines. The Markman hearing in Bausch & Lomb Inc. v. SBH Holdings LLC, C.A. No. 20-1463-GBW-CJB (D. Del. Feb. 9, 2024) (Oral Order), was originally scheduled for June 2023, with opening expert reports due the next February. The hearing was rescheduled to September 2023, however, shortening the interregnum. When Judge Burke issued a statement on the docket notifying the parties that the Order would not be issued within 60 days of the hearing, the defendant moved to amend the schedule so that expert reports would not be due until 90 days after the order (with all subsequent events occurring a proportionate time after that).
"Hang on, judge. You can't just rely on what is in our letter briefs. We filed those three days ago!"AI Generated, displayed with permission
Judge Burke issued an oral order late last week addressing a discovery dispute where a defendant requested that the Court order plaintiff to apply more e-mail search terms. He denied the request, noting that the parties were clearly still meeting-and-conferring:
ORAL ORDER: The Court, having reviewed the portion of the pending motion regarding discovery disputes, (D.I. 198), in which Defendant requests that the Court order Plaintiff to utilize 24 additional ESI search terms ("Defendant's request"), and the briefing related thereto, (D.I. 204; D.I. 212; D.I. 214), hereby ORDERS that Defendant's request is DENIED, without prejudice to renew. That request, as briefed, is clearly unripe. In the briefing, the parties, including Defendant, alternatively described the issue as one as to which the parties were: (1) "continu[ing] their meet and confers [such that Plaintiff] offered some supplemental ESI searches and... [Defendant] requested some modifications[,]" (D.I. 204 at 2); (2) "still negotiating on the scope of additional search terms and are not at an impasse" and "working... to narrow the additional search terms[,]" (D.I. 212 at 1); and (3) "continu[ing] to discuss matters" in that Defendant "intends to submit new search terms [that] should resolve all of [Plaintiff's] alleged criticism" such that the matter "should be resolved" in the future, (D.I. 214 at 1).
Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821, D.I. 226 (D. Del. Feb. 9, 2024).
He explained why the Court requires parties to ...
All of the sitting judges in the District of Delaware require, in their form scheduling orders, that each party (or each side) may file no more than three motions in limine.
But winning a MIL can really change the scope of trial by precluding key evidence or arguments. In complex patent cases, parties very often want more (sometimes many more) than three MILs to shape the trial in their favor.
One common attempted solution is to merge multiple MILs together. Instead of "exclude late-disclosed doctrine of equivalents theory" and "exclude a late-disclosed exhibit related to copying," a defendant might file a MIL entitled "exclude untimely theories and evidence" that relates to both of those things, …
Why did physicists refuse to write about the Antitrust Paradox? Because every time they tried to define the relevant market share, the observer effect kicked in, and the monopoly disappeared. (I hope readers who have dual Bork/quark interests enjoyed that.)
Today’s highlighted opinion proceeds from trademark law, crosses into antitrust law, and has implications for patent law. In it, Judge Connolly rejects a plaintiff's attempt to argue that the defendants' prior filing of trademark litigation against competitor gave rise to anti-trust and unfair competition claims.
Noerr-Pennington Precludes Some Tort and Anti-Trust Claims Based on Litigation—Unless It Was Sham Litigation
Judge Connolly explained that the Noerr-Pennington doctrine provides immunity from certain types of claims that a plaintiff …
Visiting Judge Wolson of the Eastern District of Pennsylvania issued a colorful opinion on Monday. It starts with a joke:
Economists love assumptions. One joke recites that a physicist, a chemist, and an economist find themselves on a desert island with a single can of food. The physicist offers to calculate the force needed to use a coconut to open the can. The chemist offers to make a solution that will eat through the can’s top. The economist tells them they are making it too complicated and just to assume a can opener.
Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW, at 1 (D. Del. Feb 5, 2024).
Certain districts are famous for being better for plaintiffs. Your Texan districts immediately spring to mind.
There's always been a bit of a dearth in data to support the idea that those districts represent greener (read: more full of defendants' money) pastures than our own Delaware.
Stereotypical Average Texan PlaintiffMathieu Stern, Unsplash
With that in mind, I decided to dig into the most easily ascertainable, and thus best, stat on win rates in our own Delaware. To that end, I submit the win rates for plaintiffs in patent jury trials before each of our 4 sitting judges over the last 2 years (I use Judge Andrews here because Judge Hall does not have a statistically significant number of jury …
Last month, after her elevation to the bench as a district judge, Judge Hall issued a revised form scheduling order.
I think it's worth paying attention to what changes, even if the changes may not directly apply in your case, because it shows what the judges are focused on and thinking about.
Plus, it usually doesn't hurt to comply with a judge's newest procedures even if they are not required by the (outdated) scheduling order in your case.
So, what's new?
Stating the Meaning of "Plain and Ordinary Meaning"
Judge Hall adopted a set of additional requirements for joint claim construction briefs. Like all of our current judges, she uses Judge Andrews' procedure of a joint claim construction brief. But …
Judge Burke issued an interesting R&R denying a motion to dismiss this week, in Parus Holdings Inc. v. Amazon.com, Inc., C.A. No. 23-190-GBW-CJB (D. Del.).
The defendant moved to dismiss based on a license defense, attaching the license. The plaintiff responded, itself attaching and relying on the license, as well as on other materials, such as a declaration from its CEO.
The Court rejected the motion—not because the defendant isn't licensed, but because it cannot even reach that issue on a motion to dismiss:
In resolving motions to dismiss under Rule 12(b)(6), . . . courts generally consider only the allegations in the complaint, exhibits attached to the complaint, matters of public …
Administrative law is famously labyrinthine. And not the fun kind of labyrinth with awesome bull-headed dudes.
"You totally rule Asterion" "I totally already know that"AI-Generated, displayed with permission
Today's case deals with an FDA practice -- not even a regulation! -- that had an outsized effect on an ANDA.
Mylan Pharmaceuticals Inc. v. Bayer Intellectual Property GMBH, C.A. No. 23-556-RGA (D. Del. Jan. 31, 2024) (R&R) was a declaratory judgment action spawned from an earlier ANDA dispute. In that earlier case, Mylan had filed given a Paragraph IV certification as to several of Bayer's orange book patents for Xarelto, and a Paragraph III certification as to another.
(Eds. Note - if you're wondering what a paragraph IV certification is, you should probably just stop here, this one gets pretty weedsy and the jokes are mostly over).
When all was said and done in that earlier case, one of the patents was invalid, and another Bayer never sued on at all, apparently conceding the product did not infringe. Mylan thus should have been able to launch as soon as the paragraph III patent expired.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
