A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: discovery-dispute

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. ...

The Boy Who Cried Wolf
The Boy Who Cried Wolf Francis Barlow

Most Delaware attorneys tend to hesitate before filing an "emergency" motion, because they know how busy the Court is. The Court takes emergency motions seriously. It may defer work on other pressing issues to assist the parties with a true emergency.

I don't think anyone would want be standing before the judge (or on a conference call, or a video conference) explaining why they unnecessarily disturbed the Court's management of its docket.

Last week, Judge Connolly issued an opinion showing what may happen when a party files an unwarranted "emergency" motion.

In FinancialApps, LLC v. Envestnet, Inc., C.A. No. 19-1337-CFC-CJB (D. Del.), a trade secret and contract action, the Court …

Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."

Excellent, now set it on fire . . . the hoop
Excellent, now set it on fire . . . the hoop Border Collie jumping through the hoop at NZDAC Gore New Zealand, Andrea Lightfoot, Unsplash

In Delaware, there are a few hoops to jump through if you want to bring a discovery dispute before the Court. Local Rule 7.1.1 is the most basic, and requires the parties to make "reasonable efforts" to resolve their disputes, including verbal communications between opposing Delaware Counsel.

Next, each Judge has their particular procedures for bringing the dispute, either requiring a joint phone call to chambers (Judges Connolly, Noreika, and Andrews) or a joint letter outlining the issues and confirming that the parties have met and conferred (Judge Stark). In either case, the parties …

You really have to use it soon
Brown Chocolate, Kaffee Meister, Unsplash

More often than not, when the Court has a hearing on discovery disputes, both sides bring competing issues. No one likes to be totally on defense for an entire hearing, and even bringing a marginal dispute allows you to undermine the opposing party by pointing out their own wrongdoing. And of course, there's always the chance that you'll win.

Judge Burke showed the limits of this calculus earlier this week—it only works if you convince the Court you've got a real dispute. And It's very hard to do that if you admit that you wouldn't have filed your motion if the other side hadn't moved first.

That's what plaintiff did in in …

I thought this was interesting. Last week Judge Burke granted a motion to compel a plaintiff's witness to respond on questions about the plaintiff's litigation financing arrangements.

Apparently plaintiff's attorneys instructed the witness not to answer at the deposition, but in the discovery dispute they only argued that the information is irrelevant, and did not raise privilege. Since relevance is not a valid justification for an instruction not to answer under FRCP 30, the Court permitted defendant to re-ask the question and held that plaintiff's witness must answer.

About Those Redacted Versions

I say plaintiff "apparently" objected only on reasonableness grounds because plaintiff never filed the redacted version of its sealed letter brief—a common problem.

If parties continue …