New Scheduling Order May Preview Future Delaware "Local Patent Rules"

26 March 2014 IP Litigation Current Blog

On March 24, 2014, Judge Sue L. Robinson of the District of Delaware adopted a new model Scheduling Order for patent cases litigated in her court. Apart from providing a comprehensive set of deadlines for virtually every aspect of a patent case, the Order calls for proactive judicial involvement through a series of pre-scheduled in-person status conferences. While other judges in that Court have had standing orders regarding certain aspects of patent cases, Judge Robinson’s recent model Order might be a preview of a more formalized set of “Local Patent Rules” for the District of Delaware to be adopted and used by all.

Building on Local Patent Rules From Other Districts

Judge Robinson’s Order proposes that dates be set for all major events in the case, including those traditionally provided for by the Local Patent Rules of other districts. Blank date fields are provided for parties to serve initial and final sets of claim charts and invalidity contentions, exchange lists of disputed claim terms, disclose an opinion of counsel defense where willfulness has been asserted, and file briefs on claim construction (including a sur-reply). The Order also contemplates that the court will set a date by which it will issue a final claim construction order.

The Order also requires that the patent holder disclose its damages model early in the case, and requires the accused infringer to respond with its sales data, a requirement similar to that of the recently announced “Track B” process for patent cases in the Eastern District of Texas.  The Order also sets a comprehensive timeline for briefing summary judgment motions.

Rather than assign default time periods for various deadlines, the Order provides attorneys with greater flexibility to negotiate timing. Punctuality and time management are important, however. For example, the Order requires that if any trial witnesses have not been deposed by the close of expert discovery, those witness must be identified and deposed within three months, with no more than 20 hours in aggregate allowed to each side. In a move that will curtail late night filings, the Order imposes a deadline of 8 p.m. Eastern for ECF submissions.

Encouraging Judicial Involvement Through Status Hearings

Judge Robinson’s Order is notable for the several in-person status hearings it requires at various stages of the litigation. The first of these hearings is conducted by the Magistrate Judge after the parties’ initial exchange of information about the patents and the accused technology, and is intended to allow the court to assess whether sufficient information has been shared to allow the parties to prepare initial claim charts and invalidity contentions. The second status hearing is scheduled for right after the claim construction order is issued to “determine whether any limits need to be imposed to focus the case prior to expert discovery.” A third hearing is then scheduled to identify “any issues regarding expert discovery.” Notably, the Order provides that “[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the court at this conference and the court deems a motion practice appropriate.” The Order also provides that no motions in limine may be filed, and that all evidentiary matters will instead be addressed at the pre-trial conference and/or during trial.

Preview of Changes to Come in the District of Delaware?

Judge Robinson’s letter announcing the adoption of her new Scheduling Order explains that it was the product of her involvement with the District of Delaware’s Patent Study Group (“PSG”), whose creation was announced only a few months ago in December 2013. As explained on the District Court’s website, the PSG solicited input from patent practitioners and in-house counsel with the goal of identifying potential “best practices” for the management of patent cases. Judge Robinson’s Order may therefore be a sign of things to come from other judges within the District of Delaware, or perhaps even a prelude to the ultimate adoption of a set of Local Patent Rules for the District of Delaware.

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