As an old dog, I'm always excited to learn a new trick. For instance here is me being taught to fetch:
Contact me for the full series of videos wherein, after many weeks of simply throwing the ball on the ground for me to pick up, she throws it right back to me.Bellini, displayed with permission
As a lawyer, this often takes the form of some new novel argument that I might want to try out myself. Sometimes, however, a new trick turns out to be particularly ill-fated.
The defendant in Bausch & Lomb Incorporated et al v. SBH Holdings LLC, C.A. No 20-1463-GBW-CJB (D.I. 250 (D. Del. Feb. 5, 2025) (Oral Order), moved for summary judgment under of no infringement under the DOE based on the disclosure-dedication doctrine. The problem was that plaintiff had served a rog asking for defendant's non-infringement contentions, and the defendant had not disclosed this theory. So, the plaintiff moved to strike the argument.
The defendant countered that, since disclosure-dedication is based upon the specification itself (which plaintiff obviously had), and is decided by the Court as a matter of law, there was no need to disclose the theory in response to a rog (this is the bit I hadn't seen before).
Judge Burke, however, disagreed, and granted the motion to strike:
Defendant’s arguments have no merit. Fed. R. Civ. P. 33(b)(2) says that a party must respond to an interrogatory within 30 days, and Fed. R. Civ. P. 26(e) says that a party must supplement a response to an interrogatory in a timely fashion if, inter alia, it learns that a prior disclosure is incomplete or incorrect. There is no exception to these rules of the kind Defendant suggests. Just like every other party in a patent case, Defendant had to timely respond to contention interrogatories—a means of discovery that plays an important narrowing role in patent litigation. Defendant’s view to the contrary would, if permitted, wrongly allow a party—and not the Federal Rules of Civil Procedure—to determine whether it has to follow the discovery rules in a patent case, and to dictate what theories it does and doesn’t have to disclose. For all of these reasons, there can be no doubt that Defendant’s incredibly late disclosure of the DD theory in its summary judgment briefing (filed in September 2024) amounts to an untimely disclosure under Rule 26(e).
Id. (internal citations omitted).
The Court then went on to analyze the issue under Pennypack, finding that each of the factors were neutral or supported exclusion.
I don't know if everyone does this, but I keep PDF copies of the Federal Rules of Civil Procedure and Federal Rules of Evidence synced to my laptop, phone, and tablet (I also sleep with a paper copy under my pillow, obviously, like every good federal court litigator).
If, like me, you have been eagerly awaiting the official updated rule PDFs with the 2024 ruleamendments, you are in luck. They came out today at the usual places:
"Here are our opening summary judgment papers. What do you mean you think there might be a dispute of fact??"AI-Generated, displayed with permission
Judge Andrews issued an order a couple of weeks ago applying a Delaware local rule in a way I haven't seen before.
District of Delaware Local Rule 5.4 talks about when a party must serve vs. file discovery materials. Broadly, it says that in pro se cases, discovery request and responses is filed with the Court, and that in other cases, they are served but not filed.
But paragraph (b)(3) of LR 5.4 lays out what happens with deposition transcripts and other discovery materials when relied upon:
If depositions, interrogatories, requests for documents, requests for admissions, answers, or responses are to be used at trial or are necessary to a pretrial or post trial motion, the verbatim portions thereof considered pertinent by the parties shall be filed with the Court when relied upon.
I've read this rule before but, honestly, have not thought much about it all that much since. Obviously, if you are relying on material, you will have to provide that material to the Court.
But Judge Andrews faced a situation where a party filed 490 pages of deposition transcripts containing the opposing party's information, which it had designated outside-counsel-only. They only cited a few of the pages in the related motion. The opposing party objected, saying it was unnecessary to file the transcripts, and doing so would unnecessarily put their information at risk.
The Court agreed, and cited Local Rule 5.4(b)(2) as requiring parties to file only the pertinent portions of deposition transcripts and discovery responses:
I received three submissions. . . . In relevant part, Plaintiff said there was no rule prohibiting what Plaintiff did, and some judges prefer to get complete depositions, etc. But I think Delaware does have a relevant Local Rule-Rule 5.4(b)(3), which states, in part, "If depositions ... are necessary to a pretrial... motion, the verbatim portions thereof considered pertinent by the parties shall be filed with the Court when relied upon." Some cases may require some judgment at the margins in deciding what is "pertinent." Plaintiff's decision to file the entirety of the two depositions and the twenty-six pages of the billing records is not in compliance with the Local Rule. The great bulk of the filings are clearly "not pertinent" to the motion to strike the expert report. Thus, they should not have been filed the way Plaintiff filed them.
Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., C.A. No. 19-2216-RGA, at 2 (D. Del. Jan. 14, 2025).
All of the Delaware judges have rules in their form scheduling orders limiting the circumstances in which summary judgment motions can be filed. Most notably, each forbids the filing of summary judgment motions in ANDA cases absent leave. In other patent cases, SJ motions cannot be filed more than 10 days before the deadline for dispositive motions without leave.
As part of my ongoing series of posts about analytics when I have nothing else to write about (why can't I find Al Capone's cave?), I've compiled some statistics on how likely these motions are to be granted, based on the issue (infringement, validity, something weird).
Looking at all the cases for the last three years (and a bit extra so I could get to 20 and not have to do math) the general success rates for these is a pretty abysmal 20%. Validity issues fair a bit better at about 29%. Infringement/noninfringement also beat the average at about 25%. Weirdly, inequitable conduct seems to fair the worst, at a whopping 0.0% (rounding up).
I've got some more analytics on specific judges, but I'm saving them in case I need another one of these on Thursday.
We were a bit slow on the draw on this one. You may have already read about it in Law360. But it's significant enough that I think we should post about it anyway.
Last month, in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.), two applicants filed a 28 U.S.C. § 1782 application seeking leave to serve subpoenas on a company in the United States to get discovery related to a foreign proceeding.
The application itself referred only to subpoenas against the company, but the proposed order incorporated a subpoena against an individual, who was not mentioned in the application itself.
The Court rejected the application, at least initially, …
On Monday, we posted about how the Court had denied a motion to bring a discovery dispute, because a 12-minute meet-and-confer was not long enough.
If you were curious, as I was, about how long of a meet-and-confer would be sufficient, we now have a data point. The parties re-filed their letter after conducting an additional19-minute meet-and-confer, and the Court granted their motion and permitted them to bring the dispute to the Court.
So the data points we have so far are that 12 minutes is insufficient, and that two meet-and-confers totaling 31 minutes(12+19) were sufficient.
There is obviously a range of times in between those numbers that might or might not …
Patent and antitrust law are awkward bedfellows. Antitrust law is all about encouraging competition by limiting the the use of market power, while patent law aims to encourage innovation by eliminating competition. The counterclaim writes itself.
Judge Burke had a decision the other day dealing with an aspect of antitrust law that appears to be a first in Delaware.
The plaintiffs in 10x Genomics, Inc. v. Curio Biosciences, Inc., C.A. No. 23-1375-MN, were the patentee and exclusive licensee. They had apparently been on a bit of a litigation spree of late, and the defendant was the latest in a series of suits. The defendant counterclaimed under section 2 …
When people say that D. Del. is "against litigation funding," they imply that the Court has some kind of general bias against parties who use litigation funding. That's wrong. I've never seen a Delaware judge dislike or rule against a party because the party used litigation funding. And the Court as a whole is certainly not biased against plaintiffs (or defendants), funding or no funding.
With all of that said, I thought it was worth noting that Judge Burke recently ordered production of litigation funding material to the extent it related to the value of the patents.
After reviewing litigation-funding-related documents in camera, he ordered production of those that relate to the value of …
Old timers remember RainDance Techs., Inc. v. 10X Genomics, Inc., Civil Action No. 15-152-RGA, 2016 U.S. Dist. LEXIS 33875 (D. Del. Mar. 4, 2016). After the appendix of forms was banished from the Federal Rules of Civil Procedure, Judge Andrews' opinion in Raindance was among the first in the nation to hold that complaints alleging infringement had to do more than simply list the patent and the product as in the old Form 18.
For a couple years it was the citation of choice in the district for motions to dismiss, with every defendant arguing that the complaint lacked sufficient detail relating their product to the asserted patent claims.
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