A Blog About Intellectual Property Litigation and the District of Delaware

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here:

  • 30 days after the Rule 16 conference, the patentee identifies accused products and asserted patents, and produce the file histories
  • 30 days later, the accused infringer produces "core technical documents related to the accused product(s)"
  • 30 days later, the patentee produces an "initial claim chart relating each accused product to the asserted claims each product allegedly infringes"
  • 30 days later, the accused infringer produces "initial invalidity contentions for each asserted claim," and the asserted invalidity references

The Default Standard expressly notes that the disclosures are "initial," and thus the parties "shall be permitted to supplement."

The Judges and Magistrate Judges have taken varying approaches to working this system into their cases (or not), as reflected in their form scheduling orders.

Chief Judge Stark and Judge Noreika (form orders below):

  • Permit the parties to modify timing of initial contentions;
  • Add requirements that (1) plaintiff disclose its damages model along with identifying accused products and asserted patents and (2) defendant disclose its sales figures along with its core technical documents.
  • Importantly, require dates for final infringement and invalidity contentions and final supplementation of lists of accused products and invalidity references, ensuring that supplementation after that date will require leave and a showing of good cause.

Judge Andrews: Takes a flexible, party-driven approach: "The parties may, if they choose, agree to a timetable for initial patent disclosures either as set forth in the Delaware Default Standard for Discovery or as agreed to by the parties, and the parties should set forth any such agreement in the scheduling order."

Judge Connolly:

  • Follows a much more prescriptive approach than the Default Standard, one that tracks the two-step initial disclosure requirements of the Northern District of California Patent Local Rules very closely.
  • Sets timing at 30 days after the scheduling order for infringement contentions, and 45 days thereafter for invalidity contentions.
  • Requires a showing of good cause to amend contentions.
  • Unclear if this approach owes anything to the relatively skeletal structure in the Default Standard, but it is a least an implicit acknowledgment that sequenced initial contentions in patent cases are useful.

Chief Magistrate Judge Thynge and Magistrate Judge Fallon: Do not reference initial patent disclosures in their form orders, but incorporate the Default Standard by reference.

Magistrate Judge Burke and Magistrate Judge Hall: Take the same approach as Judge Stark.

In practice, the Judges may permit some modification of the contention disclosure requirements in their form order (or in the Default Standard) to accommodate the unique facts and circumstances of a given case. But other than occasional disputes over timing between disclosures, parties are usually content to accept the extra work of early substantive contentions if they expect the other side to respond in kind.

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