IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
STANDING ORDER FOR SUMMARY
JUDGMENT PRACTICE IN PATENT
CASES ASSIGNED TO JUDGE CONNOLLY
A wise judge who once sat on this Court was fond of saying that winning
summary judgment in a patent case is like hitting a hole in one. 1 The judge’s point
was that the complexity, voluminous record, competing expert testimony, and
scorched-earth lawyering in the typical patent case make it almost inevitable that a
disputed material fact will preclude summary judgment.
The former judge’s observation about the slim chances for success in
summary judgment motion practice is well-known among many if not most of the
patent lawyers who regularly appear before this Court. You might think that word
of the judge’s comments would have bred restraint in summary judgment practice
in the patent cases we see, but the judge’s observation—or at least the logic behind
the observation—appears to have produced the opposite result. Patent lawyers
seem to have concluded that precisely because the probability of winning summary
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According to the Professional Golfers’ Association of America, the odds of
hitting a hole in one are 12,500 to 1. See https://www.pga.com/story/odds-of-a-
hole-in-one-albatross-condor-and-golfs-unlikely-shots.
judgment is so low, the solution is to file more motions to increase your odds of
success. Six or more summary judgment motions in a patent case is not unusual.
The proliferation of meritless summary judgment motions in patent cases is
substantially taxing the Court’s—and litigants’—time and resources. Like
Professor Miller, I find that
the process of making, responding, and adjudicating the
motion has become protracted, resource consumptive,
and, when granted, vulnerable to reversal on appeal. One
suspects that in many instances it might be more efficient
to try the case, raising the question of what really
motivates the widespread invocation of the motion.
Arthur R. Miller, What Are Courts for? Have We Forsaken the Procedural Gold
Standard?, 78 La. L. Rev. 739, 771–72 (2018). See also Steven S. Gensler & Lee
H. Rosenthal, Managing Summary Judgment, 43 Loy. U. Chi. L.J. 517, 521 (2012)
(“Exhaustively prepared summary judgment motions that address every possible
issue consume enormous resources—both from the parties and the court—and
much of it is simply a waste of time, effort, and money.”); Emery G. Lee III &
Thomas Willging, Fed. Judicial Ctr., Litigation Costs in Civil Cases: Multivariate
Analysis Report to The Judicial Advisory Committee on Civil Rules, 6, 8 (2010)
(finding that, all other things being equal, summary judgment increased litigation
costs by 24% for plaintiffs and 22% for defendants). The irony, of course, is that
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summary judgment practice was implemented in the federal courts to increase
efficiencies and conserve resources. See Zweig v. Hearst Corp., 521 F.2d 1129,
1135–36 (9th Cir. 1975) (“Summary judgment has, as one of its most important
goals, the elimination of waste of the time and resources of both litigants and the
courts[.]”), abrogated on other grounds by Hollinger v. Titan Cap. Corp., 914 F.2d
1564 (9th Cir. 1990).
Judges have long struggled to manage summary judgment practice. Some
judges have limited the number of motions that can be filed; others have required
litigants to submit letters to request permission to file a summary judgment motion.
I find neither of these restrictions very satisfying. I don’t favor placing a cap on
the number of summary judgment motions in a case, as I remain of the view that a
smartly-run summary judgment practice can avoid “unwarranted consumption of
public and private resources,” Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986).
And I find that the letters seeking permission to file a summary judgment motion
are simply condensed summary judgment briefs that save neither time nor
resources since they require the Court to address the merits of the requested
motion.
My form scheduling order for patent cases allows a party to file as many
summary judgment motions as it wishes. But I limit the total number of words that
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can be used in the briefing filed in support of the filed motion or motions. I also
require the parties to file competing statements of facts to help me determine as a
gatekeeping matter whether there is a disputed material fact. I had thought that
these requirements would deter the filing of meritless summary judgment motions.
I was wrong.
I have not given up hope, however, that an effectively managed summary
judgment practice can bring about efficiencies and cost savings. To that end, and
to further deter parties from filing meritless motions, I have decided to revise my
summary judgment practice. For any summary judgment motion filed by a party
after today, as a general rule, I will not review the motion if I have previously
denied a summary judgment motion filed by that party in the case. While I may
make an exception to the general rule (for example, if my decision to deny a
previous motion had been a close call), exceptions will be rare. Thus, parties
should presume that I will not consider a summary judgment motion if I have
denied a previous summary judgment motion.
Now therefore, at Wilmington on this Thirtieth day of April in 2021, it is
HEREBY ORDERED that effective immediately in all patent cases assigned to
me:
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1. A party that files more than one summary judgment motion shall number
each motion to make clear the order the party wishes the Court to
consider the motions in question. The first motion the party wishes the
Court to consider shall be designated #1, the second motion shall be
designated #2, and so on.
2. The Court will review the party’s summary judgment motions in the
order designated by the party. If the Court decides to deny a motion filed
by the party, barring exceptional reasons determined sua sponte by the
Court, the Court will not review any further summary judgment motions
filed by the party.
___________________________
Colm F. Connolly
United States District Judge
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