As Delaware counsel, I sometimes have to say something along the lines of "the Court is going to see right through that" or "nobody is as sly as they think they are."
Usually this is in the context of something like slipping wholesale invalidity arguments into a claim construction brief (seriously? You think you are going to win SJ of anticipation at claim construction?) or "just flagging" a completely unrelated and irrelevant issue in a discovery dispute.
I saw an example of this last week in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361−GBW−CJB, D.I. 290 (D. Del. Jun. 26, 2023).
The headline is a nice quote from a Judge Burke oral order last week in Bausch & Lomb Incorporated v. SBH Holdings LLC, C.A. No. 20-1463-GBW-CJB, D.I. 77 (D. Del. May 12, 2023).
There, the defendant moved to stay but apparently failed to meet-and-confer at all before moving. The plaintiff wisely called them out for failing to do so:
As an initial matter, it is undisputed that SBH did not attach a certification pursuant to D. Del. LR 7.1.1 to its Motion or letter brief; nor could it have, because there was no meet and confer between counsel. The first B+L heard about SBH’s Motion was in SBH’s letter to the Court …
Sir Isaac Newton once wrote to Robert Hooke (Hooke’s Law): “If I have seen further, it is by standing on the shoulders of giants.” This quote was the cornerstone on which I built my 5th grade graduation speech, because it seemed to be an eloquent way to say “don’t reinvent the wheel”.
Judge Hatcher appears to be building on the knowledge accumulated by judges occupying the bench before her. In particular, Judge Hatcher’s new form Scheduling Order for patent cases seems strongly inspired by Judge Hall’s and Judge Burke’s form orders.
Here are a few differences . . .
Omits the paragraph on the unavailability of the ADR Process. This indicates that the Court expects litigants to …
Parties can freely stipulate to many things in the District of Delaware, and often stipulations to extend deadlines are filed close to the last minute, especially where the parties are working toward agreement but ultimately cannot agree on the final filing in time (or else are having trouble connecting with the other side).
However, stipulations filed close to the Delaware witching hour (5:00PM EST) can be fraught with risk of the Court's denial, as we’ve seen in past heart-stopping examples. We’ve warned before that requests to move Court-scheduled conferences are in the “iffy” category, and combined with last minute filing, can end in disappointment for everyone, as shown in an oral order from Judge Noreika last week in Neurocrine Biosciences, Inc. v. Lupin Limited et al., C.A. 21-1042, D.I. 197 (D. Del. Jul. 16, 2021):
On April 17, 2023, the Court instructed the parties to talk to each other about their disputes so that a follow-up call with the Court (set for April 21, 2023) would be more productive than the prior call. On April 21, 2023, a few hours before the set call, the parties submitted a stipulation requesting the April 21 call be delayed. After further inquiries, it became clear that, in the five days after the Court directed the parties to TALK, they did not do so. The Court intended to address that during the April 21 call, but no counsel appeared for the call (notwithstanding that the Court had not granted the request for a delay). THEREFORE, IT IS HEREBY ORDERED that, should the parties not inform the Court that they have resolved their dispute in full by Tuesday April 25, 2023, lead trial counsel SHALL appear in person in Courtroom 4A on April 26, 2023 at 3:00 p.m. ORDERED by Judge Maryellen Noreika on 4/21/2023.
Judge Noreika previously indicated frustration with the magnitude of this particular discovery dispute (on search methods to find responsive documents), so the parties were on thin ice long before ...
It begins with a series of interminably long emails. I say that you really should be producing these documents—I cite cases, exhaustively describe the items sought, and cite check the whole thing like it's headed to the Supreme Court. You respond by pointing out that I am just hopelessly misguided, and have perhaps been drinking. You also cite cases.
Eventually everyone gets on the phone to hash things out. Two hours later you agree to take my positions "under advisement" and call it a day.
Meet and confer accomplished.
Why is this one so creepy? It's just supposed to be werewolves shaking handsAI-Generated, displayed with permission
It's not always that bad, but there is definite potential for one or both parties to drag the process out. It's rare to see any consequences to this sort of slow-rolling, as it's usually invisible to the Court.
Every now and then, though, someone gets called out for it, and yesterday was one of those days. The dispute in TwinStrand Biosciences, Inc. v. Guardant Health, Inc., C.A. No. 21-1126-GBW-SRF (D. Del. Apr. 24, 2023) (Oral Order) was your usual request that a party supplement an interrogatory. Judge Fallon granted the motion, but took the unusual step of noting the somewhat tortured history of the parties' correspondence
Guardant's second supplemental response to Interrogatory No. 6 provides some of this information for only one of the Asserted Patents. Guardant represented that it would produce and identify documents responsive to the Interrogatory under Fed. R. Civ. P. 33(d) as discovery continued. Guardant's responses to Plaintiffs' requests for supplementation of Interrogatory No. 6 during the meet and confer process suggest that Guardant may have additional responsive information that has not yet been disclosed. (As of March 17, 2023, Guardant represented it "will provide our position or a supplementation in due course"); (As of April 4, 2023, Guardant was "considering [Plaintiffs'] proposal and hope[s] to have a response soon."). Otherwise, Guardant could have put the matter to rest and avoided burdening the Court by simply confirming that it had no additional information responsive to Interrogatory No. 6.
The phrasing here is not quite a rebuke, but parties generally like to keep their name as far removed from ...
"From now on, your discovery disputes will be heard at the summit . . . "Alexander Milo, Unsplash
It's always good to know the limits when it comes to discovery disputes. In some cases, parties just can't seem to work together on discovery, and the parties end up bringing a lot of disputes.
At some point, the number of disputes may push the Court over the line. Famously (in Delaware—so perhaps not "famously" at all), former Chief Judge Sleet used to limit parties to three discovery disputes in patent cases before requiring them to seek leave. I don't know of any similar explicit limits set by any of our current judges, but pushing things too far can still …
Judge Norieka issued a notable oral order earlier this week in Neurocrine Biosciences, Inc. v. Lupin Limited, C.A. No. 21-1042-MN (D. Del.).
The context is not fully clear from the docket, but it looks like the parties contacted the Court to initiate a discovery dispute regarding the sufficiency of the plaintiff's document collection efforts. But, instead of issuing the typical order starting the process, Judge Noreika ordered the parties to meet-and-confer again and set some expectations as to how the Court will handle the dispute:
ORAL ORDER - The parties have requested a discovery dispute teleconference regarding Defendants' request for discovery into the search methods Plaintiff used to find responsive documents. IT IS HEREBY ORDERED that the parties shall meet and confer again. Thereafter, on or before 5:00 PM on 3/20/2023 [five days from the order], the parties shall provide the Court with the current version of the discovery requests, explaining what part or parts remain in dispute. The Court will not act as a negotiator to whittle down overly broad requests. Therefore, Defendants should propose requests of appropriate scope with the understanding that the Court may simply deny requests that are overly broad on their face.
It looks like the Court may be trying out a more efficient way to resolve disputes over discovery requests.
Delaware regulars will know that a stipulation to extend a deadline will—with certain limited exceptions—usually be granted as a matter of course. Moreover, the common wisdom is that one ought to agree to a short extension of a discovery or briefing deadline, absent some strong reason not to. Such is the DELAWARE WAY (TM).
Sometimes, though, a request for an extension just rubs you the wrong way. Maybe they ask late, maybe they jerked you around when you asked for an extension last time, maybe you saw them double-dip a chip at the last bar mixer and you just can't get over it. In those times, it's nice to be able to point to case where the court denied a …
Last week, Chief Magistrate Judge Thynge issued an opinion addressing a motion by accused infringers to compel the patentee to produce litigation funding discovery and opinion letters relating to the patents-in-suit.
While it involves litigation funding discovery, this case is a bit different from the recent Mavexar hearings. Here, the patentee is MHL Custom, Inc. who, it appears, is a practicing company and not an NPE. Beyond that, the case is still active (unlike some of the Mavexar cases) and the discovery is sought by the defendant, not the Court itself. In other words, this is a more typical ruling.
But the opinion is still notable. The Court granted the accused infringers' motion for three categories …
I thought I'd share an old transcript that has come in handy a number of times since it issued back in2013, 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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