This may seem obvious to practiced litigators, but the pretrial order is no joke. It defines the scope of the claims and defenses at trial, and omitting things from it is a very risky proposition. Be careful.
That's why parties sometimes end up with ridiculously long pretrial orders—they don't expect anyone to read them front to back, but they want to make sure nothing is waived.
We saw another example of this yesterday in In Re: Ozempic (Semaglutide) Patent Litigation, C.A. No. 22-MD-3038-CFC (D. Del.). There, the defendants intentionally omitted its obviousness-type double patenting invalidity defense from the pretrial order, in light of a recent Federal Circuit case clarifying the rules regarding when a party can assert such a defense.
But the defendants wanted to preserve its right to argue the defense at trial if the Federal Circuit case is reversed. The parties filed a joint status report where the defendants asked the Court to delay trial, and stated that they "intend to present evidence" regarding their invalidity defense should the Federal Circuit decision be reversed.
Chief Judge Connolly denied that request for the simple reason that the defendants had waived their defenses by omitting them from the proposed pretrial order filed three days before their letter:
Defendants' decision to "not include[] any invalidity theories against the [#]343 patent in the Proposed Joint Pretrial Order," D.I. 406 at 2, constitutes a waiver of their right to challenge the validity of the #343 patent at the trial scheduled to begin on December 9, 2024.
Id., D.I. 359 at 1.
These defenses seem to have been on the defendants' minds, given that (according to the status report) they were negotiating a stipulation to preserve them. It looks like they would have been better off just including them in the pretrial order, contingent on the reversal of the Federal Circuit case.
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