IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
[PLAINTIFF], )
)
Plaintiff, )
)
v. ) C.A. No. 00-0000 (GBW)
)
[DEFENDANT], )
)
Defendant. )
PATENT FORM SCHEDULING ORDER (ANDA)
This day of , 20_____, the Court having
conducted an initial Rule 16(b) scheduling conference pursuant to Local Rule
16.1(b), and the parties having determined after discussion that the matter cannot
be resolved at this juncture by settlement, voluntary mediation, or binding
arbitration;
IT IS HEREBY ORDERED that:
1. Rule 26(a)(l) Initial Disclosures and E-Discovery Default Standard.
Unless otherwise agreed to by the parties, the parties shall make their
initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(l) within five
(5) days of the date this Order is entered by the Court. If they have not already
done so, the parties are to review the Court’s Default Standard for Discovery,
Including Discovery of Electronically Stored Information (“ESI”), which is posted
at http://www.ded.uscourts.gov (see Other Resources, Default Standard for
Discovery) and is incorporated herein by reference.
2. Joinder of Other Parties and Amendment of Pleadings. All motions to
join other parties, and to amend or supplement the pleadings, shall be filed on or
before . Unless otherwise ordered by the Court, any motion to join a party or
motion to amend the pleadings shall be made pursuant to the procedures set forth
in Paragraphs 3(g) and 4.
3. Discovery. Unless otherwise ordered by the Court or agreed to by
parties, the limitations on discovery set forth in the Federal Rules of Civil
Procedure shall be strictly observed.
(a) Fact Discovery Cut Off. All fact discovery in this case shall be
initiated so that it will be completed on or before .
(b) Document Production. Document production shall be
substantially complete by .
(c) Requests for Admission. A maximum of ___ requests for
admission are permitted for each side.
(d) Interrogatories.
i. A maximum of ___ interrogatories, including contention
interrogatories, are permitted for each side.
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ii. The Court encourages the parties to serve and respond to
contention interrogatories early in the case. In the absence of agreement among
the parties, contention interrogatories, if filed, shall first be addressed by the party
with the burden of proof. The adequacy of all interrogatory answers shall be
judged by the level of detail each party provides (i.e., the more detail a party
provides, the more detail a party shall receive).
(e) Depositions.
i. Limitation on Hours for Deposition Discovery. Each
side is limited to a total of _____ hours of taking testimony by deposition upon oral
examination.
ii. Location of Depositions. Any party or representative
(officer, director, or managing agent) of a party filing a civil action in this district
court must ordinarily be required, upon request, to submit to a deposition at a place
designated within this district. Exceptions to this general rule may be made by
order of the Court. A defendant who becomes a counterclaimant, cross-claimant,
or third-party plaintiff shall be considered as having filed an action in this Court
for the purpose of this provision.
(f) Disclosure of Expert Testimony.
i. Expert Reports. For the party who has the initial burden
of proof on the subject matter, the initial Federal Rule of Civil Procedure 26(a)(2)
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disclosure of expert testimony is due on or before . The supplemental
disclosure to contradict or rebut evidence on the same matter identified by another
party is due on or before . Reply expert reports from the party with the
initial burden of proof are due on or before . No other expert reports will be
permitted without either the consent of all parties or leave of the Court. Along
with the submissions of the expert reports, the parties shall advise of the dates and
times of their experts’ availability for deposition.
ii. Objections to Expert Testimony. To the extent any
objection to expert testimony is made pursuant to the principles announced in
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), as
incorporated in Federal Rule of Evidence 702, it shall be made by motion no later
than fourteen (14) days after the close of expert discovery, unless otherwise
ordered by the Court. Briefing will be presented pursuant to the Court’s Local
Rules.
iii. Expert Discovery Cut Off. All expert discovery in this
case shall be initiated so that it will be completed on or before .
(g) Discovery Matters and Disputes Relating to Protective Orders.
i. Any discovery motion filed without first complying with
the following procedures will be denied without prejudice to renew pursuant to
these procedures.
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ii. Should counsel find, after good faith efforts – including
verbal communications among Delaware and Lead Counsel for all parties to the
dispute – that they are unable to resolve a discovery matter or a dispute relating to
a protective order, the parties involved in the discovery matter or protective order
dispute shall submit a joint letter in substantially the following form:
Dear Judge Williams:
The parties in the above-referenced matter
write to request the scheduling of a discovery
teleconference.
The following attorneys, including at least
one Delaware Counsel and at least one Lead
Counsel per party, participated in a verbal meet-
and-confer (in person and/or by telephone) on the
following date(s): __________________
Delaware Counsel: __________________
Lead Counsel: __________________
The disputes requiring judicial attention are
listed below:
[provide here a non-argumentative list of disputes
requiring judicial attention]
iii. On a date to be set by separate order, generally not less
than forty-eight (48) hours prior to the conference, the party seeking relief shall file
with the Court a letter, not to exceed three (3) pages, outlining the issues in dispute
and its position on those issues. On a date to be set by separate order, but generally
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not less than twenty-four (24) hours prior to the conference, any party opposing the
application for relief may file a letter, not to exceed three (3) pages, outlining that
party's reasons for its opposition.
iv. Each party shall submit two (2) courtesy copies of its
discovery letter and any attachments.
v. Should the Court find further briefing necessary upon
conclusion of the telephone conference, the Court will order it. Alternatively, the
Court may choose to resolve the dispute prior to the telephone conference and will,
in that event, cancel the conference.
4. Motions to Amend.
(a) Any motion to amend (including a motion for leave to amend) a
pleading shall NOT be accompanied by an opening brief but shall, instead, be
accompanied by a letter, not to exceed three (3) pages, describing the basis for the
requested relief, and shall attach the proposed amended pleading as well as a
"blackline" comparison to the prior pleading.
(b) Within seven (7) days after the filing of a motion in compliance
with this Order, any party opposing such a motion shall file a responsive letter, not
to exceed five (5) pages.
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(c) Within three (3) days thereafter, the moving party may file a
reply letter, not to exceed two (2) pages, and, by this same date, the parties shall
file a letter requesting a teleconference to address the motion to amend.
5. Motions to Strike.
(a) Any motion to strike any pleading or other document shall NOT
be accompanied by an opening brief but shall, instead, be accompanied by a letter,
not to exceed three (3) pages, describing the basis for the requested relief, and shall
attach the document to be stricken.
(b) Within seven (7) days after the filing of a motion in compliance
with this Order, any party opposing such a motion shall file a responsive letter, not
to exceed five (5) pages.
(c) Within three (3) days thereafter, the moving party may file a
reply letter, not to exceed two (2) pages, and, by this same date, the parties shall file
a letter requesting a teleconference to address the motion to strike.
6. Technology Tutorials. Unless otherwise ordered by the Court, the
parties jointly shall provide the Court, no later than the date on which the Joint
Claim Construction Chart is due, a tutorial on the technology at issue. In that
regard, the parties shall jointly submit to the Court an electronic tutorial of not
more than thirty (30) minutes. The tutorial should focus on the technology in issue
and educate the Court about the same and should not be used for argument. As to
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the format selected, the parties should confirm the Court’s technical abilities to
access the information contained in the tutorial (“mpeg”, “quicktime”, etc.). The
parties may choose to file their tutorial under seal, subject to any protective order
in effect.
7. Claim Construction Issue Identification. On or before , the
parties shall exchange a list of those claim term(s)/phrase(s) that they believe need
construction and their proposed claim construction of those term(s)/phrase(s). On
or before _____, the parties shall respond to and provide their proposed
construction for any term(s)/phrase(s) presented by the other side for which the
party did not initially provide a construction. These documents will not be filed
with the Court. Subsequent to exchanging that list, the parties will meet and confer
to prepare a Joint Claim Construction Chart to be filed no later than . The
Joint Claim Construction Chart, in Word format shall be e-mailed simultaneously
with filing to
[email protected]. The parties' Joint Claim Construction
Chart should identify for the Court the term(s)/phrase(s) of the claim(s) in issue,
and should include each party's proposed construction of the disputed claim
language with citation(s) only to the intrinsic evidence in support of their
respective proposed constructions. A copy of the patent(s) in issue as well as those
portions of the intrinsic record relied upon shall be submitted with this Joint Claim
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Construction Chart. In this joint submission, the parties shall not provide
argument.
8. Claim Construction Briefing. Plaintiff shall serve, but not file, its
opening brief, not to exceed 5,000 words, on . Defendant shall serve, but not
file, its answering brief not to exceed 7,500 words, on . Plaintiff shall serve,
but not file, its reply brief, not to exceed 5,000 words, on . Defendant shall
serve, but not file its sur-reply brief, not to exceed 2,500 words, on . No
later than , the parties shall file a Joint Claim Construction Brief. The parties
shall copy and paste their unfiled briefs into one brief, with their positions on each
claim term in sequential order, in substantially the form below.
JOINT CLAIM CONSTRUCTION BRIEF
I. Agreed-Upon Constructions
II. Disputed Constructions
[TERM 1]
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s Reply Position
4. Defendant’s Sur-Reply Position
[TERM 2]
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s Reply Position
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4. Defendant’s Sur-Reply Position
If there are any materials that would be submitted in an index, the parties shall
submit them in a Joint Appendix.
9. Hearing on Claim Construction. Beginning at ___ .m. on , the
Court will hear argument on claim construction. The parties shall notify the Court,
by joint letter submission, no later than the date on which their answering claim
construction briefs are due: (i) whether they request leave to present testimony at the
hearing; and (ii) the amount of time they are requesting be allocated to them for the
hearing.
Provided that the parties comply with all portions of this Scheduling Order,
and any other orders of the Court, the parties should anticipate that the Court will
issue its claim construction order within sixty (60) days of the conclusion of the
claim construction hearing. If the Court is unable to meet this goal, it will advise the
parties no later than sixty (60) days after the conclusion of the claim construction
hearing.
10. Interim Status Report. On , counsel shall submit a joint letter to
the Court with an interim report of the matters in issue and the progress of
discovery to date. Thereafter, if the Court deems it necessary, it will schedule a
status conference.
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11. Supplementation. Absent agreement among the parties, and approval
of the Court,
(a) no later than the patentee must finally supplement the
identification of all accused products and serve final infringement
contentions; and
(b) no later than the accused infringers must finally
supplement the identification of all invalidity references and serve final
invalidity contentions.
12. Case Dispositive Motions. Absent agreement between the parties, and
prior approval from the Court, the Court will not hear case dispositive motions in
ANDA cases.
13. Applications by Motion. Except as otherwise specified herein, any
application to the Court shall be by written motion filed with the Clerk. Any non-
dispositive motion should contain the statement required by Local Rule 7.1.1.
14. Motions in Limine. Motions in limine shall not be separately filed.
All in limine requests and responses thereto shall be set forth in the proposed
pretrial order. Each SIDE shall be limited to three (3) in limine requests, unless
otherwise permitted by the Court. The in limine request and any response shall
contain the authorities relied upon; each in limine request may be supported by a
maximum of three (3) pages of argument, may be opposed by a maximum of three
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(3) pages of argument, and the side making the in limine request may add a
maximum of one (l) additional page in reply in support of its request. If more than
one party is supporting or opposing an in limine request, such support or
opposition shall be combined in a single three (3) page submission (and, if the
moving party, a single one (1) page reply), unless otherwise ordered by the Court.
No separate briefing shall be submitted on in limine requests, unless otherwise
permitted by the Court.
15. Pretrial Conference. On , the Court will hold a pretrial
conference in Court with counsel beginning at ___ .m. Unless otherwise ordered
by the Court, the parties should assume that filing the pretrial order satisfies the
pretrial disclosure requirement of Federal Rule of Civil Procedure 26(a)(3). The
parties shall file with the Court the joint proposed final pretrial order in compliance
with Local Rule 16.3(c) and the Court’s Preferences and Procedures for Civil
Cases not later than seven (7) days before the pretrial conference. Unless
otherwise ordered by the Court, the parties shall comply with the timeframes set
forth in Local Rule 16.3(d)(1)-(3) for the preparation of the joint proposed final
pretrial order.
The parties shall provide the Court two (2) courtesy copies of the joint
proposed final pretrial order and all attachments. The proposed final pretrial order
shall contain a table of contents and the paragraphs shall be numbered.
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16. Application to Court for Protective Order. Should counsel find it will
be necessary to apply to the Court for a protective order specifying terms and
conditions for the disclosure of confidential information, counsel should confer and
attempt to reach an agreement on a proposed form of order and submit it to the
Court within ten (10) days from the date the Court enters this Order. Should
counsel be unable to reach an agreement on a proposed form of order, counsel
must follow the provisions of Paragraph 3(g) above.
Any proposed protective order must include the following paragraph:
Other Proceedings. By entering this order and limiting
the disclosure of information in this case, the Court does
not intend to preclude another court from finding that
information may be relevant and subject to disclosure in
another case. Any person or party subject to this order
who becomes subject to a motion to disclose another
party’s information designated “confidential” [the parties
should list any other level of designation, such as “highly
confidential,” which may be provided for in the
protective order] pursuant to this order shall promptly
notify that party of the motion so that the party may have
an opportunity to appear and be heard on whether that
information should be disclosed.
17. Papers Filed Under Seal. In accordance with section G of the Revised
Administrative Procedures Governing Filing and Service by Electronic Means, a
redacted version of any sealed document shall be filed electronically within seven
(7) days of the filing of the sealed document.
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18. Courtesy Copies. The parties shall provide to the Court two (2)
courtesy copies of filings (i.e., briefs, appendices, exhibits, declarations,
affidavits etc.). Courtesy copies of appendices and exhibits should include hard
tabs. This provision also applies to papers filed under seal.
19. ADR Process. This matter may be referred to a magistrate judge to
explore the possibility of alternative dispute resolution if the parties jointly request
such a referral.
20. Trial. This matter is scheduled for a ______ day bench trial beginning
at 9:30 a.m. on , with the subsequent trial days beginning at 9:30 a.m. The
trial will be timed, as counsel will be allocated a total number of hours in which to
present their respective cases.
21. Post-Trial Briefing. The parties will address the post-trial briefing
schedule and page limits in the proposed final pretrial order.
The Honorable Gregory B. Williams
United States District Judge
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Counsel Shall Provide a Chart of All Relevant Deadlines
EVENT DEADLINE
