A Blog About Intellectual Property Litigation and the District of Delaware


Our status report, your honor? We're all good.
Our status report, your honor? We're all good. Sincerely Media, Unsplash

As we've mentioned in the past, in D. Del. patent cases, the Court often sets deadlines for submission of a "status report" (or, sometimes, a "joint status report" or "interim status report").

These orders can be somewhat vague. The Court doesn't always request "a joint status report regarding xyz." Instead, at times, it will issue a generic request for a status report, like this:

ORAL ORDER - IT IS HEREBY ORDERED that, on or before 9/23/2022, the parties shall submit a joint status report. ORDERED by Judge Maryellen Noreika on 9/16/2022.

To which the natural human response is "a status report about what?" Usually, though, it's pretty obvious from the docket. In the case above, C.A. No. 21-459-MN, the case is stayed pending appeal of another case, and the order follows a more than year-long delay with no action. The Court probably wants to know the status of the appeal.

The next question is often "how much detail does the Court want?" The answer seems to vary depending on the context. It's usually safe to assume that the Court does not want disputes or argument from the parties, and that it likely appreciates a concise statement of only what the Court needs to know to take action. But it can be hard to say for sure.

On that front, we got a data point on Friday. In Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1683-MN (D. Del.), the Court stayed the action pending an ex parte reexamination of the patents in suit. The Court had granted the motion, and ordered the parties to file a "status report" every three months:

Minute Entry for proceedings held before Judge Maryellen Noreika - Telephone Conference held on 3/12/2020. The . . . Motion to Stay . . . is GRANTED. The parties shall file a joint status report every three months, and a joint status report within one week of any final written decision issued by the USPTO. CASE STAYED.

The parties happily filed nine joint status reports over the course of the next two years, each about a page long and giving a one-sentence or so update on the status of each reexamination. The Court took no action, suggesting it found these reports acceptable

Finally, the reexaminations concluded and, last week, and the parties filed a short-and-sweet one-sentence status report letting the Court know:

Under this Court’s March 12, 2020 Order, staying this action pending resolution of co-pending ex parte reexamination proceedings for U.S. Patent Nos. 8,347,427; 9,297,150; and 9,749,792 (the “Patents-in-Suit”), Plaintiff Rein Tech, Inc. and Defendant Mueller Systems, LLC hereby submit this Tenth Joint Status Report and inform this Court that the reexamination proceedings involving the Patents-in-Suit are complete, and the parties are ready to proceed as this Court directs.

Turns out that was not enough info, and the Court wanted more:

ORAL ORDER re . . Status Report - Having reviewed the parties' status report, IT IS HEREBY ORDERED that, on or before 9/22/2022, the parties' shall file a more detailed status report that states the result of the reexamination proceedings for the patents-in-suit, how those results affect this litigation, and the parties' proposal for moving the case forward. ORDERED by Judge Maryellen Noreika on 9/15/2022. (dlw) (Entered: 09/15/2022)

So now you know. When using a joint status report to essentially ask the Court to lift a stay after a patent office proceeding, it probably doesn't hurt to let the Court know a bit more about what is going on.

Yes, This Is the Level of Detail at Which Delaware Counsel Operate

I imagine some of you may be thinking "did he just write a post about a one-sentence oral order asking for a more detailed status report"? Yes. Yes I did. I wanted to write it up because some readers will find it useful in the kinds of disputes that come up in patent cases (and, honestly, I want to be able to search the blog and find it next time the issue comes up!).

In patent litigation, particularly in multi-million- or billion-dollar competitor cases, it's not uncommon for parties to have significant back-and-forth about what goes in joint status reports, because neither party really knows what the Court wants to see. And even if Delaware counsel on both sides can agree, it may not be easy to convince other attorneys on the case.

In those situations, it's always helpful to have guidance from the Court. Keeping even a short order like this in your back pocket for future cases may help avoid a messy four-page "joint status report" with headings like "plaintiff's position" and "defendant's position" where the parties try to pre- or re-litigate every issue in the case. Nobody wins when that happens.

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