A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: kb

Sit back, relax, and enjoy this long post about <a href='#' class='abbreviation' data-toggle='tooltip' data-placement='top' title='United States District Court for the District of Delaware'>D. Del</a>. local rules...
Sit back, relax, and enjoy this long post about D. Del. local rules... XPS, Unsplash

The District of Delaware's local rules are available on the court's website, but they don't tell the whole story—there are a number of critical rules and practices set forth in other documents that are not as obvious on the site.

These can really trip you up if you're not familiar with D. Del. practice.

This post is geared towards mainly towards out-of-town or in-house counsel. It covers the basics and then lays out where to find some of those other important rules if you have a …

Given that we've devoted a good deal of coverage to redaction requests in the last few months, I thought it might be useful to present a brief primer on the procedure for actually requesting redactions to a transcript in Delaware.

This procedure cannot be found in either either the local rules or the Court's CM/ECF procedures. Instead, it comes from the Court's "Policy on the Electronic Availability of Transcripts of Court Proceedings."

Under this policy the process begins when the court reporter dockets the transcript, which looks like this:

Screenshot 2021-03-04 143845.jpg
Nate Hoeschen

After that, things get a bit murky.

So I Have 21 Days to Request Redactions?

First off, that 21-day deadline ("Redaction Request Due 3/22") is actually the second step …

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.

Case narrowing is an issue that comes up in most patent cases at some point, whether in the scheduling order, as a discovery dispute, or at the pretrial conference (or, possibly, all three).

Average amount of prior art references each defendant seeks to assert.
Average amount of prior art references each defendant seeks to assert. Cristina Gottardi, Unsplash

When requested, judges in Delaware typically implement an initial two-stage reduction in asserted claims and prior art references, with the first stage occurring before claim construction, and the second afterward.

Of course, sometimes they will implement other schedules depending on the needs of the case and the requests of the parties. And, for cases that reach a pretrial conference, the Court often imposes an additional limit on the number of claims for …

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. ...

Wilmington, <a href='#' class='abbreviation' data-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In the District of Delaware, the district court judges often refer substantive issues to the magistrate judges, even absent consent of the parties. This is one way that the judges manage the incredible load of the patent docket here.

When dealing with substantive referrals (not referrals for mediation/ADR), the Court uses an assignment system, where particular district court judges tend to refer cases and motions only to their assigned magistrate judges (with occasional exceptions).

The most recent announcement of magistrate judge assignments that I know of was made at a Federal Bar Association lunch back in September 2019:

  • Magistrate Judges Thynge …

Longstanding practice in the District of Delaware, pursuant to the Court's local rules and the Judges' form scheduling orders and other standing orders, mandated page limits for briefing.
For example, the Court's local rules set limits of 20 pages for opening, briefs 20 pages for answering briefs, and 10 pages for reply briefs, all in 12 point font. See LR 7.1.3(a)(4); LR 5.1.1(a). However, since about mid-2019, some Judges here have permitted or required word limits in lieu of page limits for some types of documents.

IPR Timing Estimator Screenshot
Andrew E. Russell

It can be kind of a pain to estimate the schedule of an inter partes review proceeding beforehand, because the dates are relative (e.g., "30 days after x"), and because the deadlines are set in a number of different places (e.g., the U.S. Code, the Code of Federal Regulations, the PTAB's Trial Practice Guide).

A few years ago, I put together a spreadsheet that automatically estimates the timing and deadlines of an IPR based on the filing date. I've updated it a couple of times since then.

A spreadsheet like this can be a great help when you need to figure out the timing of an IPR so that you can do …

hiroshi-kimura-rtX4wxMEI2M-unsplash.jpg
Hiroshi Kimura, Unsplash

Since the early 2000's, the District of Delaware local rules have prohibited talking to a witness about the subject matter of their deposition testimony during a deposition:

RULE 30.6. Depositions Upon Oral Examination.
From the commencement until the conclusion of deposition questioning by an opposing party, including any recesses or continuances, counsel for the deponent shall not consult or confer with the deponent regarding the substance of the testimony already given or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a court order.

It's not uncommon for visiting counsel defending depositions in Delaware cases to not know this rule. …

Attorneys deciding to move for certification of interlocutory appeal
Attorneys deciding to move for certification of interlocutory appeal Oleg Moroz, Unsplash

As we mentioned earlier this week, Judge Noreika issued another in a storied line of Memorandum Orders denying a request to certify an interlocutory appeal. The decision in Arbor Global Strategies LLC v. Xilinx, Inc., C.A. No. 19-1986-MN, D.I. 68 (D. Del. Oct. 30, 2020) was a fairly unremarkable denial, but it caused me to wonder just how rare it is to see one of these granted. So I checked.

As far back as DocketNavigator goes (which is apparently January 2008), I count 23 separate Delaware cases where a party has requested certification. Of those, only four have been granted, the most recent of …