Judge Stark Issues New Procedures for Patent Cases

June 18, 2014

Publication| Intellectual Property

As first announced at an event held on May 13, 2014, by the Intellectual Property Section of the Delaware Chapter of the Federal Bar Association, Judge Leonard P. Stark of the United States District Court for the District of Delaware has today issued a new form of scheduling order and pretrial order for patent cases, as well as revised procedures for management of patent cases and a checklist of items for counsel to discuss before the initial case management conference. Unless otherwise ordered by the Court, the new procedures apply to cases filed on or after July 1, 2014.

Judge Stark’s new forms are the result of feedback he received when he and Judge Robinson conducted interviews in connection with the District of Delaware’s Patent Study Group. The revised procedures indicate the Court’s attempt to use the “early investment of judicial resources” to promote “overall efficiency in the processing of cases.” In order to accomplish this, Judge Stark also intends to refer certain matters to Magistrate Judge Christopher J. Burke.

The major highlights of each form are listed below.

The new form of patent scheduling order includes:

  • Deadlines for final infringement contentions, final invalidity contentions, and final identification of accused products and invalidity references.
  • Motions to amend and motions to strike to be raised by letter briefs in a manner similar to the discovery dispute procedure.
  • Certification by joint letter that Delaware counsel and lead counsel have met and conferred by telephone, including an identification of dates and participants, before asking the Court to resolve discovery disputes.
  • For all of each side’s dispositive motions, the parties may have 40 pages for the opening brief, 40 pages for the answering brief, and 20 pages for the reply brief in total; if Daubert motions are filed, the total number of pages—including Daubert briefing—increases to 50, 50, and 25 pages.

The Revised Procedures for Managing Patent Cases (which do not apply to ANDA cases) include:

  • Initially, the Court intends to treat each case individually whether filed as a related case or not.
  • Automatic referral to Magistrate Judge Christopher J. Burke of all scheduling matters and motions to dismiss, stay, or transfer.
  • Case Management Order to be issued within 10 days of the filing of a responsive pleading or motion by any party.
  • Within 30 days of the issuance of the Case Management Order, the parties must submit the Case Management Checklist (discussed below) and proposed scheduling order.
  • In-person Case Management/Rule 16 conferences.
  • Judge Stark indicates that he will be “highly receptive” to reasonable proposals to limit the number of patents, asserted claims, accused products, invalidating references, combinations of invalidating references, invalidity defenses, and claim construction disputes.  

The Case Management Checklist requires the parties to discuss a wide range of topics, including:

  • The one or two most important claim terms and whether early claim construction of those terms would be beneficial.
  • What revenue information the plaintiff needs to value the case, the kinds of damages sought, and how soon the defendant could produce revenue information.
  • Whether early summary judgment motions on fully or mostly case-dispositive issues may be appropriate, whether other parts of the case should be stayed pending resolution of the motion, and what the movant would give up in exchange for early summary judgment.

The new form of pretrial order for patent cases includes:

  • Presumptive order of proof (infringement and damages, invalidity and response on infringement and damages, response on invalidity and rebuttal on infringement and damages, and rebuttal on invalidity).
  • Indication of the subject matter on which the parties will ask the Court to recognize their expert witnesses as having expertise.
  • Whether the Court should resolve objections to expert testimony during trial (with time to be charged to their total hours) or after trial (on condition that the party eliciting improper testimony will pay the other side’s costs should a new trial be required).
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