Judge Sue L. Robinson, the longest-tenured judge in the District of Delaware, changed her procedures and form scheduling order (hereafter, the Revised Order) last week.
Judge Robinson has often compared herself to an ocean liner (changing course slowly and incrementally). Given her fundamentally careful, gradual methods, such a procedural change is substantial.
These changes stem from the recently-conducted Patent Study Group (PSG) that Judges Robinson and Leonard Stark spearheaded, and that DLA Piper participated in, regarding Delaware-specific IP litigation issues, including the effect of non-practicing entities (NPEs). Below, we outline those changes most important to businesses and discuss the ramifications on patent litigation practice in the District of Delaware.
Importantly, this Revised Order will affect not only future patent suits in front of Judge Robinson but also her current cases. In addition to new scheduling orders, all non-ANDA scheduling orders entered in the past six months will conform to this Revised Order, subject to the parties’ revisions and agreement.
The Revised Order places a higher burden on parties in the initial stages of discovery and imposes continual judicial oversight to ensure that that the parties are meaningfully progressing the litigation. Specifically, the Revised Order now requires:
- Four rounds of initial patent disclosures that largely mirror the Paragraph 4(a)-4(d) disclosures of the Delaware Default ESI Standard already in place. Judge Robinson’s disclosures require as follows:
- First, plaintiff identifies the accused product(s), the asserted patent(s), and its damages model
- Second, defendant produces core technical documents related to the accused product(s) “sufficient to show how the accused product works” as well as sales figures for the accused product(s)
- After this second round of disclosures, the assigned Magistrate Judge will hold a status conference “to ensure that the initial exchanges have been meaningful”
- Third, plaintiff produces initial claim charts and
- Fourth, defendant produces initial invalidity contentions.
- Deadlines for final infringement contentions, final invalidity contentions, and the supplementation of accused products and invalidity references.
- A rule that, at the Markman claim construction hearing, parties cannot propose a “plain and ordinary meaning” construction for disputed terms.
- In-person status conferences to discuss expert discovery and Daubert motions.
This Revised Order may be a harbinger of things to come. While the other District of Delaware judges have not (yet) made similar revisions, we anticipate that these will not be the only practice modifications to arise from the PSG.