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Kind of a funny order from Judge Noreika last week:

ORAL ORDER Setting Telephonic Scheduling Conference - The Court has reviewed the parties' proposed scheduling order and is disappointed that the parties have not been able to come to agreement on some of the disputes, which at first blush seem silly . . .

Eos Positioning Systems, Inc. v. ProStar Geocorp, Inc., C.A. No. 22-201-MN, D.I. 27 (D. Del.).

What were the silly disputes, you ask? Here they are, according to the letter filed with the draft scheduling order (D.I. 26-1):

  • Whether to include "to the extent any exist" after "[defendant] shall produce sales figures for the accused product(s).”
  • Whether the case is properly characterized as a "3 patent case" or a "5 patent case" after the patentee offered a covenant not to sue to resolve a § 101 motion as to two of the five patents.
  • Whether the parties should get 105 deposition hours, or 80.
  • Whether the parties can offer expert declarations for Daubert and SJ briefing.

The parties submitted three and a half single-spaced pages of letter briefing on the above issues.

Which ones are the silly disputes?

Two of the disputes do seem pretty silly, and the third seems like something the parties could have reached agreement on.

"To the extent any [sales figures] exist": Silly. I'm not sure why the parties felt it was necessary to fight over this.

Think about it: the sales figure exist either exist or they do not. If they do not, the accused infringer is not going to produce them, and the patentee will bring a discovery dispute. Is the accused infringer seriously worried that the Court will order it to create sales figures that don't exist?

Likewise, if the figures do exist (perhaps in a database) but the accused infringer tries to rely on the "to the extent they exist" language to not produce them, does the patentee really think the Court will buy that?

"3 patent case": Silly. The parties are fighting over this in the context of the deposition hours dispute, but why not just say "we need to depose x people, including y inventors of z patents"?

80 vs. 105 deposition hours: This is a pretty typical dispute, but with numbers this close, the parties could just split the difference.

Expert declarations for Daubert briefing: This is a normal thing to have a dispute about, given that Judge Noreika's form order directs the parties to decide one way or the other. This one is not silly.

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