On March 24th, Judge Sue L. Robinson of the District of Delaware issued a Patent Case Scheduling Order. With 304 currently open patent cases,1 Judge Robinson’s Order seeks to better streamline her dockets by implementing the following changes:
Plaintiff Identification of Damages Model with Initial Disclosures
In addition to the usual identification of accused products and patents, Judge Robinson’s Order requires a plaintiff to disclose its “damages model” as part of its initial disclosures.2 In response, defendants must produce sales figures for the accused products.3 Depending on plaintiff’s damages model, defendants may be better equipped to limit broad discovery requests under Fed. R. Civ. P. 26(b)(2)(C)(iii) due to excessive expense. And, defendants will have an opportunity to contest plaintiff’s damages model disclosure at a subsequent status conference with a magistrate judge.4 This does preclude bifurcation of damages from liability, however.
Initial and Final Infringement Contentions
The Order requires defendants, as part of their initial disclosures, to produce “core technical documents” sufficient to show how the accused products work.5 In turn, the plaintiff must produce initial infringement contentions in chart form.6 “Final” infringement contentions must be produced at a later date during fact discovery.7 By requiring initial infringement contentions early in the case, defendants should consider expending greater resources to search for “core technical documents” that could demonstrate non-infringement. Depending on the infringement allegations and accused technology, motions to compel a more complete response to plaintiff’s initial infringement contentions could narrow the scope of discovery early or even end the case for failure to comply with a court order. And, by requiring “Final” infringement contentions, defendants should no longer have to resort to motion practice to force uncooperative plaintiffs to supplement contentions after extensive fact discovery has been produced.
Deadline for Court to Issue Markman Order
The Order requires a Markman Order to issue on a specific date before the start of expert discovery.8 Previously, Judge Robinson typically conducted joint hearings on claim construction and summary judgment, which delayed the issuance of Markman Orders in her court. By requiring Markman Orders to issue earlier and before expert discovery, expert reports will no longer have to address competing claim constructions, and settlement discussions may prove fruitful earlier in her cases.
Magistrate Judge Responsible for Motions to Dismiss, Amend, and Transfer
The Order better utilizes magistrate judges by requiring them to resolve all motions to dismiss, amend, and transfer.9 This should expedite rulings on such motions before discovery burdens and expenses escalate.
Daubert Motions Permitted Only After Status Conference and No Filed Motions in Limine
Judge Robinson will no longer hear Daubert motions until they are discussed at an in-person status conference and deemed appropriate.10 And motions in limine cannot be filed; rather, evidentiary issues shall be heard at the pretrial conference and during trial (before and after the trial day).11 This will introduce further discovery efficiencies by curtailing excessive motion practice.
Overall, we believe Judge Robinson’s new Patent Case Scheduling Order benefits defendants facing frivolous patent infringement suits. A magistrate will expedite rulings on motions to dismiss and transfer, plaintiffs must develop their damages model in advance of an initial status conference, initial infringement contentions are required as part of initial disclosures, Markman Orders will issue on a set date, and Daubert motions and motions in limine will require in-person argument and approval by the Court. This should help defendants resolve meritless claims, and narrow the scope of discovery early and reduce litigation burdens and costs as a result.
1 Lex Machina (as of March 27, 2014). up
2 Order at § 1(c)(2). up
3 Order at § 1(c)(3). up
4 Order at § 1(c)(4) (requiring status conference to “ensure that the initial exchanges have been meaningful”). up
5 Order at § 1(c)(3). up
6 Order at § 1(c)(5). up
7 Order at § 1(f)(2). up
8 Order at § 5(h). up
9 Order at § 8(a). up
10 Order at § 6(d). up
11 Order at § 10. up