A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: discovery-dispute

Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:

He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":

The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.

He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the …

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails RCA

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. …

Here's a new one: A defendant in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del.) wanted to delay the trial to coordinate the schedule with another case involving an overlapping patent. So it filed a letter asking for leave to file a 3-page letter briefs, or to have a teleconference:

Given the parties have been unable to agree on an appropriate approach for coordination of both cases, we respectfully request leave to submit the competing views to Your Honor during a status conference or 3-page letter briefs.

Chief Judge Stark denied the request, directing the parties to file a motion instead:

ORAL ORDER: Having reviewed the parties' letters . . . relating to [the …

Dollar Bills
Sharon McCutcheon, Unsplash

It seems like litigation funding is becoming a more active area for discovery disputes lately—a trend that is likely to continue after Judge Connolly granted a dismissal based on a litigation funding agreement late last year. See Uniloc USA, Inc. v. Motorola Mobility, LLC, C.A. No. 17-1658-CFC, 2020 U.S. Dist. LEXIS 244512, at *25 (D. Del. Dec. 30, 2020).

Last week, Judge Burke confirmed a previous denial of litigation funding discovery, offering some additional thoughts:

ORAL ORDER: The Court, having now reviewed the parties' supplemental letter briefs . . . in which Defendants ask the Court to reconsider its March 2, 2021 Order . . . , hereby notes as follows: . . …

Tennis Court
Bannon Morrissy, Unsplash

On Wednesday, Judge Burke issued the following order cutting the parties off from further discovery dispute teleconferences—but not discovery disputes—after they brought their fourteenth request for discovery assistance in just over a year:

ORAL ORDER: The Court, having reviewed the parties' . . . request [for] a discovery teleconference . . . hereby notes as follows: (1) since the Court was referred this matter in February 2020 to resolve discovery/protective order disputes, this is the 14th different time that the parties have sought the Court's assistance in that regard; (2) as part of those 14 different requests for Court assistance, the parties have brought the Court a total of 31 different disputed issues to …

Money
Pepi Stojanovski, Unsplash

It's a tough scenario: you think your opponent might have assigned away their patent rights, but you aren't exactly sure. And the only way you could know for sure is with information you don't have.

Most of the time in D. Del., disputes like this are addressed in a hearing transcript or an oral order. They don't make headlines, and they never hit Lexis or Westlaw, but they often provide helpful guidance for the future.

Yesterday, Judge Burke issued an oral order denying a request to compel a plaintiff to turn over its litigation funding documents. The defendants knew that the plaintiff had third-party litigation funding (and suspected that there might have been some assignment of …

Red Classic London Double Decker Bus
Dave Kim, Unsplash

As we discussed in our primer on bringing a discovery dispute in Delaware, each judge has their own procedures for scheduling a hearing on discovery disputes. Perhaps because of these different procedures, the time between request and conference varies quite a bit. Because it's sometimes useful to know how long you might expect to wait before receiving a decision on your dispute, I present you, dear reader, with the average time from request to hearing for each of the Article III Delaware Judges as of today (based on their 5 most recent scheduled conferences):

  • Judge Andrews - 21 Days
  • Judge Connolly - 19 days
  • Judge Noreika - 25 Days
  • Judge Stark - 39 Days

Shield of Sir John Smythe (1534–1607)
Shield of Sir John Smythe (1534–1607), The Met

This week judges in the District of Delaware issued two orders regarding discovery disputes seeking relief from protective orders in patent actions. One granted relief, and one denied it. The contrast between the two is a great illustration of how you should and shouldn't argue for relief from a protective order.

How Not to Do It

In the first action, plaintiff Wildcat sought permission to disclose defendant's materials from the district court in a co-pending IPR to support its secondary considerations of non-obviousness. The protective order specifically allowed this:

All Protected Material shall be used solely for the above-captioned cases or any related appellate proceeding and/or proceedings before the United States …

Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger)
Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger), Jacques Callot

After we talked last week about an unsuccessful effort to bypass the Court's discovery dispute procedures, I thought it might be interesting to talk about what those procedures are, for people who don't practice here day in and day out.

A discovery dispute is a special procedure that allows the parties to receive a (relatively) quick hearing to resolve issues that arise during discovery. Bringing a discovery dispute is the only way the Court allows the parties to address these kinds of discovery issues in a typical District of Delaware case (including both patent and non-patent cases).

Is This in the Rules or What?

Discovery disputes are not mentioned in the local rules, but all of the judges have discovery dispute procedures in their form scheduling orders. ...