I am from Minnesota. Home of the noble loon, and dainty ladyslipper. It is a harsh place. I have read in books of lands where a person's word is all they have -- a sacred thing that must be protected at all costs. To barter it away is to invite the most dire peril.
I wasn't really using it much anyway...AI-Generated, displayed with permission
Minnesota is not such a place. The winds are fickle there, and everyone understands that most commitments are contingent upon a (sometimes unlikely) confluence of fortuitous occurrences. If you way, I'll visit Gramma this weekend, there's an implied "if it's not too cold." If you say "I'll bring the cheeseburger soup" it's understood that you …
Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.
(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).
Once you finally cajole them our of the house, packed with leftovers and other bribes, it …
It was tough to find an image for this. Just imagine each lego head is a proposed claim construction.Wu Yi, Unsplash
The District of Delaware supports contention interrogatories generally (but not contention 30(b)(6) topics). I remember that, back before the Court adopted the Default Standard in 2011, contention interrogatories were the main way to define and limit the scope of the case during fact discovery.
But contention interrogatories are not without limits. On Friday, in LeFebvre v. Extrabux, Inc., C.A. No. 23-167 (D. Del.), Judge Burke issued a decision on a discovery dispute about a contention interrogatory seeking claim construction positions. He held that a party can't just ask the opposing party for its …
Judge Bryson unsealed a discovery dispute opinion last week in Impossible Foods Inc. v. Motif Foodworks, Inc., C.A. No. 22-311-WCB (D. Del.), addressing a motion to supplement infringement contentions after the deadline for final contentions. The patentee argued that it had good cause to supplement because it did so quickly after the accused infringer added a totally new prior art reference in their final invalidity contentions.
There are a couple of interesting things about the opinion, but I wanted to call out one in particular.
The case included a deadlines for final contentions, and then for case narrowing, with the defendant to drop to a list of 10 references. The defendant initially cut …
Behold, our claim chart. Look upon it and despair!AI-Generated, displayed with permission
Parties in patent cases often fight about the sufficiency of infringement and invalidity contentions. Parties may offer broad initial contentions, keeping their options open as the case develops and avoiding the cost of detailed contentions. The opposing party, though, may want detailed contentions to narrow and explain the case and to tie parties to their positions.
Often, one side or the other moves to compel more detailed contentions knowing that, if they lose and if the opposing party refuses to supplement, they will be better positioned to exclude the more detailed contentions inevitably offered later.
The defendant in Almondnet, Inc. v. Viant Technology LLC, C.A. No. …
There are a few words I dread seeing in an order. Some are obvious—"egregious," "sanctions," "nonsensical," "balding," etc. Others I only learned to fear after seeing them used in an opinion—"valiant," "sporting," "leakage" (don't ask).
In an opinion issued over the blog's break, Judge Williams gave new fuel to the pyre of woe that is my subconscious, and added a new word to my list: IRONY
Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly.Filip Mroz, Unsplash
Even without the irony, Chervon (HK) Ltd. v. One World Techs., Inc., C.A. No 19-1293-GBW, D.I. 394 (D. Del. Mar. 26, 2024) was an unusually interesting discovery dispute. In that case, the parties agreed to a case narrowing procedure wherein, after final contentions, the defendant was to elect no more than 3 grounds per asserted claim. When the defendant served that election, plaintiff complained that it included grounds that were not charted in the final contentions. In an apparent attempt to moot the issue, the defendant then served (without seeking leave) new contentions that did chart all of the elected grounds. The plaintiff then moved to strike the portions of the election not previously charted and the new contentions in their entirety.
Judge Williams granted that motion, striking most of the elected grounds and all of the new contentions, in particular noting that the defendant had not sought leave to serve them. Unfortunately this left the defendant without any elected grounds for several claims, and so they served a new election of asserted grounds including only grounds which were charted in the original, unstruck contentions (with a bit of a fudge factor). Shortly after service they moved for leave to submit the new contentions, and plaintiff cross-moved to strike them.
The District of Delaware's Default Standard for Discovery requires contentions in patent cases.
One common Delaware counsel question is: what level of detail is required for contentions?
The answer varies on what the concern is. There is a certain level of detail that will probably preclude the Court from ordering you to supplement your contentions—but providing just that bare level of detail may not be enough to preserve all arguments that you later want to make.
On Monday, Judge Burke denied a motion to strike invalidity contentions where a party had disclosed an obviousness theory as to a patent based on modification of a prior art reference, but had not disclosed their intent to cite and rely on their own product as evidence that the modification was obvious.
The plaintiff had moved to strike the discussion of the defendants' own product from their expert reports, on the theory that their contentions failed to to disclose their intent to use that product in their obviousness analysis. Judge Burke denied the motion, and explained that a party need not disclose all evidence in support of its contentions:
Although this is a difficult issue, the Court is not prepared to say that Defendants' actions amounted to an untimely disclosure. This is because Defendants have affirmatively represented that they are not relying on the direct aortic Engager system as prior art itself; instead, they rely on it only as a piece of evidence that will be used to "show that a direct aortic version would have been an obvious modification to Engager 3.0 at the relevant time." (D.I. 361 at 2) In other words, Defendants are relying on the system simply as evidence in support of a theory that was itself timely disclosed. And as Defendants note, courts generally hold that: (a) in validity-related or infringement-related contentions, a party is not required to cite to every piece of evidence that will be used to support a given theory; and (b) it is proper for an expert to expand upon such theories in his expert report. . . . The Court also notes that it is not as if Plaintiff had zero prior knowledge of the existence of the [Defendants'] system. As Defendants point out, they produced documents in discovery regarding this system, and their engineers testified at some length about the device during depositions. . . . (4) In light of the above, the Court cannot say that Defendants' conduct amounts to untimely disclosure that should be stricken.
Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361, D.I. 447 (D. Del. Dec. 18, 2023).
In my view, the Court is not saying that no evidence at all needs to be disclosed in support of the contentions—just that this particular evidence went beyond what was necessary, under the facts of the case.
"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 …
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 Pennypackin 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 …
Yesterday, Judge Williams issued a claim construction opinion in Persawvere, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 21-400-GBW (D. Del. Feb. 21, 2023).
In the joint claim construction brief, plaintiff asserted that defendant had waived its indefiniteness arguments because it did not include them in its invalidity contentions:
Given that Defendant failed to raise an indefiniteness argument in its Invalidity Contentions concerning terms 3 and 4, see Ex. 8, Defendant has waived this defense.
D.I. 47 at 30. In the case, the scheduling order required both initial and final invalidity contentions; defendant did not mention indefiniteness in its initial contentions, and the deadline for final contentions had not yet passed.
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