We noted last week that Judge Andrews has been cracking down on parties filing entire exhibits under seal. Since then, he has issued three more orders regarding filings where exhibits were sealed in their entirety. Beyond those, in two instances he has rejected even more limited redactions:
ORAL ORDER: The justification for sealing is non-existent. Apparently, per Ms. Pascales letter . . . , Medacta is the party who wants to redact. The entire document [that was filed] is going to be unsealed on August 27, 2021, unless Medacta submits before then (1) the document with the redactions in yellow highlighting, and (2) a …
As we've previously discussed, the D. Del. local rules prohibit a party from reserving arguments for a reply brief that "should have been included in a full and fair opening brief" (LR 7.1.3)—a practice commonly referred to as "sandbagging." This rule has real teeth, and failing to follow it can result in strong arguments being ignored altogether.
That's what happened on Monday in a summary judgment R&R from Magistrate Judge Burke. In addressing an invalidity motion that turned on a disputed priority date, Judge Burke found that this was "a disputed issue of fact" and recommend denial.
Given the liberal amendment standard in federal court, it is not surprising that plaintiffs faced with § 101 challenges to their asserted patents may attempt to introduce factual issues through amended pleadings to avoid a dismissal.
Judge Connolly recently permitted the plaintiff in the consolidated Realtime Data litigation to amend its complaints after he had twice found plaintiff's patents (involving data compression) invalid under § 101. RealTime Data LLC v. Array Networks Inc., C.A. No. 17-800-CFC. But the amendments were not enough to save plaintiff's patents, and Judge Connolly walked through the amendments to explain why.
First, the amended complaints asserted that certain claims were not representative of others, and that different limitations "must be considered separately for for the purposes of § 101." But these statements were deemed "conclusory," and in any event, the plaintiff failed to "explain why these limitations are relevant to subject-matter eligibility."
Second, he found that all but one of the "new" claim construction positions were already before the Court, and the remaining proposal (to construe "data accelerator" as "hardware or software with one or more compression ...
Judge Andrews gave some strong guidance about the contents of pretrial orders today. District of Delaware local rule 16.3 requires that pretrial orders include a lengthy list of materials, including a "statement of the issues of fact which any party contends remain to be litigated."
These are often disputed. Parties typically file a pretrial order that sets forth each parties' version of the issues of fact, sometimes with a joint section for any issues where the parties agree. (By the way, that's why it's best for the parties to agree on a schedule for pretrial disclosures in advance of the pretrial order—to avoid having to Frankenstein a pretrial order together on the day of …
Over the past year, we've noticed that the D. Del. judges have shown an increasing willingness to exclude late-disclosed evidence and theories. Until recently, motions to strike were difficult to win under the Third Circuit's Pennypack standard. If the prejudice caused by the late disclosure could be cured, it was almost impossible to get anything excluded.
Today, harkening back to an earlier time, Judge Andrews denied cross-motions to strike allegedly late-disclosed theories from the parties' opening expert reports. Although he found that the defendant's motion presented a close call on late disclosure, he concluded that "[e]ven if these infringement theories were untimely, I find, under the Pennypack factors, that their exclusion is not warranted."
Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.
Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.
That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates...
An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?
The answer, apparently, is no.
Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:
The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he …
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mailsRCA
Yesterday, Magistrate Judge Fallon granted a motion for sanctions against One World Technologies, Inc., a defendant in a patent action, for failing to produce the bulk of its e-mail until 13 months after the plaintiff's initial request.
Defendant One World initially produced only 13 e-mails in response to plaintiff's requests, served back in April 2020. According to a later declaration of counsel, One World's attorneys had received multiple gigabyte's worth of .pst files containing e-mail from the agreed-upon custodians. But they found those files to be corrupted, and they relied on their clients' determination that all but 134 of the e-mails were unrecoverable. …
Most patent cases involve a protective order, and the parties tend mark documents other than prior art as confidential or attorney's eyes only. As a result, many of the more substantive filings—particularly discovery motions, summary judgment motions, and pretrial orders—are filed under seal.
Unlike some other jurisdictions, particularly the Northern District of California, the District of Delaware's procedure for filing under seal is not burdensome. Once a protective order is entered, no motion is required to file a document under seal, and the parties simply file redactions within seven days.
Over time, parties have become more and more liberal with their redactions, often heavily redacting sealed …
Case narrowing is an issue that eventually comes up in most patent cases—the idea that each party should have to reduce the number of claims and prior art references at points during the case.
How Claim Narrowing Usually Goes in a Patent Action
If parties want to avoid a dispute down the line, they can include case narrowing in the scheduling order. More often, however, it comes up at some point after the plaintiffs makes its initial election of asserted claims, and the parties start to get an understanding of the scope of the case.
Typically the initial narrowing occurs before claim construction, and a second round occurs afterwards, sometimes around the time of final contentions. …
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.
