"Did I remember to disclose my infringement counter-arguments? Ah well, I'll just argue that they're responsive."Tim Bogdanov, Unsplash
Judge Williams unsealed a detailed Pennypack decision Friday, where he struck an expert's infringement argument after the party failed to disclose it in their contentions.
The motion and brief provide some helpful context here. The defendant moved to strike material in the expert's opening report that apparently responded for the first time to arguments made in the defendant's non-infringement contentions. Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW, D.I. 1460 at 1 (D. Del. Nov. 28, 2022); Id., D.I. 1461 at 2-3.
The Court rejected an attempt to argue that the argument was "responsive" to a filing …
Words to live by when thinking about whether you need to go to the Court on your nth dispute this week.George Pagan III, Unsplash
It's easy, especially at trial or in the lead-up to trial, to feel like you need to bring every dispute to the Court. The stakes in patent cases tend to be high, clients want to see progress, and sometimes every little dispute ends up feeling critical (particularly if the outcome impacts your trial plans).
Beyond that, sometimes more junior associates are tasked with handling disputes as trial approaches—and may be given the implicit authority to raise disputes, but not to resolve them. Shockingly, disputes can then multiply pretty quickly.
Today I noticed for the first time what may be a new move in the redaction game. I neither like nor understand chess (the two may be related), but it feels like I witnessed the birth of the French defense.
AI-Generated, displayed with permission
As we've discussed ad nauseum, it has become standard practice for Judge Andrews to reject filings that redact exhibits in their entirety (or nearly so) with an oral order like the following:
ORAL ORDER: The redacted filing (D.I. 163 ) is REJECTED because parts of it are redacted in its entirety. Absent a compelling reason, supported by a statement under oath by a party, redactions in their entirety are impermissible; redactions must be done so as to redact the least possible amount of the materials submitted. Failure to make a good faith attempt at such redactions may result in sanctions, the most common of which would be simply unsealing the entire filing. Redacting in its entirety a document or parts of it that contains publicly available materials is prima facie evidence of bad faith. A revised redacted filing is DUE within five business days.
Vertex Pharms. Inc. v. Sun Pharm. Ind. Ltd., C.A. No. 20-988-RGA (D. Del. Apr. 12, 2023).
Despite this repeated refrain, I still see at least a couple such orders every month. This week, however, was the first time I saw a party take the step of submitting "a statement under oath by a party" at the same time it submitted its redactions, rather than waiting for them to first be rejected.
Interestingly, the statement itself was fairly light on detail stating only that it was redacting "the proprietary formulation contained in its ANDA" and describing ...
"Your honor, we move to turn the apple, so that the jury can only see the side that's not rotten."Giuseppe CUZZOCREA, Unsplash
Yesterday, Judge Williams issued an opinion ruling on motions in limine for the trial starting next week in Cirba Inc. (d/b/a DENSIFY) v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del.) (a case we've discussedseveraltimesbefore).
In it, he addressed several MILs. These opinions are always interesting, but given all of the recent discussion of litigation funding, I thought Judge Williams' order on the plaintiff's litigation funding MIL is worth noting.
Plaintiffs in the case moved in limine to preclude reference to their litigation funding arrangements:
As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.
You see, it's in the temperature of the cure—too long, and you've lost yourself a brisketAI-Generated, displayed with permission
I don't want to be that man.
But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.
[Insert seamless transition to legal analysis here, then remember to delete this before posting]
This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.
The plaintiff then moved for a 5 week extension of its deadline to respond, ...
As we've discussed, starting last decade some of our judges have dealt with the influx of § 101 motions by setting "§ 101 motion days" and addressing multiple § 101 motions in multiple cases at the same time and in the same oral argument, with attorneys for each party required to attend the full argument.
These days seem to have been a success, because today Judge Burke issued an order applying the same procedure to a new type of motion—motions to dismiss or strike inequitable conduct allegations:
WHEREAS, the Court has received numerous motions challenging the accused infringer’s counterclaims and/or affirmative defenses relating to inequitable conduct (hereafter, …
To keep the patent assertion entity from coming back from dead, kill it with counterclaimsAI-Generated, displayed with permission
One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
While counterclaims are generally low-cost, they are not free and still involve some work.
They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties …
Motions for reargument are notoriously hard. Winning one is the legal equivalent of the going to the dentist and hearing that you really ought to take it easy and stop brushing so much.
Nevertheless, you see them filed all the time. I imagine the thinking is that, even if the odds are low, you've already lost the motion so things can't get any worse.
But they can!
Things can always get worse!
You could tell he was just trying to hold it in in the last photoAI-Generated, displayed with permission
This was the lesson in Carrum Techs., LLC v. Ford Motor Co., C.A. No. 18-1647 (D. Del. Apr. 11, 2023). A couple of weeks ago, the defendant filed a motion to seal one of its briefs. The motion was short and unaccompanied by a declaration, so Judge Andrews denied it in a one-sentence Oral Order.
Now it's unclear why exactly the Defendant filed a motion to seal in this instance, as the parties had previously filed many documents under seal without a motion in accordance with CM/ECF procedures. The defendant thus moved for reargument on the motion to seal, largely arguing that it hadn't needed to file the motion in the first place:
Over the course of this litigation, various other pleadings have been filed under seal by agreement of the parties. Ford did not intend to request different treatment of its Memorandum and Exhibits than prior sealed filings in this litigation. Rather, Ford proceeded in a manner ...
The Court issued an order today clearing all of our calendars for the District of Delaware's Bench and Bar, which is set for September 21-22, 2023.
The order says that it moves all filing and service deadlines to the following Monday:
WHEREAS, the Court having announced that it will host its biennial District of Delaware Bench and Bar Conference on September 21 and 22, 2023, and the
Court wishing to promote the participation of as many members of the Bar as possible;
IT IS HEREBY ORDERED that all members of the court - District, Magistrate, and Bankruptcy Judges - will, to the greatest extent possible, cancel and refrain from scheduling court proceedings and filing deadlines on …
We've talked about how it's generally understood that parties can agree to modify certain deadlines in the District of Delaware without a stipulation, such as discovery response deadlines, deposition dates before the close of fact discovery, or deadlines under the Default Standard.
We were careful to exclude depositions occurring after the close of fact discovery from that list. After all, the fact discovery deadline is set by court order. Thus, parties often stipulate to take fact depositions after the close of fact discovery.
An opinion from Judge Williams yesterday held that these stips are unnecessary, and the parties can take depositions after the close of fact discovery without any stip to that effect:
ORAL ORDER: The Court has reviewed the Stipulation to take deposition outside fact discovery ...
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