A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Scheduling Orders

Quilt
Olga Ferina, Unsplash

Judge Williams has now posted his form scheduling orders on the District of Delaware website.

I took a look through his non-ANDA scheduling order, and it will be extremely familiar to Delaware practitioners. It mostly tracks Judge Noreika's form order.

Judge Williams' form order does, however, pull in portions from other Delaware judges' form scheduling orders. Here are some changes in Judge Williams' new form order as compared to Judge Noreika's form:

  • Discovery disputes and motions to amend or strike use language from Judge Stark's form scheduling order.
    • Parties sometimes get tripped up on this, and forget that motions to amend or strike have special rules—so keep that in mind if you have a Judge …

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 ...

As discussed in a previous post, Judge Noreika now requires that Markman briefing occur after the exchange of final infringement and invalidity contentions. But the Judge's oral orders setting forth that requirement did not expressly anchor the Markman process or the contention deadlines to any other dates in the overall schedule.

As we pointed out in our last post, it would make sense to set those deadlines late in the fact discovery period: "Although this order encourages parties to exchange claim construction positions 'early in the case,' it seems likely that parties will propose later Markman deadlines in addition to earlier final contention deadlines, to ensure that sufficient fact discovery has occurred to create meaningful final contentions."

Judge Noreika recently offered additional guidance along these lines regarding the relative timing of contentions, fact discovery, and claim construction...

The practice of supplementing contentions after the Court issues a claim construction ruling has become commonplace in this District. For the litigants, this timing is generally advantageous because it permits final contentions to be drafted with the Court's claim construction ruling in hand, and does not require the development of alternative positions that take into account each side's claim construction positions.

On the other hand, because the Markman process (in particular the identification of the terms in dispute) often occurs months before final contentions are due, it is not unusual for final detailed contentions to result in additional claim construction disputes, which the Court must resolve long after the initial Markman process.

Judge Noreika recently issued oral orders in several cases specifically to address this timing...

Form Scheduling Order
The Honorable Maryellen Noreika

Judge Noreika updated her form scheduling order yesterday. Here are the changes:

  • Separate deadlines for fact and expert discovery cut offs. Judge Noreika's old form orders, and several other judges' form scheduling orders, set a cut off date for "all" discovery and a deadline for substantial document production. But parties often also set a separate deadline for fact discovery, so that there is a clear delineation for when fact depositions and any remaining document production need to end before expert reports occur. This resolves that issue.
  • Joint claim chart changes. Intrinsic evidence must now be submitted in an appendix rather than with the joint claim chart. This may help with the common issue that …

Sit back, relax, and enjoy this long post about <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='United States District Court for the District of Delaware'>D. Del</a>. local rules...
Sit back, relax, and enjoy this long post about D. Del. local rules... XPS, Unsplash

The District of Delaware's local rules are available on the court's website, but they don't tell the whole story—there are a number of critical rules and practices set forth in other documents that are not as obvious on the site.

These can really trip you up if you're not familiar with D. Del. practice.

This post is geared towards mainly towards out-of-town or in-house counsel. It covers the basics and then lays out where to find some of those other important rules if you have a …

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

Markman briefing is often especially dense and time-consuming to absorb, and so traditionally each of the judges has had their own special procedures for Markman briefing set forth in their respective form scheduling orders.

With the additions of Judge Connolly and Noreika to the Delaware bench, however, a consensus formed around Judge Andrews' procedures—with four rounds of briefs that are served but not filed and then incorporated into a joint brief for the Court's review. Judge Stark is now the lone outcast, with his preference for 2 rounds of simultaneous briefing filed with the Court, a procedure that has been enshrined …

Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger)
Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger), Jacques Callot

After we talked last week about an unsuccessful effort to bypass the Court's discovery dispute procedures, I thought it might be interesting to talk about what those procedures are, for people who don't practice here day in and day out.

A discovery dispute is a special procedure that allows the parties to receive a (relatively) quick hearing to resolve issues that arise during discovery. Bringing a discovery dispute is the only way the Court allows the parties to address these kinds of discovery issues in a typical District of Delaware case (including both patent and non-patent cases).

Is This in the Rules or What?

Discovery disputes are not mentioned in the local rules, but all of the judges have discovery dispute procedures in their form scheduling orders. ...

The judges' form scheduling orders in D. Del. require deadlines for motions to amend, tracking FRCP 16(b)(3)(a), which says scheduling orders must limit the time to amend pleadings.

In an oral order on Friday, Judge Burke granted a motion to amend an answer that was filed on the day of the deadline set in the scheduling order.

He described how difficult it would be for a party to argue that a motion to amend was untimely when it was filed before the agreed-upon deadline:

It would be the unusual case where a Court had previously determined (at the parties' request) that amendment could be allowed by a certain date without causing harm to the case schedule, and yet …