A Blog About Intellectual Property Litigation and the District of Delaware

Scheduling Order

Last month, after her elevation to the bench as a district judge, Judge Hall issued a revised form scheduling order.

I think it's worth paying attention to what changes, even if the changes may not directly apply in your case, because it shows what the judges are focused on and thinking about.

Plus, it usually doesn't hurt to comply with a judge's newest procedures even if they are not required by the (outdated) scheduling order in your case.

So, what's new?

Stating the Meaning of "Plain and Ordinary Meaning"

Judge Hall adopted a set of additional requirements for joint claim construction briefs. Like all of our current judges, she uses Judge Andrews' procedure of a joint claim construction brief. But she added a requirement that the parties set forth constructions for all "plain and ordinary" meaning terms:

For each term in dispute, there should be a table setting forth the term in dispute and the parties’ competing constructions. If a party proposes a construction of a term to be its “plain and ordinary” meaning, the party must explain what that meaning is and how it differs from the other party’s proposed construction.

She also requires the parties to explain how resolution of the dispute is relevant to issues in the case:

The parties’ briefing must also explain how resolution of the dispute is relevant to an issue in the case.

This requirement generally tracks language that Judge Andrews added to his form order in 2023. The judges often want to know why constructions matter (and parties sometimes struggle to articulate an answer). But the practice is not new—Judge Robinson, for example, used to ask similar questions years ago.

Judge Hall also added a requirement for a joint appendix:

The parties shall include a joint appendix that contains a copy of the patent(s) at issue, all relevant intrinsic evidence, and any other evidence cited in the parties’ briefing.

She also adopted a provision that tracks Judge Connolly's requirement that, shortly before the Markman hearing (and after the briefing), the parties meet-and-confer about the joint claim chart and report back to the Court:

No earlier than __________________, 20__ [no earlier than three weeks before the claim construction hearing and no later than one week before the claim construction hearing], Delaware and Lead counsel (i.e., those attorneys that will be leading trial) for the parties shall meet and confer and file an amended Joint Claim Construction Chart that sets forth all agreed-upon constructions and all terms that remain in dispute. The meet and confer shall focus on an attempt to reach agreement on any remaining disputed terms where possible and to focus the dispute over the remaining terms in light of the Joint Claim Construction Brief. The amended Joint Claim Construction Chart shall be filed with a letter identifying by name each individual who participated in the meet and confer, when and how that meet and confer occurred, and how long it lasted. If no additional agreements on constructions were reached or if no dispute was narrowed, the letter shall so state.

Stipulation Information

Heads up, Delaware counsel! If there is one thing Delaware counsel do the most, it's filing stipulations.

(Just kidding. It's probably attending meet-and-confers. Or maybe filing notices of service!)

Anyway, any change to the stipulation requirements is a big deal for us here. Stipulations are something we file often, and the last thing you want to do is have the Court reject a stip because you didn't follow the Court's requirements.

So, going forward in Judge Hall cases, it's probably best to include a chart of all deadlines when amending any deadline—even if your case doesn't have the new scheduling order:

Amendments to the Scheduling Order. Any stipulation or other request to amend the scheduling order shall include a chart that lists each court-ordered event with a deadline/date (even if it is not being changed), the current deadline/date, and the new proposed deadline/date.

As far as I know, this new requirement is unique to Judge Hall cases. I don't recall it in any of the other judges' form orders.

A View on Inter Partes Review

This is a nice one! When a party files an IPR, there is often a question of how much to tell the Court. Obviously, the Court wants some level of updates. But does the judge want to know that an IPR was filed? Instituted? Decided? Appealed? Etc.

It may sound silly, but we Delaware counsel don't want to spam the Court with unnecessary notices—but, at the same time, we want to keep the Court informed. So the question of "do we file a notice?" comes up more often than you'd think.

Judge Hall's new form order resolves this nicely:

IPRs/PGRs. Any party asserting a patent must file a “Notice of IPR/PGR Event” within seven days of any of the following actions taken on that patent: petition for inter partes review/post grant review (regardless of whether a party filed the petition), institution decision, final written decision, appeal to the Federal Circuit, Federal Circuit decision. The Notice must list the action taken, the affected claims, the dates of any expected further action by the PTAB, and the status of all other pending IPRs/PGRs.

I like this. It tells you exactly when the Court wants to be updated, so you don't have to wonder. It even tells you exactly what to title it. Nice.

In practice, of course, this may result in a lot of notices to the Court on the docket. Some cases involves multiple IPRs. A case involving five IPRs—not an uncommon number—might have 25 notices on the docket by the time they are resolved. I also wonder if the Court wants similar notices for Ex Parte reviews.

I Can See the Future

So there you have it. Nothing momentous—no new SJ procedures, for instance—but there are certainly some things to keep in mind if you have a case before Judge Hall.

I'm sure attorneys will miss some of these, particularly the stipulation requirements. I don't even have to squint to see the post in our future where the Court rejects a stipulation for not listing all of the dates, and we link back to this post, saying "I guess that attorney doesn't read IP/DE"...

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