A Blog About Intellectual Property Litigation and the District of Delaware

This morning I woke up and everything hurt. It was cold, and my old house made a sound like a sad kazoo with every mournful gust of wind. I'm still working out the physics of that last bit. As I sat down to my porridge, I admitted to myself that I was old.

More than usually cursed art (FYI, it's supposed to be a kazoo)
AI-Generated, displayed with permission


All this is to say that I felt like nothing was going my way. So I empathized with the filers of a seemingly simple stipulation in Cleveland Medical Devices, Inc. v. ResMed Inc., C.A. No. 22-794-GBW.

The scheduling order there differed from Judge Williams' form in that it added a specific provision for the reduction of prior art, limiting the number of claims asserted for each patent, as well as the number of prior art references for each patent:

The parties shall reduce the number of asserted claims and asserted prior art used for anticipation and obviousness combinations as follows:
• On January 9, 2023 . . . Plaintiff shall serve an Initial Election of Asserted Claims, which shall identify no more than 64 total asserted claims, and no more than 10 asserted claims per patent.
• On February 8,2023 . . ., Defendant shall serve an Initial Election of Prior Art, which shall identify no more than 64 total references and no more than 10 references per patent that can be used for anticipation or as combinations for obviousness . . .

Id. at D.I. 41 Paragraph 3(g).

Later, the parties had a dispute over the per-patent cap on prior art references, so they filed a stipulation removing that cap, but keeping the overall limits:

IT IS HEREBY STIPULATED AND AGREED by the undersigned counsel for the Parties, subject to the approval of the Court, that the Scheduling Order (D.I. 40) is hereby modified to remove the Per Patent Cap related to Defendant’s initial election of prior art, Plaintiff’s final election of asserted clams, and Defendant’s final election of prior art

Id. at D.I. 51.

The surprise came when Judge Williams denied the stipulation, stating simply "The parties' exchanges shall conform to the per-patent cap as set forth in the Scheduling Order." Id. at D.I. 56 (D. Del. Mar. 9) (Oral Order).

Normally, it's no surprise to see the court balk at a stipulation that changes something from the Court's form scheduling order. It would not be surprising, for example, in an ANDA case before Judge Connolly where the form scheduling order limits the plaintiff to asserting no more than 10 claims per patent.

Here, however, the form scheduling order was silent on claim narrowing. This may be a sign that we can expect a form narrowing provision to appear in Judge Williams scheduling order soon. It could also simply mean that the Court is not inclined to go back on the seemingly reasonable limits the parties have already agreed to. I have no idea, I'm just an old man with a blog.

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