I've been a Delaware lawyer for a while now, but today is the first time I've seen a case where a party submitted video evidence of a deponent acting suspicious.
Pictured: The deponent, probablySergiu Nista, Unsplash
I gather from the briefing that the case was already quite contentious, as the plaintiff in Inpria Corporation v. Lam Research Corporation, C.A. No. 22-1359-CJB, D.I 506 (D. Del. Apr. 28, 2025) had requested a deposition "focused solely on document creation, retention and storage." Id. at D.I. 293. According to the briefing, the deponent "referenced another screen, positioned to his left, after questions were asked but before providing an answer," but when asked about what was on the screen, he testified …
Those of a certain age might recall the Animaniacs. It was an absurdist cartoon with a lot of bits, many referencing the likes of George Burns, Marlon Brando, and other popular public figures from 30 years prior that meant absolutely nothing to 10-year-old me.
And then he puts an orange slice in his mouth and chases the kid around the laundry until he dies! It's amazing!AI-Generated, displayed with permission
One of the bits was "good idea, bad idea," the basic premise of which is right there in the name. I thought it would be fun to revive it for this post on an especially doomed motion before Judge Connolly. Because, while there is much to be learned from the man who climbed Everest, the lesson is often more easily grasped from those unfortunate souls who line the path.
In that vein, I present the lessons that I have gleaned from last Monday's decision in Drake v. General Electric Co., C.A. No. 24-281-CFC (D. Del. Mar. 10, 2025).
Good Idea - Attaching Factual Support for Your Motion
As we've covered in the past, one of the best strategies for a discovery dispute—or any motion—is creating a detailed factual record on, for instance, the actual costs of complying with some request, the difficulty of access some set of documents, or the high cost of vendors. One can find innumerable examples of the Court noting that the losing side of the dispute had presented no more than "attorney argument." At least Judge Burke explicitly encourages the parties to attach affidavits or declarations to their discovery dispute submissions.
Bad Idea - Attaching Your Secretly Recorded Phone Calls
Our millions of daily readers will remember Andrew's post from last month on Judge Connolly's Order in Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del.). As a brief refresher, Vestolit had filed a 1782 application seeking to serve subpoenas on both Shell and its CEO. The papers, however, only mentioned subpoenas to be served on the corporation and referred to the individual subpoena only obliquely as attachments to the filing.
Bad attachmentAI-Generated, displayed with permission
Judge Connolly noted that this failure to specifically reference the personal subpoena may have been a violation of the lawyers' duty of candor and thus issued an order to show cause why they should not be sanctioned, and denied the application in its entirety pending the response.
Yesterday Judge Connolly issued his order on the sanctions issue and the underlying application. Probably most interesting to you, reader, is that the Court found that there had been no violation of the Rules of Professional Conduct:
I accept counsel's apologies for the Application's deficiencies, am persuaded that counsel did not intentionally withhold from the Court material facts in violation of Rule 3.3(d), and will, therefore, not deny the Application in toto.
Vestolit GmbH v. Shell Chemical LP, C.A. No. 24-1401-CFC (D. Del. Mar. 4, 2025).
The Court did, however, find that the problems with the original application were serious enough to warrant denying the application to serve the individual subpoena on the CEO:
[E]ven if this Court could have personal jurisdiction over Ms. Kline consistent with due process, I would exercise my discretion and deny the Application's request to subpoena Ms. Kline because of the seriousness of the deficiencies in the Application and supporting briefing I identified in the January 14, 2025 Memorandum Order. . . . Although, as noted above, I am persuaded that counsel did not intentionally withhold material information from the Application and briefing, to countenance such deficiencies by simply ignoring them would send the wrong message to counsel in this case and to the bar. Lawyers' professional obligations are at their highest when they seek ex parte relief, and judges, especially in busy courts like this one, necessarily rely not only on counsel's honesty, but also on their diligence, in ex parte matters.
The Looming Parade of Horribles, AI-Generated, displayed with permission
I’m partial to percussion and noticed that there was a gaping hole of staccato in the rising swell of the IPDE music videos, subtle though it may have been in the background of Andrew's singing and Nate’s interpretive dance performances. Leaving the snare drum at home, today I chime in only with the lonely voice of a wistful triangle to supplement this week’s stories with a tale from a faraway land—the Eastern District of Texas.
Why do we in Delaware care about this opinion? It gave me a fresh appreciation for the orderly composition of Delaware scheduling orders. It involved a problem that cannot arise in a District of Delaware …
I am pleased to announce that, starting with Andrew's next post, we will be pivoting to a new format. No longer will we be analyzing the developments in IP law with mere written words. Instead, we will be creating Schoolhouse Rock style musical videos. Andrew's surprisingly moving singing voice will be accompanied by my own interpretive dance—leading you through the intricacies of the days' cases like a bee describing the way to honey.
This is perhaps my favorite picture I've used on the blogAI-Generated, displayed with permission
The subject of today's post, CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-CFC-CJB, D.I. 413 (D. Del. Feb. 7, 2025) will also be the subject of our first song, "Sanction Sanctuary."
The title comes from the plaintiff's motion for sanctions -- unusual in the district outside of the Pennypack context. The issue there was that the defendant had produced almost all of its documents after the substantial completion deadline, resulting in extra work for the plaintiff, who sought fees as compensation. The defendant argued that the late production was not sanctionable because it was caused in large part by an error in their document collection that had initially missed all documents before 2018.
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.
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 ...
Google apparently indexed its allegedly confidential information on its own search engine.Pawel Czerwinski, Unsplash
Whew, this is another one that falls in the "I'm glad I'm not involved in that" bucket (some previous entries here and here).
On Friday, Judge Andrews rejected a frivolous motion to seal, after he found some of the supposedly-sensitive information as a top result on Google:
This is about as frivolous a motion to seal as I have seen. Defendants submitted a declaration of Phil Harnish in support of their motion to transfer the case to the Northern District of California. The motion is based on the purported need to avoid disclosing “sensitive personal information about employees that, if revealed, would …
Last month, we wrote about out-of-town co-counsel who the Court suggested may have mis-handled confidential information. The out-of-town counsel failed to appear for a hearing about the incident back in May.
Afterwards, opposing counsel requested sanctions including revocation of his pro hac admission, the out-of-town counsel withdrew hispro hac appearance. Since his withdrawal in May, the case has been re-assigned to Judge Williams, and Court had been quiet on this issue—suggesting perhaps he had successfully skirted any sanctions by mooting the relief.
Shortly after the withdrawal, the party got new Delaware counsel, and the previous Delaware counsel (who had to defend the failure to appear) withdrew. …
An interesting transcript just hit the docket in CBV, Inc. v. ChanBond, LLC, C.A. No. 21-1456-GBW (D. Del.), a contract case, after the transcript restrictions expired. The hearing itself took place back in April, before Judge Noreika.
In the case, defendant ChanBond filed a letter seeking emergency relief after it inadvertently served a sealed filing on out-of-town counsel for another party, who allegedly took the position that he need not maintain the confidentiality of the document, either under the Court's order sealing the document or local rule 26.2 (which provides a confidentiality obligation prior to the entry of a protective order, as explained below).
Out-of-town counsel responded to the request for emergency …
In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).
The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.
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