Judge Leonard P. Stark of the United States District Court for the District of Delaware has published new procedures that he will follow in non-ANDA patent cases filed on or after July 1 and assigned to him.  The new procedures, which Judge Stark previewed in a presentation to the District of Delaware’s Federal Bar Association last month, grew out of discussions that occurred as part of the District of Delaware's Patent Study Group (PSG).  The PSG, convened by District of Delaware Judges Stark and Sue L. Robinson, held more than 20 sessions earlier this year and included more than 15 hours of discussions with more than 120 attorneys.  As a result of the PSG, Judge Robinson issued a new model scheduling order in March, and now Judge Stark has followed suit with a new form scheduling order and accompanying procedures.  What follows is a non-exhaustive discussion of Judge Stark’s new procedures, which are available on the District of Delaware’s website, www.ded.uscourts.gov.

Judge Stark has listed a few “general principles” that guide his new procedures:

  • Early investiture of judicial resources will often lead to identification of the best schedule for each case, promoting overall efficiency;
  • Each patent case will initially be treated as its own case, even if it is related to a case or cases that have already been filed; and
  • The new procedures attempt to identify and reduce or eliminate the areas that generally provide the highest likelihood for lengthy delays.

Judge Stark’s new procedures begin at the outset of the case:  upon a non-ANDA patent case being assigned to Judge Stark, the Judge’s staff will docket a “Referral Order” within seven days, allowing many matters to be handled in the first instance by Magistrate Judge Christopher J. Burke.  All matters relating to scheduling and motions to dismiss, stay, or transfer venue will be referred to Magistrate Judge Burke.  For scheduling, Magistrate Judge Burke will have “full authority to work with the parties to craft a schedule appropriate to the particular circumstances of each patent case” and his “decisions with respect to scheduling are subject to reversal only for abuse of discretion.”

Within seven days of the entry of the Referral Order, the plaintiff(s) will be responsible for filing a Procedures Order.  Judge Stark has provided a form Procedures Order that sets forth certain procedures for scheduling, meet-and-confers, discovery disputes, and motions to amend and strike.  

Within 10 days after any defendant has filed a responsive pleading or a motion, the court will enter a Case Management Order requiring the parties to “meet and confer and discuss, in person and/or by telephone, each of the matters listed on the court’s Case Management Checklist.”  The Checklist provides for local and lead counsel for each party to discuss various issues, including discovery, claim construction, narrowing the case, related cases, remedies, amendments, supplementation, protective order, motions to dismiss/transfer/stay, summary judgment, and scheduling.  Attorneys for the parties are expected to make good faith efforts to discuss each of the topics listed.  Then, within 30 days, the parties “shall jointly file the Checklist and their proposed scheduling order (consistent with the Court’s Revised Patent Form Scheduling Order).”  Thereafter, the Court will schedule an in-person Case Management Conference/Rule 16 Scheduling Conference (“CMC”) to be held with Judge Stark or Magistrate Judge Burke on the record with both local and lead counsel for the parties present.  The CMC and scheduling process will not typically be deferred due to the pendency of motions to dismiss, transfer, or stay.

Judge Stark will now schedule trial upon entry of the scheduling order, setting the maximum number of trial days.  As for early trial, “the parties are reminded that if they unanimously consent to the jurisdiction of a Magistrate Judge, Judge Burke will almost always be able to proceed to trial more quickly than Judge Stark.”  For multiple related cases involving unrelated defendants, “the court will determine at some point (possibly as late as the pretrial conference) which defendant(s) will be tried first.”

Absent agreement among the parties, Judge Stark has indicated that the scheduling order will include dates for the exchange, in steps, of:  (1) plaintiff shall identify the asserted patent(s) and the accused product(s) that allegedly infringe and provide its damages model, along with a copy of the file history of each asserted patent; (2) defendant shall then produce the core technical documents related to the accused product(s) (including non-publicly available materials) and sales figures for the accused product(s); (3) plaintiff shall then produce an initial claim chart relating each known accused product to the asserted claims; (4) defendant shall then produce its initial invalidity contentions for each asserted claim, as well as known invalidating references; and (5) plaintiff and defendant shall eventually produce final contentions, respectively.

As for case narrowing, Judge Stark has indicated that he “will be highly receptive to reasonable proposals to reduce, at an appropriate stage or stages of a case, the number of: patents-in-suit, asserted claims, accused products, invalidating references, combinations of invalidating references, invalidity defenses, and claim construction disputes.”

Regarding claims constructionJudge Stark has “set an aspirational goal of issuing all Markman rulings within 60 days after a Markmanhearing.”  If Judge Stark determines that he will not be able to meet this goal in a given case, he will advise counsel.  Judge Stark will consider reasoned requests for staggered, or multiple, Markman hearings in appropriate cases.

As noted, the foregoing is not an exhaustive detailing of Judge Stark’s new procedures.  Judge Stark has also set new procedures, memorialized his existing practice, for summary judgment and Daubert briefing, pretrial orders, pretrial conferences, trial, and post-trial motions, among other things.  Patent litigators in the District of Delaware should become familiar with these changes and must be prepared to litigate in accordance with them in any new case assigned to Judge Stark.