"The white one in the middle is representative..."Andrew E. Russell, CC BY 2.0
This week, Judge Noreika denied a § 101 motion because it challenged more than 60 claims, and because the parties disagreed as to whether any claims were representative:
WHEREAS, Plaintiff’s [§ 101] motion does not precisely specify which claims’ eligibility it is challenging . . . , but in any event details challenges to more than sixty claims’ eligibility . . . without any agreement about representativeness . . . ;
WHEREAS, should this case proceed to trial, the asserted claims will be narrowed through the parties’ disclosures and discovery and, as such, most of the claims subject to the Plaintiff’s § 101 motion will not …
As we've mentioned a time or three in the last few months, in the wake of Judge Stark's confirmation to the Federal Circuit, parties in his former cases were given the option to either consent to a magistrate judge of their choosing or await assignment to a sitting Article III judge - most likely a helpful visitor from another district.
On this slow news day, I thought it might be helpful to look back at the results of this novel procedure over the past few months and see how many litigants have chosen to consent, and to whom. I for one was a bit surprised at the results, to wit:
Not consenting: 48
Consenting: 12
Our resident math majors will note that exactly 20% (my personal guess was closer to 50%) of cases consented to having one of our magistrate judges conduct all proceedings. Interestingly, in every case the parties chose to select their magistrate, rather than allowing the Court to choose resuling in the following distribution:
Judge Burke - 7
Judge Hall - 3
Judge Thynge - 2
These numbers are quite preliminary as the majority of the VAC cases have yet to make their decision on a magistrate, but it will be interesting to see how these numbers change and what effect, if any, it will have on case management in the district.
The District of Delaware announced today that Chief Magistrate Judge Thynge is set to retire in March 31, 2023:
The United States District Court for the District of Delaware announces that Chief Magistrate Judge Mary Pat Thynge has informed the Court of her intention to retire, effective March 31, 2023, ending more than 30 years of exemplary judicial service.
Judge Thynge is the longest serving U.S. Magistrate Judge in the history of the District of Delaware. She began her tenure as a Magistrate Judge of the Court in June of 1992, after 16 years in private practice.
Visiting Judge McCalla has taken about 13 patent cases so far here in Delaware, including some additional assignments late last month. A reader who has a case before him flagged an interesting point: Judge McCalla brings some of his home-state rules with him.
In his orders on hearings and scheduling conferences, for example, he directs the parties to either the Northern District of California local patent rules or the District of Tennessee local patent rules:
1. A video motion conference re: Motion to Dismiss (ECF No. 11) will be held . . .
2. The parties should refer to the Northern District of California or the Western District of Tennessee Patent Rules.
See, e.g., New York University v. Resmed, Inc., C.A. No. 21-813-JPM (D. Del. Mar. 28, 2022).
Likewise, scheduling orders in his cases may look a bit alien to regular Delaware practitioners, as he uses the District of Tennessee form. That form results in a two-page scheduling order like the attached, which focuses primarily on a few of the initial dates and guidelines, rather than ...
Judge Andrews resolved a discovery dispute yesterday where plaintiff challenged defendant's "relevancy redactions." According to the plaintiff:
[Defendant] DuBois routinely applied, and refuses to remove, so-called relevancy redactions to the few documents it has produced in this case. . . . The DuBois redactions that [plaintiff] Ecolab has challenged are not addressed to preserving any privilege and are improper, particularly in view of the protective order that serves to safeguard DuBois’ confidential information in this case.
Judge Andrews seems to have shot this down quickly, holding that the defendant cannot redact for reasons other than privilege:
ORDER: By no later than May 30, 2022, Defendant shall produce to Plaintiffs all documents redacted for reasons other than preservation of …
I came across an interesting discovery dispute transcript that hit the docket last week in Peloton Interactive, Inc. v. Echelon Fitness, LLC, C.A. No. 19-1903-RGA (D. Del.).
Plaintiff Peloton had asserted the patents-in-suit against another defendant in another action in E.D. Tex., and ultimately settled that casein part by buying the defendant's business for $24.5m.
The defendant here, Echelon, asked plaintiff to produce various communications related to that previous litigation and sale, including communications among counsel.
Plaintiff initially refused, until defendant brought a motion to compel; then plaintiff agreed in exchange for withdrawal the motion. But plaintiff never produced the documents.
Defendant moved again, noting the prior history. The Court ordered production: …
In The United States of America v. Gilead Sciences, Inc., C.A. No. 19-2103-MN (D. Del.), plaintiff moved to compel defendant to produce a 30(b)(6) witness on various topics, including on "[a]ll bases" for certain statements by defendant's CEO, including statements about a decision not to challenge the validity of certain patents.
As to two of those topics, the defendant argued in its responsive letter that the CEO's statements were "based entirely on communications and memoranda prepared by Gilead’s in-house counsel and outside counsel," which are privileged. The Court generally agreed:
As we've recognized before, motions for reconsideration can be tough.
First, the deadline to move for reargument or reconsideration is fairly easy to miss. It's just 14 days after the order or opinion, and there are no CMECF reminders to flag it for counsel.
Second, the standard for reconsideration is fairly narrow. As we've discussed, you can't rehash arguments you already made—but you also can't make new arguments you could have raised earlier.
What does that leave? New arguments that youcouldn't have raised earlier. And those typically result from something unanticipated in the Court's ruling or order.
This week we had a good example of a worthwhile motion for reconsideration. In …
It's great that we are getting to point of having frequent jury trials again here in Delaware. Trial is the most dynamic and interesting part of the litigation process. It's where you get to address classic questions like "Can we get this admitted into evidence even though it's not on our exhibit list?", "Where was THAT in his expert report?", and "Can we show the jury this video of the other side's expert saying 'I don't know' for ten minutes straight?"
Luckily, on that last question, we now have some precedent. According to Judge Andrews last week:
I agree with First Quality that Dr. Mitton's availability does not make the deposition inadmissible. But I nevertheless …
As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.
However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.
Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.
The Court found that the Initial Invalidity Contentions were sufficient in most respects:
In general, they provide real detail, including significant specificity as to ...
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