A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Christopher J. Burke

Disappearing Zebra
Neil and Zulma Scott, Unsplash

Judge Burke addressed a situation yesterday in BT Americas, Inc. v. Palo Alto Networks, Inc., C.A. No. 22-01538-CJB (D. Del.) where a defendant moved to stay pending IPR, but the patent-in-suit wasn't actually part of the IPR.

You may be thinking—huh? How did that situation come up?

The plaintiff apparently brought suit on two patents, and the defendant moved for IPRs on both. The PTAB instituted on the first one, and declined to institute on the second. When the defendant notified plaintiff of their intent to request a stay, the plaintiff immediately dismissed the first patent with prejudice—leaving only the second patent, which was not the subject of any IPR.

The defendant nonetheless charged ahead with its motion to stay, arguing that it should get a stay anyway:

A stay of the suit pending resolution of PAN’s instituted IPR petition on the ’641 patent will streamline the issues in this case, even if the ’641 patent is dismissed. . . . Regarding the ’237 patent [which is not subject to an IPR], a stay is appropriate regardless of whether the ’641 patent is dismissed because there is substantial overlap between the two Asserted Patents. Both patents share an identical specification and the claims of the ’237 patent substantially overlap with the claims of the ’641 patent. . . . Indeed, during motion to dismiss briefing, the parties and the Court treated claims 14 and 18 of the ’237 patent as representative of all asserted claims of both patents. . . . Even BT’s infringement contentions are replete with internal cross-references, repeatedly relying on the “mapping” of representative ’237 patent claims to argue infringement of the ’641 patent. . . . The PTAB’s institution decision on the ’641 patent relies on the same evidence to demonstrate a reasonable likelihood of success as the PTAB’s decision on the ’237 patent for corresponding claim limitations.
. . .
Because of this significant overlap, the PTAB’s final written decision as to the ’641 patent could dramatically simplify the case or, at the very least, would be highly instructive as to the ’237 patent. The reasoning and written record from the PTAB on the instituted IPR will be relevant to at least claim construction and invalidity of both Asserted Patents. Accordingly, a stay will remove the possibility of onerous, redundant, and potentially inconsistent rulings, and narrow the issues in this case. . . . A stay will thus conserve judicial and party resources as to validity of the Asserted Patents.

Id., D.I. 101 at 1-2. The Court did not buy ...

Searching with Search Terms
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This is a dispute I've seen come up in a few cases. The D. Del. Default Standard for Discovery includes a provision about search terms, setting forth that if a party uses search terms to locate responsive documents, it must disclose the search terms and allow the opposing party to request up to 10 additional terms.

This provision can cause some confusion. Sometimes parties read the Court's Default Standard, see the search term provision, and think that's the only way to collect ESI. Or, sometimes, a party really wants to dictate search terms to the other side, and argues that the Default Standard requires the use of search terms.

It doesn't. A party can elect …

laim construction is one of the classic decision points in patent litigation. Like the cherry blossoms portend spring, a ripening Markman signals to litigants that the season of claim narrowing and expert reports has come at last.

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But sometimes the winter is long and cold. Although several of our Judges formally endeavor to issue a Markman decision within 60 days of the hearing, their busy dockets often make that impossible. You'll thus sometimes see the parties try and push off the various deadlines that would normally be a bit easier with a Markman in place—most notably expert reports, which otherwise might have to be done with alternative constructions.

(Eds. note - an earlier draft of this post extended the spring metaphor a further two paragraphs. I think Valentine's Day is affecting me.)

An Oral Order from Judge Burke last week serves as a reminder that the lack of Markman order is not good cause per se to push those other deadlines. The Markman hearing in Bausch & Lomb Inc. v. SBH Holdings LLC, C.A. No. 20-1463-GBW-CJB (D. Del. Feb. 9, 2024) (Oral Order), was originally scheduled for June 2023, with opening expert reports due the next February. The hearing was rescheduled to September 2023, however, shortening the interregnum. When Judge Burke issued a statement on the docket notifying the parties that the Order would not be issued within 60 days of the hearing, the defendant moved to amend the schedule so that expert reports would not be due until 90 days after the order (with all subsequent events occurring a proportionate time after that).

Plaintiff opposed, however, noting that ...

"Hang on, judge. You can't just rely on what is in our letter briefs. We filed those three days ago!" AI Generated, displayed with permission

Judge Burke issued an oral order late last week addressing a discovery dispute where a defendant requested that the Court order plaintiff to apply more e-mail search terms. He denied the request, noting that the parties were clearly still meeting-and-conferring:

ORAL ORDER: The Court, having reviewed the portion of the pending motion regarding discovery disputes, (D.I. 198), in which Defendant requests that the Court order Plaintiff to utilize 24 additional ESI search terms ("Defendant's request"), and the briefing related thereto, (D.I. 204; D.I. 212; D.I. 214), hereby ORDERS that Defendant's request is DENIED, without prejudice to renew. That request, as briefed, is clearly unripe. In the briefing, the parties, including Defendant, alternatively described the issue as one as to which the parties were: (1) "continu[ing] their meet and confers [such that Plaintiff] offered some supplemental ESI searches and... [Defendant] requested some modifications[,]" (D.I. 204 at 2); (2) "still negotiating on the scope of additional search terms and are not at an impasse" and "working... to narrow the additional search terms[,]" (D.I. 212 at 1); and (3) "continu[ing] to discuss matters" in that Defendant "intends to submit new search terms [that] should resolve all of [Plaintiff's] alleged criticism" such that the matter "should be resolved" in the future, (D.I. 214 at 1).

Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821, D.I. 226 (D. Del. Feb. 9, 2024).

He explained why the Court requires parties to ...

Crumpled, discarded motions to dismiss
Steve Johnson, Unsplash

Judge Burke issued an interesting R&R denying a motion to dismiss this week, in Parus Holdings Inc. v. Amazon.com, Inc., C.A. No. 23-190-GBW-CJB (D. Del.).

The defendant moved to dismiss based on a license defense, attaching the license. The plaintiff responded, itself attaching and relying on the license, as well as on other materials, such as a declaration from its CEO.

The Court rejected the motion—not because the defendant isn't licensed, but because it cannot even reach that issue on a motion to dismiss:

In resolving motions to dismiss under Rule 12(b)(6), . . . courts generally consider only the allegations in the complaint, exhibits attached to the complaint, matters of public …

David von Diemar, Unsplash

Today Judge Burke unsealed an opinion with a great discussion of what it takes to make a "prima facie" showing, at least as to the crime/fraud exception to attorney-client privilege (that's something you don't see every day).

According to the Court, the rules require it to hold a hearing on the crime/fraud exception, but only if the plaintiff first makes a prima facie showing that the exception applies.

The Court first reviewed plaintiff's evidence, and found that plaintiff had showed that the exception applied. The Court also found, however, that defendant's additional, different evidence that showed that the exception did not apply. On the whole, the Court sided with the defendant, finding that, in light of all of the evidence, the crime/fraud exception does not apply.

But that wasn't the end! The Court still found that it must hold an evidentiary hearing on the crime/fraud exception. Why? Because none of the defendant's additional evidence matters in determining whether plaintiff made a prima facia showing that a hearing must be held. Instead, the Court must ignore the non-movants' evidence and look just at the movant's evidence:

With the Court having said all of the above, the question then becomes: In resolving the instant Motion, what is the Court’s proper role? Is the Court supposed to look only at the evidence put forward by Plaintiffs and determine whether that evidence, standing alone, would make out a prima facie case? Or is it supposed to take into account all of the evidence provided to it, including that submitted by Defendants, in making a decision on the issue at this stage?
In Haines, the Third Circuit explained that the prima facie case inquiry is one where the court asks “[H]as the party seeking discovery presented evidence which, if believed by the factfinder, supports plaintiff’s theory of fraud?” 975 F.2d at 95 . . . . In doing so, the Haines Court cited approvingly to a decision from the United States Court of Appeals for the Fifth Circuit, which explained that “prima facie evidence” in this context is “[evidence] [s]uch as will suffice until contradicted and overcome by other evidence . . . [a] case which has proceeded upon sufficient proof to that stage where it will support [a] finding if evidence to the contrary is disregarded.” Id. . . .
In the Court’s view, these portions of Haines make clear that in determining whether a movant has made out a prima facie case, the Court must only assess the strength of the evidence presented by the movant. . . . Or, to put it differently, the Court’s job at this point is not to take the movant’s evidence and consider it alongside with any contrary evidence put in the record by the non-movant, and then to make a decision as to whether a prima facie showing has been made (or whether a preponderance of the evidence supports Plaintiffs’ claim).

ECB USA, Inc. v. Savencia, S.A., C.A. No. 19-731-GBW-CJB (D. Del. January 4, 2024).

Fascinating! It's always enlightening when the Court parses the meaning of a term like "prima facie" this closely. I have to wonder if this logic could apply in other contexts, such as a prima facie showing of authenticity at trial.

I'm definitely making a mental note to refer back to this next time I need to make a prima facie showing of something—although we'll have to see if the opinion ends up being cabined exclusively to the crime-fraud exception.

"Counsel, go stand in the corner until you figure out what 'collegiality' means." Mag Pole, Unsplash

Several District of Delaware judges have discovery dispute procedures that require parties to first file a letter stating that the parties have met and conferred but are unable to resolve some disputes, and list the disputes.

This usually works out well, but a few issues can occasionally come up with this procedure. For example:

  1. One party refuses to meet-and-confer, forcing the other side to file solo.
  2. The parties have met and conferred to death, but one party refuses to sign the the joint letter anyway (or just refuses to respond), solely for the purpose of delay.
  3. One or more parties jump the gun, …

"How much of the puzzle do we really have to give them . . . ?" Bianca Ackermann, Unsplash

The District of Delaware's Default Standard for Discovery requires contentions in patent cases.

One common Delaware counsel question is: what level of detail is required for contentions?

The answer varies on what the concern is. There is a certain level of detail that will probably preclude the Court from ordering you to supplement your contentions—but providing just that bare level of detail may not be enough to preserve all arguments that you later want to make.

On Monday, Judge Burke denied a motion to strike invalidity contentions where a party had disclosed an obviousness theory as to a patent based on modification of a prior art reference, but had not disclosed their intent to cite and rely on their own product as evidence that the modification was obvious.

The plaintiff had moved to strike the discussion of the defendants' own product from their expert reports, on the theory that their contentions failed to to disclose their intent to use that product in their obviousness analysis. Judge Burke denied the motion, and explained that a party need not disclose all evidence in support of its contentions:

Although this is a difficult issue, the Court is not prepared to say that Defendants' actions amounted to an untimely disclosure. This is because Defendants have affirmatively represented that they are not relying on the direct aortic Engager system as prior art itself; instead, they rely on it only as a piece of evidence that will be used to "show that a direct aortic version would have been an obvious modification to Engager 3.0 at the relevant time." (D.I. 361 at 2) In other words, Defendants are relying on the system simply as evidence in support of a theory that was itself timely disclosed. And as Defendants note, courts generally hold that: (a) in validity-related or infringement-related contentions, a party is not required to cite to every piece of evidence that will be used to support a given theory; and (b) it is proper for an expert to expand upon such theories in his expert report. . . . The Court also notes that it is not as if Plaintiff had zero prior knowledge of the existence of the [Defendants'] system. As Defendants point out, they produced documents in discovery regarding this system, and their engineers testified at some length about the device during depositions. . . . (4) In light of the above, the Court cannot say that Defendants' conduct amounts to untimely disclosure that should be stricken.

Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361, D.I. 447 (D. Del. Dec. 18, 2023).

In my view, the Court is not saying that no evidence at all needs to be disclosed in support of the contentions—just that this particular evidence went beyond what was necessary, under the facts of the case.

In fact, the Court seemed uncomfortable ...

Typically, if you want know how much the opposing counsel is spending on a case, you can come to a rough estimate based on how much they seem to be filing. Alternatively, you can just ask, which usually goes something like this:

Q. So . . . uh, how much are you spending?
A. None of your beeswax nerd.


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Over the summer, however, there was a rather unique case where the Court ordered the production of documents showing the plaintiffs' costs of litigation thus far and future estimates.

It started with an offhanded request in a discovery dispute letter. The defendant requested production responsive to RFPs on litigation funding documents generally, which they claimed were "relevant to damages and, as this Court has found, for purposes of cross-examination about bias." Oasis Tooling, Inc. v. GlobalFoundries US Inc., C.A. No 22-312-CJB, D.I. 184. The briefing on the issue was no more than a quarter-page.

Judge Burke granted the motion—which at this point clearly implicate litigation costs—in a brief oral order. Id., D.I. 211. Thereafter plaintiff produced the litigation funding agreement (redacted to remove the expected spend at various case milestones) but refused to produce the actual invoices or provide an overall amount paid to date.

Hence another discovery dispute aimed at "enforcing" the Court's ...

Is 3.5 hours enough time for a battle of the experts?
Is 3.5 hours enough time for a battle of the experts? AI-Generated

Parties often offer expert declarations during the claim construction process.

These declarations can be of varying utility. Sometimes, parties offer a detailed and helpful explanation of how the technology works. Other times, parties offer a useless, conclusory expert declaration that says little more than "a person of ordinary skill in the art would understand the term to mean [whatever construction the attorneys who hired me proposed]."

But, while declarations are common, in my experience live testimony from experts during a Markman hearing is pretty rare in D. Del. That's why I thought it was worth noting that, this week, Judge Burke granted an opposed request to permit …