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.

Fin.

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 ...

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 …

The judges' form scheduling orders in D. Del. have deadlines for "substantial completion" of document production. Generally, this deadline is set so that the parties can get most of their documents out and then proceed to depositions.

This tends to be one of the key deadlines in cases, and it often the subject of disputes. We've talked before about how a party cannot withhold a category of documents until after the deadline, and how waiting to produce things until after the deadline can result in exclusion.

Parties typically agree to make "rolling productions" up until that deadline. But, sometimes, the "rolling production" is a trickle, with the bulk of the documents coming just before the deadline—leaving the other side to scramble to review everything in time for depositions.

This week we got some useful precedent from Judge Burke about how that technique is inappropriate, and how parties need to spread their "rolling" production out proportionally:

ORAL ORDER: The Court, having reviewed Plaintiff's discovery dispute motion ("Motion"), (D.I. 73), and the briefing related thereto, (D.I. 70; D.I. 72; D.I. 82), hereby ORDERS that the Motion is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) The Court agrees with Plaintiff that Defendants should make an orderly and proportional production of their ESI discovery, such that they should not be dumping the bulk of those remaining documents on Plaintiff at or near the December 5 substantial completion deadline. But the Court sees that Defendants have begun to move forward with those productions (perhaps spurred by Plaintiff's Motion), and it also agrees with Defendants that it is not in a good position to set an arbitrary number of ESI documents that should be produced each X days on Y dates.; and (2) So the Court will simply order that between now and December 5, Defendants should produce their remaining ESI discovery on a consistent, roughly proportional, rolling basis, such that Plaintiff does not get the bulk of the remaining documents at or near the deadline. Ordered by Judge Christopher J. Burke on 11/6/2023. (mlc) (Entered: 11/06/2023)

State Farm Mutual Automobile Insurance Co. v. Amazon.com, Inc., C.A. No. 22-1447-CJB, D.I. 91 (D. Del. Nov. 6, 2023).

The plaintiff had sought an order compelling the defendant to produce "50,000 documents per week" over the 7 weeks that were then remaining before the substantial completion deadline. The Court rejected that part of the request, possibly because the defendant argued it didn't have all that many documents.

But the order makes clear that the defendant has to roll out what it does have in a "roughly proportional, rolling basis" before the final deadline. Nice!

I've attached the order below so that we can all find it next time this issue comes up in a discovery dispute.

I know the title is for the wrong holiday, but I can only work with what the Court provides. If you want something more appropriate, encourage your local judge to issue opinions on murders most foul and revenge from beyond the grave this time next year. There's still time for opinions on disastrous chimney collapses for the holiday season.

Anyway.

Today's case, Midwest Energy Emisions Corp. and MES Inc. v Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Oct. 26, 2023) (Mem. OP.) has an interesting wrinkle on the distinction between the requirements for induced infringement under 271(b), and contributory infringement under 271(c). The defendants there were all somehow involved in the sales and hauling of coal to various power plants (hence the title). One particular group of defendants was allegedly involved only in the moving of the coal from place to place, but was not alleged to actually make any sales. Accordingly that defendant group (called the "Cert Operations" defendants), moved for summary judgment that they had not induced or contributed to any infringement, despite their logistical role in the process.

Judge Burke granted the motion as to the contributory infringement claims but denied it as to the induced infringement claims, stating:

Plaintiffs’ allegations are that the CERT Operations Companies are liable here because they took steps to “provide” refined coal to power plants . . . —and one can “provide” such coal not only by selling the coal to the plants, but also by playing a role in having the coal delivered to the plants. . . . On this ground then, the Motion is DENIED as to the CERT Operations Companies.

Id. at 4 (cleaned up).

But the Court does not see (and Plaintiffs have not demonstrated) how simply “participating in the operation, production and delivery” of refined coal to a power plant on behalf of a refined coal company, without more, could equate to engaging in the sale of coal from the refined coal company to the power plant. And Section 271(c) requires that these CERT Operations Companies had to have participated in some way in that sales process—a process that involves two parties agreeing to transfer property or title in return for the payment of or promise to pay an agreed-upon price. . . . [P]laintiffs have not demonstrated that any of the CERT Operations Companies advertised the coal for sale, negotiated the terms of sale, collected payment for any sale, received a portion of any sales revenue or in some other meaningful way participated in the actual negotiation and sales process. Thus, summary judgment is GRANTED as to the claims for contributory infringement against the CERT Operations Companies.

Id. at 5-6 (cleaned up).

Its a useful reminder that the language of these two closely related sections is not precisely parallel.

Merry Halloween!

In the last few years, its become increasingly easy to win a motion to stay pending IPR. Nowadays, if a good number of asserted claims are subject to the IPR, you can expect a good long stay.

This naturally suggests a strategy for avoiding stays that I have been surprised not to see more of—splitting your suit into multiple different cases, each asserting just a few claims. This seems to be what occurred in ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484-CJB (D. Del. Oct 17, 2023) (Oral Order).

In that case, Immervision filed two separate suits at around the same time (but not actually on the same day) asserting different claims of the same patent. The PTAB issued an IPR that covered all of the claims asserted in one of the cases, but none of those asserted in the other. Apple moved to stay both cases (which had been consolidated for pretrial purposes), and Immervision opposed, just as to the case not covered by the IPR.

Unfortunately for the Plaintiff, Judge Burke found that it would make little sense to split these consolidated cases apart and granted to the motion to stay as to both cases:

Additionally, absent a stay in this scenario, two rounds of summary judgment and Daubert briefing/hearings would need to be held (one in this action and one in the 1733 action) -- as opposed to one combined summary judgment/Daubert process. Plus, since the PTAB's Final Written Decision in the 990 patent IPR is due in late summer 2024 (prior to the October 2024 trial scheduled in this case), if the PTAB upheld the claims at issue in that IPR, then no doubt ...

We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgiving Pennypack factors.

We've also discussed how you really ought to have a reason for a late disclosure.

On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:

ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …

Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:

ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …

Bonjour dear readers! I have missed you all so. The blog vacation has been a real boon for us, and we've got a whole trove of opinions, orders, and shouted comments built up to discuss over the next few weeks.

One of the first that caught my eye was an order from Judge Burke that contained that rarest of gems -- praise for a party to a discovery dispute -- and included a neat primer on what the Court likes to see when ruling on them.

The dispute in question was pretty standard stuff, with the defendant wanting a supplemental protective order that gave extra protections to design files that it likened to source code. As the party seeking the stricter protective order, they bore the burden which the Court found they met easily:

Defendant did here what too few parties in discovery disputes do: it made a detailed factual record, supported by multiple sworn declarations, that strongly supported its arguments. That is, Defendant has demonstrated that the "highly technical details necessary to fabricate [its] proprietary... lens designs" are, "in effect, the source code of lenses" and "are as commercially sensitive as any other form of source code[,]" such that they should receive the heightened form of protection set out in the SPO.

ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484, D.I. 136 (D. Del. Aug. 4, 2023) (Oral Order).

The "detailed factual record" here was more straightforward [read: achievable] than you might think. The defendant submitted 2 declarations: a 3-pager from ...

Here's one you don't see every day. Back in March, Judge Burke granted a § 101 motion to dismiss as to the claims of two of the six asserted patents in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB (D. Del. Mar. 31, 2023).

In that opinion, the patentee did not dispute that the claims were directed to the abstract idea of synchronizing a file across a network:

Plaintiff, for its part, does[ not] dispute that synchronizing multiple versions of a file across network computers is an abstract idea, and the Court agrees that it is. Again, …