New Patent Case Scheduling Order Seeks to Achieve Efficiencies in Delaware

This week, United States District Judge Sue L. Robinson issued a new Patent Case Scheduling Order dictating how patent cases will proceed in Her Honor’s Court.  The District of Delaware is second only to the Eastern District of Texas in the number of patent cases filed; both of which have nearly three times the number of patent cases as the third busiest district, the Central District of California. In order to help streamline the hundreds of patent cases assigned to Her Honor, Judge Robinson issued a new Patent Case Scheduling Order, requiring the identification of key issues earlier in the case, which should improve overall case efficiencies.

The District of Delaware, unlike the Eastern District of Texas, does not have any local patent rules. Instead, District of Delaware Judges typically issue their own form scheduling orders. For example, Chief Judge Gregory M. Sleet recently issued His Honor’s revised scheduling order for patent cases on February 25, 2014. Additionally, Delaware’s Default Standard for Discovery contains a section for the Initial Discovery in Patent Litigation that includes, among other things, the disclosure of the parties’ contentions.  However, until now, no one schedule in the District of Delaware has contained most, if not all, of the discovery provisions contained in other district court’s local patent rules.

While it doesn’t set specific timeframes tied to the Rule 16 conference, Judge Robinson’s Order does call for several disclosures in advance of an initial status conference before a Magistrate Judge. One of the more innovative requirements is that, in addition to the identity of the asserted patents and accused products, the plaintiff must also identify its damages model as part of its initial disclosures. By making plaintiff’s damages position part of the initial disclosures, the Order appears to bring Federal Rule 26(b)(2)(C)(iii) into play early in the case, allowing the parties and the court to properly balance the burden and expense of discovery with the amount in controversy. Judge Robinson’s Order also includes separate deadlines for the parties’ initial and final infringement and invalidity contentions. This provision should help alleviate the preclusion issues which have recently vexed litigants who have not sought leave to amend their preliminary contentions in a timely manner.

Further, pursuant to Judge Robinson’s Order, all motions to dismiss, to amend, and to transfer shall be resolved by a Magistrate Judge and, absent order of the court, no summary judgment motion may be filed in the absence of a jury demand. The Order also prohibits any Daubert motions or motions to strike expert testimony unless first discussed with the court during a scheduled status conference and the court deems the motion practice appropriate. Similarly, in lieu of motions in limine, the parties shall raise any evidentiary issues at the pretrial conference or during trial.

Judge Robinson’s Patent Case Scheduling Order appears to seek efficiencies early in the case by requiring the parties to disclose information to properly balance discovery needs with the amount in controversy. Also, it seeks additional efficiencies later in the case by curbing certain motion practices. As of now, the Patent Case Scheduling Order applies only to cases before Judge Robinson. It remains to be seen whether it will be implemented by other Judges and Magistrate Judges in the District of Delaware.

Gibbons will continue to monitor the implementation of Judge Robinson’s Patent Case Scheduling Order, and will report any further developments as they arise.

Charles H. Chevalier is an Associate in the Gibbons Intellectual Property Department. Christopher Viceconte, a Director in the Gibbons Business & Commercial Litigation Department, co-authored this post.
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