District of Delaware Judge Robinson Adopts New Patent Case Scheduling Orders | Practical Law

District of Delaware Judge Robinson Adopts New Patent Case Scheduling Orders | Practical Law

Judge Sue L. Robinson of the US District Court for the District of Delaware has adopted updated scheduling orders for patent cases with new procedures for the disclosure of infringement and invalidity contentions.

District of Delaware Judge Robinson Adopts New Patent Case Scheduling Orders

Practical Law Legal Update 2-562-3605 (Approx. 3 pages)

District of Delaware Judge Robinson Adopts New Patent Case Scheduling Orders

by Practical Law Intellectual Property & Technology
Published on 25 Mar 2014 • USA (National/Federal)
Judge Sue L. Robinson of the US District Court for the District of Delaware has adopted updated scheduling orders for patent cases with new procedures for the disclosure of infringement and invalidity contentions.
On March 23, 2014, Judge Sue L. Robinson of the US District Court for the District of Delaware adopted updated scheduling orders for patent cases. The orders are available on Judge Robinson's page on the court website and include new provisions concerning the disclosure of infringement and invalidity contentions.
The court's Patent Case Order for Scheduling requires the parties to discuss the following issues during their Federal Rule of Civil Procedure 26(f) scheduling conference:
  • The information the plaintiff needs to identify accused products and prioritize the asserted patents, claims and limitations.
  • The information the defendant needs to identify potential defenses and prioritize the prior art references and claim limitations.
The order also requires the parties to submit a proposed case management (scheduling) order to the court at least 24 hours before the scheduling conference with the court.
The court's updated Patent Case Scheduling Order is noteworthy because it includes new provisions regarding the disclosure of infringement and invalidity contentions. In particular, the case scheduling order provides the following sequence for the exchange of information and contentions concerning infringement and invalidity:
  • The plaintiff must:
    • identify the accused products and its damages model; and
    • produce each asserted patent's file history.
  • The defendant then must produce:
    • the core technical documents sufficient to show the operation of each accused product, including confidential manuals, product literature, schematics and specifications; and
    • each accused product's sales figures.
  • Afterwards, the Magistrate Judge will conduct a status conference to ensure that the initial exchanges were meaningful.
  • Next, the plaintiff must produce an initial infringement claim chart for each accused product.
  • The defendant then must produce:
    • its initial invalidity contentions for each asserted claim; and
    • each invalidating reference.
The schedule also includes deadlines for:
  • The exchange of final infringement and invalidity contentions.
  • The supplementation of:
    • the plaintiff's identification of accused products; and
    • the defendant's identification of invalidity references.
The scheduling order notes that the adequacy of the parties' contentions will be judged by the level of detail each party provides (i.e., the more detail a party provides, the more detail it shall receive).
The scheduling order also provides deadlines for the identification of claim terms requiring construction and claim construction briefing. It also notes that a proposed construction of "plain and ordinary meaning" is insufficient for a disputed term, because this effectively leaves claim construction in the hands of experts rather than the court.