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Entries for search: pennypack

"Though the Pennypack factors may be very forgiving, they are not a sieve."

Andrew E. Russell, June 19, 2020
Discovery Dispute Pennypack

This is not an illustration of the Pennypack factors in action
This is not an illustration of the Pennypack factors in action Lindsay Cotter, Unsplash

I just came across the above quote, which is from a discovery dispute back in April where Judge Burke struck a very-late-disclosed witness.

It's an interesting—and accurate—description of the Pennypack factors. Most DE patent litigators are familiar with Pennypack, which set forth a loose set of factors for deciding whether to apply the "extreme" sanction of excluding "critical" evidence. Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 905 (3d Cir. 1977).

Even though Pennypack issued way back in 1977, modified versions of its list of factors are still applied today. When they come up, they most often favor the party producing …

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Pennypack Strikes Back: The Return of Curative Discovery

David M. Fry, Aug. 23, 2021
Motion to Strike Pennypack

Cave
Cade Roberts, Unsplash

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."

At …

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Chief Judge Stark Strikes Expert Opinions Under Pennypack

Andrew E. Russell, Oct. 21, 2020
Expert Discovery Motion to Strike

Pennies.
Pennies. Mark Bosky, Unsplash

I always find it interesting to see what kinds of facts that can succeed in a motion to strike. As I've mentioned, motions to strike in the Third Circuit are governed by the Pennypack factors, which can be tricky to meet and often favor lesser remedies (although the Court does strike things).

Here is what it took to warrant striking portions of an opening infringement report Arendi S.A.R.L. v. LG Electronics, C.A. No. 12-1595-LPS (D. Del.):

  • Disclosing infringement contentions against five new products for the first time;
  • Relying on previously undisclosed evidence;
  • Doing so in the 8th year of a case (albeit one currently without a trial date); …
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Don't Rely on Pennypack: Judge Williams Easily Strikes Late Contentions

Andrew E. Russell, March 6, 2023
Pennypack Contentions

Is the reign of Pennypack coming to an end?
Is the reign of Pennypack coming to an end? AI-Generated

We talked earlier this year about a decision by Judge Burke that struck a parties' final infringement contentions under a good cause standard, and declined to apply the much looser Pennypack standard.

Today, citing Judge Burke's opinion, Judge Williams likewise declined to rely on Pennypack in striking late-served "Amended Final Invalidity Contentions":

According to the Court's Scheduling Order, Defendants must serve their Final Invalidity Contentions to Chervon by December 17, 2020, which they did so. D.I. 37 if 7(f). On July 27, 2022, Defendants served their Amended Final Invalidity Contentions. D.I. 316 at 1; D.I. 319 at 1. Defendants did not request leave from the Court to amend their Final …
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Court Strikes Key Infringement Argument Where Party Had No Good Explanation for Late Disclosure

Andrew E. Russell, April 24, 2023
Infringement Contentions Pennypack

"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 …

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Don't Waive Your Daubert Motion by Waiting Until the Motion In Limine Stage

Andrew E. Russell, Jan. 30, 2023
FRCP 702 Motion to Strike

Stealth Bomber
Matt Artz, Unsplash

We've talked before about MILs that are really stealth summary judgment motions, but now let's talk about MILs that are stealth Daubert motions and stealth motions to strike!

On Friday, Judge Burke denied a motion in limine to preclude the testimony, holding that it was really a Daubert motion, and the party had waived it by failing to present it by the deadline for Daubert motions:

ORAL ORDER: The Court . . . hereby DENIES [Defendants' Motion in Limine No. 1] for the following reasons: (1) [T]he Scheduling Order in this case provided that "[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the [C]ourt at [the status conference …
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No, You Can't Add a Copying Defense to Obviousness Two Weeks Before Trial (And That Is a Good Thing)

Andrew E. Russell, Jan. 20, 2023
Prejudice Obviousness

"I knew we forgot something..." AI-Generated, displayed with permission

Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.

In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.

According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:

ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
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A Master's Order, A Question Answered, A Chicken Unchained

Nathan R. Hoeschen, Sept. 13, 2022
Pennypack Special Master

So Noble
So Noble Navi, Unsplash

The law can always surprise you. Sometimes this is a bad thing. For instance, I was surprised and saddened to learn that, in the city of Wilmington, you can only have a chicken if it is an emotional support animal who lives at least half of the year in your home. Unfortunately, Learned Claw is not yet house-trained.

Sometimes, though its a good surprise. The sort that you can wring a blog post out of if you can pad it with a personal anecdote (*coughs*).

For instance, I was surprised to learn that there was a dispute about the standard for reviewing one of the most common disputes in all of Delaware -- whether to strike contentions under the Pennypack factors.

The specific context at issue in the painfully long-running case of TQ Delta LLC v. Comcast Cable Communications LLC, was an objection to a Special Master's Order. The underlying dispute was your usual Pennypack issue, with one party complaining that the other had disclosed a new DOE theory too late in the game, and the other arguing that the theory was not really new at all. The Special Master went through all of the usual factors and ultimately struck ...

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Judge Bibas: "Deadlines are not suggestions. Litigants must respect them."

Andrew E. Russell, July 19, 2021
Substantial Completion FRCP 26

Penny
Adam Nir, Unsplash

As we've discussed, parties sometimes treat the deadline for "substantial completion of document production" as a soft deadline, doing a "rolling production" afterwards that can be quite voluminous. An opinion from Judge Bibas today shows the risk of not taking that deadline seriously.

In the opinion, Judge Bibas excluded over 60,000 rows of spreadsheet sales data that were produced by a defendant in an Fair Labor Standards Act class action, after the defendant waited until six months after the deadline for substantial completion of document production to produce the data.

As usual for Judge Bibas, his opinion is an interesting read and a bit different from what we typically see from other judges in Delaware. …

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Special Master Williams, Nominated to Replace Judge Stark, Strikes Late Infringement Contentions

Andrew E. Russell, May 25, 2022
DOE Motion to Strike

Special Master Williams quoted Judge Andrews' recent holding that a new <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Doctrine of Equivalents'>DOE</a> argument
Special Master Williams quoted Judge Andrews' recent holding that a new DOE argument "creates a new balgame." Caitlin Conner, Unsplash

Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.

In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.

Special Master Williams rejected …

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