A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Pennypack

Lawyers and an expert in an oasis
AI-Generated, displayed with permission

Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.

What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …

There are a few words I dread seeing in an order. Some are obvious—"egregious," "sanctions," "nonsensical," "balding," etc. Others I only learned to fear after seeing them used in an opinion—"valiant," "sporting," "leakage" (don't ask).

In an opinion issued over the blog's break, Judge Williams gave new fuel to the pyre of woe that is my subconscious, and added a new word to my list: IRONY

Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly.
Sadly, there do not appear to be any public domain pictures of Alanis Morissette, I assume she is a reader though and will send us a replacement image with her blessing shortly. Filip Mroz, Unsplash

Even without the irony, Chervon (HK) Ltd. v. One World Techs., Inc., C.A. No 19-1293-GBW, D.I. 394 (D. Del. Mar. 26, 2024) was an unusually interesting discovery dispute. In that case, the parties agreed to a case narrowing procedure wherein, after final contentions, the defendant was to elect no more than 3 grounds per asserted claim. When the defendant served that election, plaintiff complained that it included grounds that were not charted in the final contentions. In an apparent attempt to moot the issue, the defendant then served (without seeking leave) new contentions that did chart all of the elected grounds. The plaintiff then moved to strike the portions of the election not previously charted and the new contentions in their entirety.

Judge Williams granted that motion, striking most of the elected grounds and all of the new contentions, in particular noting that the defendant had not sought leave to serve them. Unfortunately this left the defendant without any elected grounds for several claims, and so they served a new election of asserted grounds including only grounds which were charted in the original, unstruck contentions (with a bit of a fudge factor). Shortly after service they moved for leave to submit the new contentions, and plaintiff cross-moved to strike them.

Which is where we get to the IRONY of it all ...

"Please, dear Court, don't strike our new argument that totally prejudices the other side." Lampos Aritonang, Unsplash

It can sometimes be tough to decide whether to ask the Court permission, or to just do something. The answer can vary depending on the thing you are doing and the judge.

But certain things clearly require permission. Say, for example, offering a "supplemental" expert report with a new damages calculation almost two years after the reply expert report, and only 19 days before trial:

There is no dispute that MED-EL failed to disclose Barry Sussman’s most recent damages calculations based on survey results (set forth in Paragraph 11 of his Supplemental Expert Rebuttal Report) during the expert disclosure period. Indeed, the …

"Why were we late? Aliens! No wait—bigfoot. I don't know." Albert Antony, Unsplash

We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgiving Pennypack factors.

We've also discussed how you really ought to have a reason for a late disclosure.

On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:

ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …

Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.

Valentin Petkov, Unsplash

With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.

But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.

The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.

Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.

Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the ...

Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.

It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.

In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s …

Andrew Russell

When a party asks to do something outside of the time limits set by the scheduling order, the Court looks to whether there is "good cause" under FRCP 16(b)(4) to modify the scheduling order. Good cause requires diligence, generally meaning that the movant could not have reasonably met the deadline it's trying to move.

Last week we got two examples of diligence analyses from the Court, one that found that a party was diligent, and one that didn't. I thought it would be interesting to line them up and compare them.

"Immediately" = Good Cause

First, Judge Fallon found good cause where a plaintiff sought to depose a third-party witness after the close of fact discovery, after the …

"Did I remember to disclose my infringement counter-arguments? Ah well, I'll just argue that they're responsive." Tim Bogdanov, Unsplash

Judge Williams unsealed a detailed Pennypack decision Friday, where he struck an expert's infringement argument after the party failed to disclose it in their contentions.

The motion and brief provide some helpful context here. The defendant moved to strike material in the expert's opening report that apparently responded for the first time to arguments made in the defendant's non-infringement contentions. Cirba Inc. v. VMWare, Inc., C.A. No. 19-742-GBW, D.I. 1460 at 1 (D. Del. Nov. 28, 2022); Id., D.I. 1461 at 2-3.

The Court rejected an attempt to argue that the argument was "responsive" to a filing …

Is the reign of Pennypack coming to an end?
Is the reign of Pennypack coming to an end? AI-Generated

We talked earlier this year about a decision by Judge Burke that struck a parties' final infringement contentions under a good cause standard, and declined to apply the much looser Pennypack standard.

Today, citing Judge Burke's opinion, Judge Williams likewise declined to rely on Pennypack in striking late-served "Amended Final Invalidity Contentions":

According to the Court's Scheduling Order, Defendants must serve their Final Invalidity Contentions to Chervon by December 17, 2020, which they did so. D.I. 37 if 7(f). On July 27, 2022, Defendants served their Amended Final Invalidity Contentions. D.I. 316 at 1; D.I. 319 at 1. Defendants did not request leave from the Court to amend their Final …

In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.

AI-Generated, displayed with permission

And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).

The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.

This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!

All this and more on next weeks episode of IPDE! (Batman theme plays)