We've written before about the risks of a deponent consulting with counsel during a deposition. This week, visiting Judge Wolson ordered a deposition reopened after counsel did just that:
AND NOW, this 27th day of November, 2023, upon consideration of Stragent’s Motion For Sanctions Against VCUSA Pursuant To Fed. R. Civ. P. Rule 30(d)(2) For VCUSA’s Violation Of Local Rule 30.6 And Established Law (D.I. 100), and for the reasons set forth on the record during a hearing with the Parties, it is ORDERED that the Motion is GRANTED IN PART and DENIED IN PART as follows:
1. The Motion is GRANTED, to the extent Stragent seeks to reopen the deposition of [the deponent] …
We got a good "what not to do" example today, relayed in an opinion by Judge Williams.
In the opinion, the Court addressed objections to a magistrate judge ruling on a privilege issue (remember—you can object to non-dispositive magistrate judge rulings in addition to R&Rs. Good luck.).
As the Court explained, the defendants initially argued to the magistrate judge that Third Circuit law governed, and that Federal Circuit law was grounded in the same principles as Third Circuit law anyway. The magistrate judge agreed:
In briefing submitted to the Magistrate Judge, Defendants state that, "Federal Circuit [law] does not differ [from Third Circuit law] in that it 'is grounded in principles of fairness. '" D.I. 224 at 3. The Magistrate Judge credited Defendants' argument to conclude Third Circuit law applies. See D.I. 232 at 3 n.2 ("Because Defendants themselves initially relied on Third Circuit caselaw here (as did Plaintiff) and because Defendants assert that the Third Circuit's approach to this issue is no different from that of the Federal Circuit, the Court will herein apply Third Circuit law regarding the 'at issue' doctrine to this patent case." ).
Then, in objecting to the magistrate judge's ruling, the defendants apparently reversed position, arguing that Federal Circuit law differed, and that the magistrate judge had erred by relying on
How, in the 8,000 year history of law, have we not come up with a better name than the "at issue" doctrine? I hesitate to call it the shame of our profession, but it's firmly in the running.
I pose some alternatives below. To make it clear, any highlighted words refer to the doctrine formerly known as "at issue." Feel free to use going forward -- creative commons or whatever.
This Will Go On For Longer Than You Think
Judge Burke had an interesting case regarding the sneaky peak doctrine. In Sensormatic Electronics, LLC v. Genetec (USA) Inc., the issue arose in the context of an inequitable conduct allegation, where defendants sought evidence about what exactly …
A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.
In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.
As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:
These Substitute Statements, which were signed by [plaintiff] HEW employee Dave …
In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103-MN (D. Del.), plaintiff moved to compel defendant to produce a 30(b)(6) witness on various topics, including on "[a]ll bases" for certain statements by defendant's CEO, including statements about a decision not to challenge the validity of certain patents.
As to two of those topics, the defendant argued in its responsive letter that the CEO's statements were "based entirely on communications and memoranda prepared by Gilead’s in-house counsel and outside counsel," which are privileged. The Court generally agreed:
Judge Hall issued a detailed privilege opinion last week, finding no privilege or work product protection for a number of documents after an in-camera review (while also finding that some others were privileged).
There are a number of useful holdings in the opinion. Some of the disputes arose in part because the custodian of the documents in question was unavailable, which means that the producing party lacks context for many of the documents.
For that reason, the producing party was unable to defend against production by offering a declaration that a document was prepared in anticipation of litigation, and the opinion resolves many of the disputes based purely on the text …
On Friday, Judge Andrews issued an opinion adopting a Special Master opinion, which held that certain pre-litigation testing documents were not covered by attorney privilege.
Pre-Litigation Testing Not Protected by Attorney-Client Privilege If Not Provided to Attorneys
The Court found that the pre-litigation scientific testing was not covered by attorney-client privilege, even though they may have been done "at the direction of" a law firm, because the core purpose was for the client's understanding rather than for facilitating legal advice:
I do not think [plaintiff] First Quality has shown that the attorney-client privilege applies to any of the [relevant] disputed . . . documents. Plaintiff's position is that everything [the expert] Dr. Malburg did falls "well …
Earlier today, Judge Burke unsealed an interesting order addressing the applicability of the common-interest doctrine to communications between a generic pharmaceutical company and its API manufacturer.
No attorneys directly participated in most of the underlying communications, but the defendants argued that they shared "a common legal interest" with their API manufacturer in avoiding a lawsuit "and that their communications furthered that interest." Although Judge Burke found that this "argument has some initial, superficial appeal[,]" in that "the subject of these communications is in some sense legal in nature[,]" he concluded that any shared legal interest came too late:
when one contextualizes the communications with regard to what was happening in the relevant time period, Defendants have not met …
Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."
When magistrate judges are referred a dispositive matter, they issue an R&R that goes to the district judge. In Delaware, an R&R typically notes the objection period at the end, and the losing party typically (but not always) files objections.
When magistrate judges are referred a non-dispositive matter, they issue an order (and possibly an opinion). The order typically does not mention any review period or process for review.
What parties often forget is that you can object to a magistrate judge'sorder just as easily as you can to an R&R under FRCP 72. And, in fact, the District Court …
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