A Blog About Intellectual Property Litigation and the District of Delaware


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"Back in my day, we locked our first year associates in a room stacked with banker's boxes for weeks on end! None of this 'search term' mumbo jumbo!" AI-Generated, displayed with permission

Judge Williams issued a lengthy decision today in GlaxoSmithKline Biologicals SA v. Pfizer Inc., C.A. No. 24-512-GBW (D. Del.), addressing a number of disputes relating to proposed protective and ESI orders in multiple related actions.

There is a lot of interesting material in the decision, but one ruling in particular caught my eye, because it's an issue that comes up a lot: whether a party has to use search terms to search ESI.

Most, but not all, of our judges have adopted the Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI")—a document that, despite it's catchy name, is usually referred to as the "Default Standard."

The Default Standard places the option of using search terms in the producing party's hands:

If the producing party elects to use search terms to locate potentially responsive ESI, it shall disclose the search terms to the requesting party. Absent a showing of good cause, a requesting party may request no more than 10 additional terms terms to be used in connection with the electronic search. Focused terms, rather than over-broad terms (e.g., product and company names), shall be employed. The producing party shall search (i) the non-custodial data sources identified in accordance with paragraph 3(b); and (ii) emails and other ESI maintained by the custodians identified in accordance with paragraph 3(a).

Thus, producing parties sometimes decide not to use search terms, and to instead review and produce their ESI the old-fashioned way (potentially including hours of brutal contract-attorney document-by-document review).

Occasionally the opposing party will ask the producing party to use search terms. In cases governed by the Default Standard, I would expect a producing party to feel little pressure in responding "no," since the Default Standard recognizes that using search terms is optional.

In GlaxoSmithKline, however, the Court ...

Disco on disco, baby
Disco on disco, baby AI-Generated, displayed with permission

Discovery on discovery -- i.e., discovery asking how you're collecting documents, or when you started your litigation hold, or why all your documents smell like bubblegum -- is generally not allowed in Delaware (and most other districts I'm aware of). To get that sweet, sweet, disco on disco, you need to make a "threshold showing that significant, relevant, and non-cumulative information has been withheld or overlooked." British Telcoms. PLC v. IAC/Interactivecorp,. C.A. No. 18-366-WCB, 2020 U.S. Dist. LEXIS 37271, at *21 (D. Del. Mar. 4, 2020). This is a pretty big ask in the context of a discovery dispute, so we only rarely see the issue come up.

But …

Recycle Bin
Sigmund, Unsplash

We missed an interesting decision from Judge Fallon last month. In Marquinez et al v. Dole Food Company Inc., C.A. No. 12-695-RGA-SRF, D.I. 582 (D. Del. Apr. 24, 2025), Judge Fallon rejected an attempt to "recycle" an expert opinion from a prior, related action.

Apparently the plaintiff had previously retained the experts, and attempted to re-use their prior expert opinions, by admitting the transcript of their prior testimony:

The Hendler Declaration confirms that both witnesses were formally retained as expert witnesses in a prior litigation, they served expert reports in the prior litigation, and both were asked but declined to serve as retained expert witnesses in this case. (D.I. 580 at ¶¶ 9-13) Plaintiffs …

Try not to forget that jury demand.
Try not to forget that jury demand. AI-Generated, displayed with permission

Other than in ANDA cases, most (but not all) patent cases these days involve a demand for jury trial. FRCP 38 sets a deadline for requesting a jury trial within 14 days after the last pleading directed to the issue is served:

On any issue triable of right by a jury, a party may demand a jury trial by . . . serving the other parties with a written demand—which may be included in a pleading—no later than 14 days after the last pleading directed to the issue is served; and . . . filing the demand . . . .

FRCP 38.

This rule includes a few interesting things, just from the text:

  • It sets out the demand requirement by issue, not by action
  • It says parties "may" include the jury demand in a pleading, not that they must
  • A party gets 14 days after service of the "last pleading directed to the issue" to serve a jury demand

District of Delaware Local Rule 38.1 also covers this issue, and defines the acceptable language for a jury demand in a pleading:

If a party demands a jury trial by endorsing it on a pleading, as permitted by Fed. R. Civ. P. 38(b), a notation shall be placed in the caption of the pleading stating "Demand For Jury Trial" or the equivalent. This notation will serve as a sufficient demand under Fed. R. Civ. P. 38(b).

D. Del. LR 38.1.

In my experience, parties who want to request a jury trial almost always ...

It has been pointed out that many of my references are so oblique as to be indecipherable. Rather than improve the practice, I have resolved to simply include a footnote at the bottom of each post, lest they go unappreciated.

The best and worst artists please themselves first.

AI-Generated, displayed with permission

Anyway, today's case is Cosmokey Solutions GmbH v. Duo Security, Inc., C.A. No. 18-1477-JLH-CJB (D. Del. May 19, 2025).

The defendant there brought a Daubert motion to preclude the plaintiffs' experts testimony on the grounds that he offered a "legally wrong construction" of one of the claim terms. Naturally, this motion was brought long after the Court issued its Markman order. Neither party had proposed …

This is basically what I imagine when I hear about a
This is basically what I imagine when I hear about a "corporate deponent" Chris Barbalis, Unsplash

On Friday, the Court unsealed an interesting Judge Bryson opinion on 30(b)(6) depositions.

As we've noted, Rule 30(b)(6) now parties to meet-and-confer prior to the deposition to resolve the scope of the testimony. But the rules leaves out the exact parameters of how and when parties object, and what happens when they do.

Judge Bryson's opinion addresses an instance where a responding party objected to a 30(b)(6) notice, designated witnesses on only portions of the noticed topics, and offered to meet-and-confer (an offer the noticing party never accepted).

As promised, the deponent was prepared to testify on only a portion of the …

Paper
ron dyar, Unsplash

When it comes to summary judgment and Daubert motions, the local rules here in D. Del. set a limit for the number of pages, but don't set a limit for the number of motions. Our judges' form scheduling orders for patent actions address this, and set length limits for brifing dispositive motions (and sometimes for combined SJ/Daubert briefing).

Sometimes, however, parties end up with scheduling orders that place no limits on the number of motions. In that case, in theory, a party can file as many SJ motions as it wants under the rules, with 20 pages for each motion. In practice, that may not pan out so well.

We saw …

I don't think I'm speaking out of turn when I say that snap removal is a patently ridiculous concept. Whatever lawyer first decided to float this argument deserves all of the praise I can heap upon them, both for the inventiveness and sheer audacity. In fact, lets take a moment to snap for them now:

Some say he's still writing that brief. . .
Some say he's still writing that brief. . . AI-Generated, displayed with permission

In any case, snap removal has been the law in the Third Circuit since Encompass Ins. Co. v. Stone Mansion Rest. Inc., 902 F.3d 147, 152-53 (3d Cir. 2018), where the Court held that the plain language of the removal statute required snap removal even though the "result may be peculiar." Id. at 153-54.

But real snappies will be aware of the next big thing—"super snap" removals, which the Third Circuit has yet to address. A super (duper) snap removal (expialadocious) is where the plaintiff electronically submits the complaint, the defendant becomes aware of it through their docket-monitoring service of choice, and then removes the case before the filing has even been accepted by the clerk.

Snappy.

The Ninth Circuit—the first to address this growing class of removals—held that they "had a foundational defect—the absence of an existing civil action in state court—that rendered them not just defective but legally null and void." Casola v. Dexcom, Inc., 98 F.4th 947, 963 (9th Cir. 2024).

Judge Noreika had a decision yesterday on a middle-ground between regular and snap removal, which I have chosen to call semi-super snap removal (expialadocious). The plaintiff in Higgins v. Novartis Pharms. Corp, C.A. No. 25-245-MN (D. Del. May 14, 2025) filed ...

This is not the level of disclosure at issue here.
This is not the level of disclosure at issue here. AI-Generated, displayed with permission

Most readers who are patent litigators will know this already, but a "claim chart" is a table with two columns. The column on the left lists claim elements, and and the column on the right lists the portions of something—typically a product, system, or disclosure—that meets the elements on the right.

The chart shows the reader how the thing (whatever it may be) meets the elements of a claim or claims.

Detailed claim charts sometimes include figures with arrows pointing to the relevant claim elements, quotes of relevant text (if applicable), and/or a narrative description of how the cited material meets the element.

Of course, one …

No Stopping
Ben Tofan, Unsplash

As most of our readers likely know, IPR estoppel means that an accused infringer who brought an IPR cannot claim invalidity at trial on a grounds it reasonably could have raised during the IPR. But what constitutes a "grounds" for invalidity has varied across different District Court judges.

Everyone agrees that, as the statute says, the PTAB cannot address system or product prior art under the on-sale bar, but can potentially address publications describing those products. There has long been a split of precedent on whether an accused infringer covered by IPR estoppel can argue invalidity based on a prior art product, where the documentation describing the production could have been asserted in the IPR …