A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Motion to Strike

Magnifying Glass
Agence Olloweb, Unsplash

Since the Court's announcement of the current vacant judgeship program, there have been some lingering questions about what a magistrate judge in a vacant judgeship case can and cannot decide.

We got some insight on that question yesterday in Huber Engineered Woods LLC v. Louisiana-Pacific Corporation, C.A. No. 19-342-VAC-SRF (D. Del.). The referral order in that case is typical of VAC cases—it says that the magistrate judge can resolve only a limited scope of disputes:

this case is referred to Magistrate Judge Sherry R. Fallon solely for the following purposes: (1) to adjudicate discovery (including fact and expert discovery) and protective order disputes; (2) to issue or modify a scheduling order; (3) to …

Special Master Williams quoted Judge Andrews' recent holding that a new <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Doctrine of Equivalents'>DOE</a> argument
Special Master Williams quoted Judge Andrews' recent holding that a new DOE argument "creates a new balgame." Caitlin Conner, Unsplash

Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.

In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.

Special Master Williams rejected …

These hands actually look pretty clean.
These hands actually look pretty clean. Nathan Dumlao, Unsplash

Defendants in patent cases often seem to throw in somewhat obscure affirmative defenses with little or no factual support. "Unclean hands" is a classic example. Defendants will sometimes seem to include defenses like unclean hands and prosecution latches with no real factual support (and, I suspect, not always the best grasp on what those defenses really mean).

Judge Stark issued an opinion today on a motion to strike "unclean hands" and "prosecution laches" defenses offers an example of what happens when a defendant actually does adequately support these defenses.

First, the standard: to succeed on a motion to strike affirmative defenses, the insufficiency must be "clearly apparent":

"[P]ursuant to Rule …

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Generally, corporations have to be represented to appear in Federal Court, or they are at risk of default. This is something that comes up surprisingly often, including when corporate defendants try to file their own filings without an attorney (by mailing them to the clerks' office), or when counsel for a corporate defendant seeks to withdraw mid-case.

Judge Fallon issued an opinion today showing the consequences of a corporation failing to retain counsel. Plaintiff brought suit and, requested entry of default after a corporate defendant failed to answer. That corporate defendant then filed an "answer"—which, based on the docket, was not an answer at all, in that it did not respond to plaintiff's claims. Plaintiff then moved …

Cave
Cade Roberts, Unsplash

Over the past year, we've noticed that the D. Del. judges have shown an increasing willingness to exclude late-disclosed evidence and theories. Until recently, motions to strike were difficult to win under the Third Circuit's Pennypack standard. If the prejudice caused by the late disclosure could be cured, it was almost impossible to get anything excluded.

Today, harkening back to an earlier time, Judge Andrews denied cross-motions to strike allegedly late-disclosed theories from the parties' opening expert reports. Although he found that the defendant's motion presented a close call on late disclosure, he concluded that "[e]ven if these infringement theories were untimely, I find, under the Pennypack factors, that their exclusion is not warranted."

At …

We keep writing about how hard it is to win a motion to strike in D. Del., which is generally true. That said, it's still possible to get late-disclosed theories and evidence excluded, especially when there's no good explanation for the delay.

Yesterday afternoon, one plaintiff learned that lesson the hard way. As often happens, the plaintiff argued that the defendant's expert raised new opinions on motivation-to-combine in his reply report.

But instead of moving to strike (or seeking leave to submit a sur-rebuttal report, or dealing with the issue during expert depositions...), the plaintiff simply waited until summary judgment briefing. There, it submitted a rebuttal declaration from its own expert in support of its answering brief on invalidity. …

We've written several posts about the Pennypack factors and how hard it can be to win a motion to strike in D. Del. The upshot is that it's often better to simply reach agreement on a curative remedy rather than spend time on full-blown motion practice.

Case in point: on Monday, Judge Burke denied a motion to strike a two-page supplemental expert declaration on a patentability issue. Applying the Pennypack factors, he concluded

that having to respond to the supplemental declaration (which, after all, relates to one discrete issue, and is only two pages long) would occasion some great prejudice to Defendants. The issue can be resolved by permitting Defendants to file a supplemental sur-rebuttal expert report on …

Although the Pennypack factors for exclusion are notoriously difficult to meet, judges in D. Del. have been excluding late-disclosed theories more frequently than in the past.

Case in point: on Friday, Judge Andrews granted a motion to strike DOE theories asserted for the first time in an opening expert report. The plaintiff offered a number of excuses for disclosing the theories when it did—"it was only able to collect evidence to support its new DOE theories" after a COVID-delayed source code review, it lacked supporting evidence until a technical deposition in November 2020, and so on.

Judge Andrews not only rejected these excuses, but took it a step further—coming very close to finding that the plaintiff acted in …

Casino
Heather Gill, Unsplash

It's a common dilemma in expert discovery: the other side's expert says something new in an opening report, you move to strike it, and you get a hearing date after the deadline for your rebuttal report. Do you have your expert respond (and weaken your prejudice arguments)? Or do you double down on your motion to strike (and risk losing the ability to respond altogether)?

In D. Del., the second option is a huge gamble. Yes, it's possible to persuade our judges to strike late-disclosed expert opinions (even under the Third Circuit's lenient Pennypack factors). But if you won't get a ruling before your responsive report is due, ignoring the new material can …

Stop Sign
Luke van Zyl, Unsplash

In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …