A Blog About Intellectual Property Litigation and the District of Delaware

The Honorable Christopher J. Burke

Bringing a discovery dispute is a bit of a 3-body problem. At any given time, you've probably got a half dozen complaints with what the other side is doing. When one boils over into a dispute you have to grapple with whether you should just bring all of them—and risk looking unreasonable—or just address the most pressing and risk having to raise serial disputes, which might look even worse. The push and pull can quickly become insoluble.

Guillermo Ferla, Unsplash

Luckily, we got an Order from Judge Burke this week that should make this calculus slightly easier going forward.

The defendants in Bardy Diagnostics, Inc. v. Vital Connect, Inc., C.A. No. 22-351-CFC-CJB, D.I. 97 (D. Del. June 11, 2024) (Oral Order) brought the first discovery dispute of the case (by either party) via judge Burkes usual procedure of filing a letter listing the disputes.

The disputes read as the usual humdrum list of custodians not searched and rogs insufficiently answered. The only thing out of the ordinary, is that there were 5 of them included in the letter.

Judge Burke responded to the request for a teleconference the next day with ...

We got an interesting Daubert opinion from judge Burke yesterday. It's actually not in a patent case, but the issue was neat enough that I'm willing to make an exception to our usual rule.

(Eds. note—I really hate that Daubert is always italicized because its a case name, but the pronunciation is not at all French. I see italics and I get all excited to roll some R's or whatever and then I just sound like the midwesterner I am).

The issue: can an expert report be too polite?

They've always struck me as a very polite-looking creature, despite the whole cannibalism thing
They've always struck me as a very polite-looking creature, despite the whole cannibalism thing David Clode, Unsplash

The case involved various disclosures in a business transaction, and the expert in question was an accounting professor opining on whether certain financial disclosures were deficient. Reading through the statements, they do strike me as unusual for an expert report:

I am uneasy about the fact that there were no disclosures [in the financial statements] about Schratter’s ability to continue to operate as a going concern.”
I was surprised that the financial statements did not make any mention of a possible impairment of goodwill. . . . Given the financial condition of Schratter in 2014 and its recent financial performance, I would have expected to see some disclosures about an impairment test for goodwill and why no impairment was recorded.”

ECB USA, Inc. v. Savencia, S.A., C.A. No. 19-731-GBW-CJB (D. Del. June 10, 2024) (Mem. Order) (quoting expert report of Ricky Lee Antle).

I mean, you see it right? This sort of language—both personal and measured—is the sort you might expect to hear from your own deeply disappointed accountant, rather than in an expert report. Still, it's tough to say what exactly would be objectionable about it.

The tack defendants chose was to challenge these statements as ...

Lawyers and an expert in an oasis
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Here's a scenario that can happen in a patent case: The patentee serves an opening expert report alleging infringement. Your expert responds, detailing every reason why the design documents show non-infringment. The patentee then serves a reply expert report, citing new documents that it says show infringement.

What do you do now? There are at least four answers: (1) move for leave to serve a sur-reply report to address the new docs; (2) just serve a sur-reply report, without leave, and fight the inevitable motion to strike; (3) skip the report but have the expert be prepared to discuss the new papers at deposition, and hope plaintiff asks; or (4) just plan to address the new …

The Court has developed many methods for curtailing the tendency of litigants to file and argue implausibly large numbers of SJ and Daubert motions. The first, begun long ago when mankind was yet to know fire and all creatures lived in harmony, was page limits. Later, Judge Connolly pioneered the practice of having parties rank their motions. Still further methods take seed, blossom, and wither, each day.

In you can't tell, I've been spending a lot of time in my garden this month.  I just got my first plum! (not these).
In you can't tell, I've been spending a lot of time in my garden this month. I just got my first plum! (not these). Svitlana, Unsplash

This last month Judge Burke debuted a new approach—"requesting that the parties select one motion each to argue at the hearing.

The parties in the case in question each filed SJ and Daubert motions under the usual page limits. After briefing was complete, Judge Burke issued an order requesting the parties select 80 pages of briefing to actually be argued at the hearing:

The Court needs the parties' help to narrow the issues as to which argument will be presented on July 2. By no later than May 20, 2024, the parties shall meet and confer and file a joint letter with the Court advising of their position (it would be ideal if this were a joint position), as to which of (or which portions of) the 5 pending motions the parties wish to present argument on at the July 2 hearing (and which the Court can simply resolve on the papers).  For guidance, the Court can productively prepare for and hear argument on no more than about 80 pages of briefing.  After hearing back from the parties, the Court will then advise on which motions/issues it will hear argument on during the July 2 hearing.

The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No.22-57-CJB. D.I. 219 (D. Del. Apr. 29, 2024).

The parties ultimately did submit a joint letter selecting the 80 pages of briefing. Judge Burke then issued a follow-up order requiring further narrowing for the hearing:

[T]he Court has further reflected on the issue, in part having after having recently overseen another similar hearing regarding such motions. As a result, it has become clear to the Court that for a hearing on summary judgment and/or Daubert motions to be most fruitful and focused, it makes best sense to require the parties to each select one motion that they will offer argument on to the Court.  This will allow for a detailed and focused argument regarding what the parties believe to be their most important motion, and will allow the Court to meaningfully prepare for argument.  Therefore, the Court hereby ORDERS that by no later than May 28, 2024, the parties shall submit a joint letter advising the Court of the motion that each respective side selects to be argued at the July 2 hearing.

Id., D.I. 238 (D. Del. May 21, 2024).

I would not be surprised to see used more going forward in cases before Judge Burke. We'll let you know if it enters his form order.

"Our two identified custodians have the 'majority' of relevant docs and any others have 'duplicative' info." Discovery dispute goes *poof*? AI-Generated, displayed with permission

In the District of Delaware, unless the parties agree otherwise, ESI discovery is guided by the Default Standard for Discovery. The Court published the Default Standard over a decade ago, and at this point quite a bit of case law has developed interpreting its various provisions.

Among other things, the Default Standard requires each party to identify "[t]he 10 custodians most likely to have discoverable information" in a case. These custodians' files will ultimately be searched as part of the document production process.

One common question is: what if we have less than 10 custodians with discoverable information? The answer to that is typically "disclose what you have," but I had not seen a case setting a standard for when a party can disclose less than 10 custodians—until this week.

In Attentive Mobile Inc. v. 317 Labs, Inc., C.A. No. 22-1163-CJB (D. Del.), Judge Burke addressed a discovery dispute where the defendant identified just four custodians. He denied a motion to compel the identification of more custodians based on an argument that the four custodians had a "majority" of the non-duplicative ...

"They brought four motions to strike? We better bring 5!" AI-Generated, displayed with permission

There was an interesting order last week in Cleveland Medical Devices Inc. v. ResMed Inc., C.A. No. 22-794-JLH (D. Del.).

The parties filed a letter initiating a discovery dispute conference with the Court. These letters must include non-argumentative descriptions of each dispute the parties raise with the Court. Here, the letter listed a total of nine motions to strike expert reports, including five from the plaintiff and four from the defendant.

Typically the Court reviews these letters and sets a date for a conference and for briefing on each sides' issues. Here, however, the Court took issue with the extraordinary number of …

Stick Figure Watch
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If there is one thing that tends to kill discovery motions, it's delay. If you want to have the best chance of winning your motion to compel, supplement, strike, etc., you need to bring the motion early. Don't wait.

We got a good example of that last week in CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-JLH, D.I. 163 (D. Del. Apr. 9, 2024). There, a defendant sought to compel a deposition of an inventor before a Markman hearing, arguing that the testimony was important for claim construction. The Court denied the request, in part because they waited too long:

ORAL ORDER: The Court has reviewed the discovery …

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 …

Claim 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.

AI-Generated, displayed with permission

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 ...