Intellectual Property Law

Mary Pat Thynge: Email Received at Eleventh Hour Need Not be Disclosed in Reply Brief Filed the Same Day

By Karen E. Keller, Andrew A. Lundgren et al.

When does a party have an obligation to inform the Court in its motion practice of ongoing negotiations between the parties? According to Magistrate Judge Mary Pat Thynge, not at the "eleventh hour."

Shortly before defendants in the underlying infringement action filed their reply brief on a letter-of-request motion, plaintiff emailed defendants as part of an ongoing discussion between the parties about the outstanding request for international discovery. In a later sur-reply, Pronova claimed that defendants ambushed it by failing to note this contemporary correspondence.

In a strongly worded statement, the Court refused to assign any impropriety to defendants' actions:

"[T[he court makes little of the fact that the defendants' reply, which was filed at 7:32 p.m. (EST) . . . makes no mention of revisions Pronova suggested in an email sent to the defendants that same day at 3:49 p.m. (EST). Pronova's argument that such action by the defendants is improper strikes the court as misguided, disingenuous, and evidencing, at best, an ignorance of the regularities of motion practice."

In effect, the Court continued, "[t]o do so would only encourage the sending of emails in the eleventh hour prior to filing deadlines, and the court sees no need to nurture such a perversion of this court's local rules."

Pronova Biopharma Norge AS v. Apotex Corp. et al., C.A. No. 09-286-SLR-MPT (D. Del. April 27, 2010) (Thynge, M.J.).

Full post as published by Delaware IP Law Blog on June 17, 2010 (boomark / email).