"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?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 Pennypackin 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)
"I knew we forgot something..."AI-Generated, displayed with permission
Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.
In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.
According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:
ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
The law can always surprise you. Sometimes this is a bad thing. For instance, I was surprised and saddened to learn that, in the city of Wilmington, you can only have a chicken if it is an emotional support animal who lives at least half of the year in your home. Unfortunately, Learned Claw is not yet house-trained.
Sometimes, though its a good surprise. The sort that you can wring a blog post out of if you can pad it with a personal anecdote (*coughs*).
For instance, I was surprised to learn that there was a dispute about the standard for reviewing one of the most common disputes in all of Delaware -- whether to strike contentions under the Pennypack factors.
The specific context at issue in the painfully long-running case of TQ Delta LLC v. Comcast Cable Communications LLC, was an objection to a Special Master's Order. The underlying dispute was your usual Pennypack issue, with one party complaining that the other had disclosed a new DOE theory too late in the game, and the other arguing that the theory was not really new at all. The Special Master went through all of the usual factors and ultimately struck ...
Wow, it's hard to imagine how a party could have a fact disclosure that is later than this, other than maybe trying to offer new facts for the first time on appeal.
In Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-RGA (D. Del.), the parties had a jury trial in December 2021. The jury found infringement, no invalidity, willfulness, and damages of over $12 million against two defendants. The Court later entered a (mostly undisputed) permanent injunction.
The Court addressed the defendant's § 101 claims by motion and briefing after the …
It happens all of the time: You've got arguments A, B, and C that you want to fit in your brief, but you don't have the space to address them all.
What to do? Cut the weaker arguments?
For most attorneys, the answer is: of course not! They move the lesser argument to a footnote in a hail-mary attempt to win if the better arguments fail.
Does it work? Not usually. Here in D. Del., judges have suggested that parties waive arguments when they present them only in cursory footnotes, and Judge Noreika recently noted that "courts traditionally do not consider arguments presented entirely in footnotes." Nw. Univ. v. Universal Robots A/S, C.A. No. …
Judge Burke had an interesting opinion on Tuesday striking final contentions served after the deadline in the scheduling order.
It's become increasingly common in the district for late-served final contentions to be analyzed under the less forgiving good cause standard of Rule 16 without reference to thePennypack Factors. Even so, it was a bit surprising to see the Court strike contentions which were filed just a month after the deadline, which the Court addressed directly in the Order:
This result might seem harsh in light of the facts here, since Plaintiff submitted the belated contentions at issue only about a month after the filing deadline called for by the Scheduling Order. …
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.
We've talked before about how asserting invalidity based on system prior art (as opposed to written publications, for example) can be tricky, because accused infringers can face all kinds of sometimes-unexpected difficulties with proving up the prior art.
Parties often get into sticky evidentiary questions about exactly what kinds of evidence are sufficient to show that the relevant prior art was on sale before the priority date, and how the prior art functioned—and whether that all of that evidence has authenticity or hearsay issues.
On Friday, Magistrate Judge Burke issued a long oral report and recommendation to grant summary judgment of no invalidity based on a system prior art reference. In the case, the defendants relied …
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