A Blog About Intellectual Property Litigation and the District of Delaware


CJB
The Honorable Christopher J. Burke

We dug up a transcript.
We dug up a transcript. Jon Butterworth, Unsplash

Last week, in deciding a renewed motion to stay pending a § 101 motion to dismiss, Judge Burke commented on the likelihood of success of such motions:

The Court, having reviewed the parties' letters relating to Defendant's request to renew its motion to stay, . . . hereby ORDERS that the request is DENIED. . . . [I]n light of the circumstances here (including the statistical unlikelihood of prevailing on a Section 101 motion to dismiss as to each of the four separate patents−in−suit), the Court concludes a stay is not warranted.

Defendant had renewed the motion to stay after Judge Burke denied it in late April. That transcript was …

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.

Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.

That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates...

Tug of War
Merritt Thomas, Unsplash

For many years, the prevailing view in D. Del. has been that "you get what you give" when it comes to contention discovery. In other words, if you want a defendant to serve detailed non-infringement contentions, your infringement contentions should have a similar level of detail.

This standard is built into several of the judges' form scheduling orders, including Judges Stark, Noreika, Burke, Fallon, and Hall. For example, Judge Burke's form provides that:

In the absence of agreement of the parties, contention interrogatories, if filed, shall first be addressed by the party with the burden of proof. The adequacy of all interrogatory answers shall, in part, be judged by the level of detail each party …

ANDA litigation can be an odd beast. You file a case based on a product that a defendant has only applied to manufacture—what then, when the FDA requires an amendment? What of the litigation that may be years in the making and heading into the home stretch?

The somewhat tortured history of Biodelivery Sciences International, Inc. et al. v. Chemo Research, S.L., C.A. No. 19-444-CFC-CJB, gives us several examples of exactly how the Court deals with this situation.

An Early Change to an ANDA Does Not Warrant a New Trial Date

Early on in that case (about 6 months after the scheduling order was entered) one of the defendants—Chemo—received a complete response letter ("CRL") from the FDA requiring them …

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Road Block, Tim Collins, Unsplash

As chronicled in this very publication, for the last year or so, Judge Noreika has consistently declined to construe more than 10 terms at Markman.

An Unwritten Rule

This practice, however, has not been memorialized in Judge Noreika's form scheduling order, standing orders, or preferences and procedures. This leads to the question of whether the limit still holds when Judge Noreika refers claim construction to a magistrate.

Having just received our first data point, the answer appears to be "yes."

Judge Burke Limits Construction to 10 Terms

In March, Judge Noreika referred "all pretrial matters" in Commvault Sys., Inc. v. Rubrik, Inc., C.A. No. 20-524-MN-CJB, D.I. 55 (D. Del Mar. 5, …

Secret
"SECRET" stamp, RestrictedData, CC BY 2.0

The parties in Progressive Sterilization, LLC v. Turbett Surgical LLC, C.A. No. 19-637 (D. Del.) brought a dispute about "excessive" redactions to certain production in their patent action.

The defendant sought information from third parties who were under contract with the plaintiff, including various consultants and a former business partner.

Plaintiff apparently has confidentiality agreements with these people, and tried to filter their document production in the case, redacting information it thought should not be produced to the defendant. According to defendant's letter brief:

[Plaintiff] insisted on reviewing [the] third-party subpoena recipients’ responsive documents and redacting certain non-privileged content . . . prior to their production to Defendants

According …

Although the trend in D. Del. is to grant IPR stays post-institution, the inverse is also true: pre-institution have become much more difficult to obtain.

In an oral order denying a pre-institution stay last Thursday, Judge Burke took the opportunity to reiterate why these motions are generally denied:

[W]ith regard to the simplification factor, the Court (absent some unique circumstance not present here) does not see the wisdom in staying a case that is otherwise proceeding forward (with a schedule already in place), in favor of the occurrence of an event (grant of an IPR petition and subsequent institution of an IPR) that has not happened yet. The Court also notes that although, as a statistical …

It is not uncommon for patent infringement plaintiffs naming multiple defendants to group those defendants in the complaint and make allegations of infringement generally, rather than separately detailing what wrongful acts each defendant is alleged to have done. The group pleading approach is not "impermissible per se," as Judge Burke recognized in a recent R&R, claims based on group pleading are subject to dismissal where they do not include "'enough facts to render it plausible that each defendant has performed at least one type of U.S.-related infringing act' or if it otherwise fails to provide each defendant with sufficient notice of the basis for the claims against it."

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David Clode, Unsplash

In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.

Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.

Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.

After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion …