A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Contentions

Ironing Out the Details

Nathan R. Hoeschen, April 23, 2024
Pennypack Contentions

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.
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.

Which is where we get to the IRONY of it all ...

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In Denying Motion to Strike, Judge Burke Provides Guidance on Level of Detail in Contentions

Andrew E. Russell, Dec. 20, 2023
Infringement Contentions Litigation

"How much of the puzzle do we really have to give them . . . ?" Bianca Ackermann, Unsplash

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.

In fact, the Court seemed uncomfortable ...

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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 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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Judge Williams: Failure to Disclose Indefiniteness Argument in Invalidity Contentions Is No Bar to Arguing Indefiniteness During Claim Construction

Andrew E. Russell, Feb. 22, 2023
Invalidity Contentions Indefiniteness

Milwaukee
Mark Rohan, Unsplash

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.

The defendant …

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It's For A Good Cause

Nathan R. Hoeschen, Jan. 31, 2023
Scheduling Order Pennypack

In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.

AI-Generated, displayed with permission

And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).

The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.

This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!

All this and more on next weeks episode of IPDE! (Batman theme plays)

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A Handy Transcript

Andrew E. Russell, Nov. 9, 2022
Contentions KB

Bookmarks
Chiara F, Unsplash

I thought I'd share an old transcript that has come in handy a number of times since it issued back in 2013, where Judge Andrews made a helpful ruling about how and when patentees must respond to conception date interrogatories—an issue that comes up frequently.

In Vehicle Interface Techs., LLC v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA (D. Del.), the defendant filed a discovery dispute to compel a full response to an interrogatory asking for the date of conception and reduction to practice.

The patentee had responded, but the answer was not very helpful. According to the discovery dispute letter:

[The patentee] stated that the sole inventor . . …
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Court Orders Plaintiff to Supplement Initial Contentions to Explain Citations

Andrew E. Russell, July 29, 2022
Source Code Final Contentions

Do It Now
Brett Jordan, Unsplash

This happened earlier this month, but I wanted to post about it since this is a recurring issue.

In Rex Computing, Inc. v. Cerebras Systems Inc., C.A. No. 21-525-MN (D. Del. July 8, 2022), defendant filed a discovery dispute to compel plaintiff to supplement its infringement contentions to explain how the cited source code meets those limitations.

Plaintiff responded, in part, by noting that these are "initial contentions while discovery is ongoing." D.I. 94 at 1.

Nonetheless, the Court ordered plaintiff to supplement its contentions to explain how the code meets the limitations:

ORAL ORDER . . . Plaintiff shall supplement its infringement contentions on or before July 18, 2022. Citations …
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Refusal to Narrow the Number of Asserted Claims Results in Reduced Relief in Narrowing Invalidity Contentions

Emily DiBenedetto, April 25, 2022
Claim Narrowing Contentions

Upturned Nose
Zayn Shah, Unsplash

As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.

However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.

Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.

The Court found that the Initial Invalidity Contentions were sufficient in most respects:

In general, they provide real detail, including significant specificity as to ...
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Court Denies Motion to Strike Bare-Bones Infringement Contentions, Suggests Motion to Strike Later Expert Reports Instead

Andrew E. Russell, April 21, 2022
Infringement Pennypack

Bare Bones
Mathew Schwartz, Unsplash

Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.

Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).

Having a reasonable idea …

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