Delaware IP Law Blog

In XPRT Ventures, LLC v. eBay, Inc., et al., C.A. No. 10-595-SLR (D. Del. Dec. 30, 2011), Special Master White rejected the Defendants’ arguments in favor of a prosecution bar on the Plaintiff’s Outside Counsel. Id. at 3. Although the Defendants argued that a prosecution bar on the Plaintiff’s Outside Counsel was necessary to protect the Defendants’ confidential and proprietary information, the Special Master agreed with the Plaintiff that the proposed prosecution bar was unreasonable under the circumstances. Specifically, the Special Master found that the proposal, which sought to bar Outside Counsel “from directly or indirectly participating in the preparation or prosecution of a class of patent applications ‘in any way’” was overly broad, especially in light of the “expansive subject areas setting the outer boundaries of the proposed bar, for example, ‘money management,’ ‘advertising and promotion’ and ‘web hosting, or online or mobile commerce.’” Id. at 5. The Special Master found that such a provision effectively could be interpreted “to cover the entire field of commerce in today’s modern age . . . .” Id. at 5-6. Further, the Defendants provided no evidence that the Plaintiff’s Outside Counsel were engaged in competitive decisionmaking for the Plaintiff: Outside Counsel were not involved in any patent prosecutions before the PTO, or with any decisions concerning the Plaintiff’s licensing, pricing, or management of its patent portfolio. Id. at 7-8. Under the circumstances, the Special Master found that the concerns raised by the Defendants would be adequately safeguarded under the Court’s Local Rules and an anticipated stipulated protective order providing that confidential materials would be used only in the present litigation. Id. at 8.

Continue reading "Special Master Rejects Imposition of Prosecution Bar on Outside Litigation Counsel" »

In XPRT Ventures, LLC v. eBay, Inc., et al., C.A. No. 10-595-SLR (D. Del. Nov. 30, 2011), Special Master White granted defendants’ motion to compel plaintiff to provide a complete response to its interrogatory seeking plaintiff’s contentions on conception and reduction to practice for each claim of the patents-in-suit. Plaintiff opposed defendants’ motion arguing that its response was complete, that the interrogatory posed an undue burden, was duplicative of other discovery and imposed an unnecessary expense. Id. at 8. Special Master White disagreed. He found that the response was incomplete because it failed to provide any information concerning due diligence and failed to identify any documents, although requested by the interrogatory. Special Master White noted that plaintiff “may not pick-and-choose which portions of the discovery request that it likes, and then claim that the response is complete.” Id. Special Master White also found that the interrogatory did not pose an undue burden, was not duplicative and did not impose an unnecessary expense. Id. at 9-11. There was no undue burden because it is the plaintiff not the defendant that controls the number of claims asserted in the case. Id at 9. The interrogatory was not duplicative because choosing to serve “written discovery in advance of a deposition is hardly novel; nor is it objectionable for a party to want to know basic facts and receive relevant information and documents before taking a deposition; and it is inappropriate for the responding party to instruct the propounding party to ask the question at a deposition rather than provide a written response.” Id at 10. Last, the interrogatory posed no unnecessary expense because the information sought should be readily available to plaintiff. Id. at 11.

Continue reading "Special Master orders a complete response to contention interrogatory where party responds to only portions of the interrogatory" »

In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Oct. 27, 2011), Special Master Poppiti recently shifted all "of the Special Master's compensation, costs and expenses" associated with certain discovery disputes to defendants AU Optronics Corp. ("AUO") and Chi Mei Optoelectronics Corp. ("CMO"). Special Master Poppiti previously awarded Apeldyn its costs in connection with these disputes, and "Apeldyn requested that the Special Master 'consider allocating costs for [his] services" in connection with [these disputes] 'to reflect' an 'appropriate[] apportion[ment] to AUO and CMO[.]" Id. at 1-2. AUO and CMO did not respond to this request. Id. at 2. Special Master Poppiti then asked Apeldyn to submit a two-page letter explaining its position on "'the way in which AUO and CMO wasted the Special Master's time and resources[,]'" and he ordered AUO and CMO to submit letters in response. Id. Although Apeldyn submitted its letter, neither AUO nor CMO responded. Id. Thus, finding that "the Special Master would not have had to expend time and resources on these matters had AUO and CMO not engaged in . . . inappropriate discovery practices[,]" "and placing significant weight on the lack of opposition to Apeldyn's request by either AUO or CMO," Special Master Poppiti apportioned all "of the Special Master's compensation, costs and expenses" associated with these discovery disputes to AUO and CMO. Id. at 3.

Continue reading "Special Master Poppiti: Costs and Expenses Shifted to Defendant Where Defendants' Discovery Practices Wasted Time and Resources" »

In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Aug. 29, 2011), Special Master Poppiti recently recommended that plaintiff's requested sanctions award be reduced from $89,747.54 to $47,241.54. Id. at 1. In determining the adequacy of documentation of Apeldyn's fees associated with responding to an untimely expert report, the Special Master first noted that although "the descriptor 'worked on' [in attorney timekeeping records] is vague in and of itself, as it fails to convey to the reader the precise task being performed by the timekeeper[,]" the declarations at issue included "[a]mple description of specific tasks[.]" Id. at 14. The Special Master did, however, exclude from the lodestar calculation as inadequately documented all of the hours that "group[ed] together duplicative and non-duplicative tasks[.]" Id. at 16. The Special Master further excluded from the lodestar calculation (1) excessive hours in connection with responding to the untimely expert report in light of the fact "that approximately 70% of the [responsive report] is duplicative--in most instances word-for-word--of [the expert's] earlier reports[,]" and (2) the hours of an attorney whose "role, it seem[ed], was to provide backup support" because the tasks he performed were "entirely duplicative of work already done by [other attorneys]." Id. at 17-19.

Next, addressing Apeldyn's fees in connection with bringing the sanctions motion, Special Master Poppiti stated that the motion "did not involve complex issues of law, and Apeldyn did not cite any case law in its letter briefs, indicating that intensive legal research was not done." Id. at 21. Thus, "[g]iven the straightforward issues involved, the brevity of the letter briefs, and the absence of case law in the briefs," the Special Master excluded all excessive hours from the lodestar calculation. Id. at 21-22.

Finally, Special Master Poppiti stated that "Apeldyn is not entitled to receive reimbursement for fees or costs incurred in connection with preparing the June 27 Bill of Costs" because "Apeldyn did not request such fees in its first submittal on June 27, 2011" and therefore "Apeldyn . . . waived any opportunity it once might have had to seek reimbursement for such fees." Id. at 24. Further, Apeldyn's "June 27 Bill of Costs lacked sufficient documentation[,]" and thus "it would be unfair to reward Apeldyn for preparing what the Special Master concluded to be a deficient submittal." Id. at 24-25.

Continue reading "Special Master Poppiti Recommends Reduction of Sanctions Award" »

Last week, Special Master David A. White issued an opinion on a number of discovery issues relating to a motion to compel in XPRT Ventures, LLC. v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 15, 2011). The motion sought to expand the scope of document discovery by increasing the applicable time period and number of custodians. Special Master White granted the motion in part, based on the potential relevance of the evidence, but refused to order document production from individuals not employed by the defendants. Id. at 26-27. Documents of former employees that are still in the possession, custody or control of the defendants, however, are subject to discovery. Id. at 30.

Continue reading "Special Master White: Discovery Opinion in XPRT Ventures" »

In Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. May 25, 2011), Special Master Poppiti recently addressed a party's failure to disclose five prior art references until it filed an expert report four days after the opening expert report deadline. Id. at 6. Although Special Master Poppiti found that the failure to timely disclose these prior art references was neither "substantially justified" nor "harmless" as required by Fed. R. Civ. P. 37(c)(1), he stated that, absent a showing of bad faith, the appropriate sanction was not a striking of the untimely expert report. Id. at 6-13. Rather, the Special Master found that the appropriate sanction was an award of the costs and fees that the plaintiff would incur in responding to the late-filed expert report, along with the costs and fees incurred in bringing the motion to strike. Id. at 13.

Continue reading "Special Master Poppiti: Without Bad Faith, Sanction for Untimely Disclosure of Prior Art Limited to Monetary Sanctions" »

In The Medicines Co. v. Teva Parenteral Medicines Inc., C.A. No. 09-750-ER (D. Del. May 4, 2011), Special Master Poppiti recently denied defendant Hospira, Inc.'s motion for a protective order. The dispute centered on the question of whether the plaintiff was entitled to discovery of documents and testimony "relating to [defendant] Hospira's forecasts or business plans for its ANDA products[.]" Id. at 1. Specifically, Hospira argued that the discovery sought by the plaintiff was irrelevant because the plaintiff failed to "plead jurisdiction under the Declaratory Judgment statutes." Id. at 4. Special Master Poppiti rejected this argument, finding that the plaintiff was entitled to this discovery because (1) "[j]urisdiction must be based on diversity of citizenship or on a federal question[,]" not on the Declaratory Judgment Act, and (2) "[plaintiff] MedCo's failure to reference the Declaratory Judgment Act in its prayers for relief is not fatal to its pleading." Id. at 5.

Continue reading "Special Master Poppiti: Motion for Protective Order DENIED" »

In Xpoint Technologies, Inc. v. Toshiba Corp., et al., C.A. 09-628-SLR (D. Del. Apr. 8, 2011), Special Master Bechtle recently order plaintiff to supplement its infringement contentions, following the well-settled practice in this District that a plaintiff must specifically identify what products are accused in response to a properly served contention interrogatory. Plaintiff had previously refused to update its claim charts because it needed time to analyze recent discovery and confer with its experts. Id. at 3. Special Master Bechtle noted that “Toshiba is entitled to know what Toshiba products are contended by Xpoint to be infringement of Xpoint’s patents.” Id. If Xpoint has already specifically identified which Toshiba products are at issue in the litigation, “it should say so[, and if] it has not made those contentions yet, it should, and it should do so now.” Id. at 4. Special Master Bechtle also found that while plaintiff had an obligation to respond to Toshiba’s contention interrogatory with what products infringe and what claims and claim elements are infringed, plaintiff’s precise theory of infringement is “left to another day when the plaintiff includes in it’s expert reports and exert discovery the reasons, opinions and theories whey the identified productions and components of the defendant infringe on the patent or patents of the plaintiff.” Id. at 5.

Continue reading "Special Master Bechtle: Motion to supplement infringement contentions GRANTED" »

In Ladatech, LLC v. Illumina, Inc., No. 09-627-SLR (D. Del. Mar. 29, 2011), Special Master David A. White required defendants Illumina, Inc. and Solexa, Inc. (collectively "Illumina") to produce witnesses pursuant to Rule 30(b)(6) to testify on its behalf as to three topics set forth in LadaTech's notice of deposition.

Illumina had objected to the topics on grounds of legal privilege and relevance (and, for one of those topics, vagueness and ambiguity).

The first topic concerned Illumina's decision to purchase Solexa. The scope of this topic was limited by the Special Master to inquiries "reasonably calculated to lead to the discovery of admissible evidence." Id. at 7.

The second topic concerned "(a) the date Illumina first became aware of the patent-in-suit; (b) any prior art searches related to the patent-in-suit; (c) any analysis of the validity or enforceability of the patent-in-suit; (d) any analysis of possible infringement of the patent-in-suit . . . ; and (e) any communications with customers related to the patent-in-suit or this litigation." Id. at 8. The Special Master required Illumina to produce a witness for this topic despite Illumina's contention of "burden and expense[.]" Id. at 9.

The third topic concerned reexamination of the patent-in-suit. Illumina argued that this topic concerned the issue of willfulness -- an issue bifurcated from issues of infringement and invalidity by the Court's Scheduling Order. While the Special Master agreed that the topic may concern willfulness, the topic's "relevance to the initial phase of this litigation cannot be ignored." Id. at 10.

Continue reading "Special Master David A. White: Illumina Must Designate 30(b)(6) Witnesses" »

A recent decision by District of Delaware Special Master David A. White offers a rare precedent for disputes concerning the sequence of discovery. In the underlying infringement litigation, eBay objected to XPRT's 30(b)(6) notice on the ground that it prematurely sought a deposition before document discovery concluded. XPRT insisted that the deposition proceed, and appeared at the noticed time.

eBay did not appear, and XPRT followed with a motion to compel eBay to designate a witness. The Court agreed that, absent a request for judicial intervention, eBay should have produced its witness:

"While one party may prefer that discovery be taken in a specific manner, the Federal Rules provide otherwise, and the objecting party bears responsibility for seeking appropriate relief. . . . Similarly, where the parties disagree as to the orderly management of discovery and discussions have reached an impasse . . . , the objecting party must seek relief from the requested discovery. eBay took no affirmative action in this instance, thereby depriving the Court of the opportunity to determine whether such arguments warranted relief."

In other words, the party objecting to the deposition notice must preserve that objection by doing more than simply boycotting the deposition.

XPRT Ventures LLC v. eBay Inc., C.A. No. 10-595-SLR (D. Del. Mar. 30, 2011) (White, S.M.) (Letter Op.).