A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Scheduling Order

Francois Olwage, Unsplash

Sir Isaac Newton once wrote to Robert Hooke (Hooke’s Law): “If I have seen further, it is by standing on the shoulders of giants.” This quote was the cornerstone on which I built my 5th grade graduation speech, because it seemed to be an eloquent way to say “don’t reinvent the wheel”.

Judge Hatcher appears to be building on the knowledge accumulated by judges occupying the bench before her. In particular, Judge Hatcher’s new form Scheduling Order for patent cases seems strongly inspired by Judge Hall’s and Judge Burke’s form orders.

Here are a few differences . . .

  • Omits the paragraph on the unavailability of the ADR Process. This indicates that the Court expects litigants to …

Stop Sign
Luke van Zyl, Unsplash

We've talked about how it's generally understood that parties can agree to modify certain deadlines in the District of Delaware without a stipulation, such as discovery response deadlines, deposition dates before the close of fact discovery, or deadlines under the Default Standard.

We were careful to exclude depositions occurring after the close of fact discovery from that list. After all, the fact discovery deadline is set by court order. Thus, parties often stipulate to take fact depositions after the close of fact discovery.

An opinion from Judge Williams yesterday held that these stips are unnecessary, and the parties can take depositions after the close of fact discovery without any stip to that effect:

ORAL ORDER: The Court has reviewed the Stipulation to take deposition outside fact discovery ...

Rule 16(b)(4) is deeply ingrained in the mind, body and soul of every DE lawyer. To modify the scheduling order, one must show good cause. Good cause, in turn, hinges upon the diligence of the movant.

More than 1,000 orders in DE patent cases analyze whether a party was diligent. Some have praised the herculean efforts of the parties (not a lot of those, honestly), while others cursed their lazy hides for daring hobble up the Courtroom steps (somewhat more common).

"Diligence" AI-Generated, displayed with permission

I have analyzed every single one to determine how often the Court found diligence.

I'm sorry that was a joke. We have a GoFundMe for an intern. Please donate if you would like that level of analysis. Instead I have looked at the last 10 such opinions and orders. Of those, a scant 3 found the movant diligent and granted the requested schedule extension, whilst 7 found the movant had delayed and denied the request.

Obviously this is a fact dependent inquiry, but it's something to consider the next time you move for an extension.

Delaware regulars will know that a stipulation to extend a deadline will—with certain limited exceptions—usually be granted as a matter of course. Moreover, the common wisdom is that one ought to agree to a short extension of a discovery or briefing deadline, absent some strong reason not to. Such is the DELAWARE WAY (TM).

Sometimes, though, a request for an extension just rubs you the wrong way. Maybe they ask late, maybe they jerked you around when you asked for an extension last time, maybe you saw them double-dip a chip at the last bar mixer and you just can't get over it. In those times, it's nice to be able to point to case where the court denied a …

In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.

AI-Generated, displayed with permission

And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).

The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.

This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!

All this and more on next weeks episode of IPDE! (Batman theme plays)

System Update
Clint Patterson, Unsplash

Judge Williams issued a new form scheduling order last week. Updating his previous orders, he primarily added text mirroring Judge Connolly's procedures that require parties to rank summary judgment motions (where if any motion is denied, lower-ranked motions will not be considered):

(d) Ranking of Summary Judgment Motions. Any party that files more than one summary judgment motion shall number each motion to indicate the order in which the party wishes the Court to review its pending motions. The first motion the party wishes the Court to consider shall be designated #1,the second motion shall be designated #2, and so on. The Court will review the party's summary judgment motions in the order designated by …

Artem Beliaikin, Unsplash

This is a way of drafting scheduling order deadlines I haven't seen before. In Novarad Corp. v. Medivis, Inc., C.A. No. 21-1447-VAC-MPT (D. Del.), the parties initially agreed to a scheduling order that included a deadline for document production to be "substantially complete."

Many (maybe all) of the judges' form scheduling orders include a deadline for substantial completion of document production. Parties generally understand the substantial completion deadline to mean the production of enough documents that fact depositions can begin.

Exactly how many documents that is can be an occasional source of disagreement. There is not a lot of well-known precedent about exactly what proportion of documents must be produced before the substantial …

Certainty > Ambiguity
Certainty > Ambiguity Jon Tyson, Unsplash

Confusion over a deadline can lead to missed deadlines. But when parties draft the initial scheduling order in an action, there are at least two common ways that ambiguities may arise, both of which seem easy to eliminate.

“# Days After the Scheduling Conference” is Ambiguous If No Scheduling Conference Takes Place

The first common source of ambiguity in recent scheduling orders is dates scheduled to occur a set number of days after the scheduling conference.

Why is that a problem? Well, we have noticed a growing trend in which the Court issues Scheduling Orders without a Scheduling Conference. Instead, the Court may adjust any proposed dates by crossing them out on the proposed order, writing in the Court’s preferred date(s), and issuing the adjusted order on the docket. Thus, the parties may have a date set “30 days after the Scheduling Conference”—but there was no scheduling conference.

When that happens, the correct result is unclear. Should the deadline be interpreted to mean 30 days from when the Rule 16 Conference was scheduled to occur? Or 30 days from the Scheduling Order? Or should ...

Setyaki Irham, Unsplash

I was talking to my fellow blogger Andrew the other day, when we had the following exchange:

Andrew: Greetings treasured friend and colleague! Have you noticed that Judge Andrews hasn't been requiring parties to submit scheduling orders whilst motions to dismiss are pending?

Me: Truly?

Andrew: Indubitably, I would not jest on such a matter! I have, in fact, just confirmed it by reviewing his 10 most recent orders on motions to dismiss with my own eyes.

Me: Well I cannot gainsay such thorough research. But what of the others? Do Judges Noreika and Connolly decide motions to dismiss before requiring the parties to submit a proposed schedule?

Andrew: I'm certain I don't know, but certainly …

Silly dog with googly eyes
Jane Almon, Unsplash

Kind of a funny order from Judge Noreika last week:

ORAL ORDER Setting Telephonic Scheduling Conference - The Court has reviewed the parties' proposed scheduling order and is disappointed that the parties have not been able to come to agreement on some of the disputes, which at first blush seem silly . . .

Eos Positioning Systems, Inc. v. ProStar Geocorp, Inc., C.A. No. 22-201-MN, D.I. 27 (D. Del.).

What were the silly disputes, you ask? Here they are, according to the letter filed with the draft scheduling order (D.I. 26-1):

  • Whether to include "to the extent any exist" after "[defendant] shall produce sales figures for the accused product(s).”
  • Whether the case is …