Revised April 18, 2022
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PLAINTIFF,
Plaintiff,
V. Civil Action No. [ ]
DEFENDANT,
Defendant.
FORM SCHEDULING ORDER FOR
NON-HATCH-WAXMAN PATENT CASES IN WHICH ONLY
INVALIDITY AND NOT INFRINGEMENT IS ALLEGED
This _ _ day of _ _ _ _ 20_, the Court having conducted an initial
Rule l 6{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 ORDERED that:
1. Relevant Deadlines and Dates. All relevant deadlines and dates
established by this Order are set forth in the chart attached as Exhibit A.
2. Rule 26(a)( 1) Initial Disclosures. Unless otherwise agreed to by the
parties, the parties shall make their initial disclosures required by Federal Rule of
Civil Procedure 26(a)(l) within five days of the date of this Order.
3. Invalidity Contentions. Unless otherwise agreed to by the parties, no
later than 30 days after the date of this Order, a party alleging that a claim of a
patent is invalid or not enforceable shall serve on all parties its "Invalidity
Contentions," which shall contain the following information:
(a) The identity of each item of prior art that the party alleges
anticipates each asserted claim or renders the claim obvious. Each prior art
patent shall be identified by its number, country of origin, and date of issue.
Each prior art publication shall be identified by its title, date of publication,
and, where feasible, author and publisher. Each alleged sale or public use
shall be identified by specifying the item offered for sale or publicly used or
known, the date the offer or use took place or the information became
known, and the identity of the person(s) or entity(ies) that made the use or
made and received the offer, or the person(s) or entity(ies) that made the
information known or to whom it was made known. For pre-AIA claims,
prior art under 35 U.S.C. § 102(f) shall be identified by providing the name
of the person(s) from whom and the circumstances under which the
invention or any part of it was derived. For pre-AIA claims, prior art under
35 U.S.C. § 102(g) shall be identified by providing the identities of the
person(s) or entity(ies) involved in and the circumstances surrounding the
making of the invention before the patent applicant(s );
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(b) Whether each item of prior art anticipates each asserted claim
or renders it obvious. If obviousness is alleged, an explanation of why the
prior art renders the asserted claim obvious, including an identification of
any combinations of prior art showing obviousness;
(c) A chart identifying specifically where and how in each alleged
item of prior art each limitation of each asserted claim is found, including,
for each limitation that such party contends is governed by 35 U.S.C.
§ 112(f), the identity of the structure(s), act(s), or material(s) in each item of
prior art that performs the claimed function; and
(d) Any grounds of invalidity based on 35 U.S.C. § 101,
indefiniteness under 35 U.S.C. § 112(b), or lack of enablement or
insufficient written description under 35 U.S.C. § 112(a) of any of the
asserted claims.
4. Document Production Accompanying Invalidity Contentions. With
the Invalidity Contentions, the party shall produce or make available for inspection
and copying a copy or sample of the prior art identified pursuant to paragraph 3(a)
that does not appear in the file history of the patent(s) at issue. To the extent any
such item is not in English, an English translation of the portion(s) relied upon
shall be produced.
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5. Amendment to Contentions. Amendment of the Invalidity
Contentions may be made only by order of the Court upon a timely showing of
good cause. The duty to supplement discovery responses does not excuse the need
to obtain leave of the Court to amend contentions.
6. 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 - - - - - -
7. Discovery.
(a) Discovery Cut Off. All discovery in this case shall be initiated
so that it will be completed on or before _ _ _ _ __
(b) Document Production. Document production shall be
completed on or before _ _ _ _ __
(c) Requests for Admission. A maximum of_ requests for
admission is permitted for each side.
(d) Interrogatories. A maximum of_ interrogatories, including
contention interrogatories, is permitted for each side.
(e) Depositions.
( 1) Limitation on Hours for Deposition Discovery. Each
side is limited to a total of_ hours of taking testimony by
deposition upon oral examination.
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(2) 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 or by
agreement of the parties. 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.
8. Pinpoint Citations. Pinpoint citations are required in all briefing,
letters, and concise statements of facts. The Court will ignore any assertions of
controverted facts and controverted legal principles not supported by a pinpoint
citation to, as applicable: the record, an attachment or exhibit, and/or case law or
appropriate legal authority. See United States v. Dunkel, 927 F.2d 955,956 (7th
Cir. 1991) ("Judges are not like pigs, hunting for truffles buried in briefs.").
9. 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 days from the date of this Order.
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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 the 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 as confidential 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.
10. Disputes Relating to Discovery Matters and Protective Orders.
Should counsel find that they are unable to resolve a dispute relating to a discovery
matter or protective order, the parties shall contact the Court's Case Manager to
schedule an in-person conference/argument.
(a) Unless otherwise ordered, by no later than 72 hours prior to the
conference/argument, the party seeking relief shall file with the Court a
letter, not to exceed three pages, outlining the issues in dispute and the
party's position on those issues. The party shall submit as attachments to its
letter ( 1) an averment of counsel that the parties made a reasonable effort to
resolve the dispute and that such effort included oral communication that
involved Delaware counsel for the parties, and (2) a draft order for the
Court's signature that identifies with specificity the relief sought by the
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party. The party shall file concurrently with its letter a motion that in no
more than one paragraph sets forth the relief sought.
(b) By no later than 48 hours prior to the conference/argument, any
party opposing the application for relief may file a letter, not to exceed three
pages, outlining that party's reasons for its opposition.
(c) Two hard copies of the parties' letters and attachments must be
provided to the Court within one hour of e-filing the document(s). The hard
copies shall comply with paragraphs 8 and 12 of this Order.
(d) If a motion concerning a discovery matter or protective order is
filed without leave of the Court and does not comport with the procedures
set forth in this paragraph, the motion will be denied without prejudice to the
moving party's right to bring the dispute to the Court through the procedures
set forth in this paragraph.
11. Papers Filed Under Seal. When filing papers under seal, counsel shall
deliver to the Clerk an original and two copies of the papers. A redacted version of
any sealed document shall be filed electronically within seven days of the filing of
the sealed document.
12. Hard Copies. The parties shall provide to the Court two hard copies
of all letters filed pursuant to paragraph 10 of this Order, all briefs, and any other
documents filed in support of any such letters and briefs (i.e., the concise statement
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of facts filed pursuant to paragraph 18 of this Order, appendices, exhibits,
declarations, affidavits, etc.). This provision also applies to papers filed under seal.
(a) Exhibits and Attachments. Each exhibit and attachment to a
letter, brief, or pretrial order shall be separated by a tab. (Accordingly, each
brief filed in connection with a motion in limine in a pretrial order must be
separated by a tab.) Each exhibit and attachment shall have page numbers of
some sort such that a particular page of an exhibit or attachment can be
identified by a page number. The parties shall take all practical measures to
avoid filing multiple copies of the same exhibit or attachment. The parties
should highlight the text of exhibits and attachments they wish the Court to
read. The parties are encouraged to include in an exhibit or attachment only
the pages of the document in question that ( 1) identify the document (e.g.,
the first page of a deposition transcript or the cover page of a request for
discovery) and (2) are relevant to the issue(s) before the Court.
(b) Colors of Front Covers. The covers of briefs filed in
connection with all motions except for motions in limine included in a
pretrial order shall be as follows:
( 1) Opening brief - Blue
(2) Answering brief - Red
(3) Reply brief- Gray
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13. 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(s) of
those term(s)/phrase(s). This document 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 cfc
[email protected]. The text for the Joint Claim Construction
Chart shall be 14-point and in Times New Roman or a similar typeface. 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 separate text-
searchable PDF of each of the patent(s) in issue shall be submitted with this Joint
Claim Construction Chart. In this joint submission, the parties shall not provide
argument. Each party shall file concurrently with the Joint Claim Construction
Chart a "Motion for Claim Construction" that requests the Court to adopt the claim
construction position(s) of that party set forth in the Joint Claim Construction
Chart. The motion shall not contain any argument and shall simply state that the
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party "requests that the Court adopt the claim construction position[s] of [the
party] set forth in the Joint Claim Construction Chart (D.1. [ ])."
14. Claim Construction Briefing. The Plaintiff shall serve, but not file, its
opening brief, not to exceed 5,500 words, on - - - - - -. The Defendant
shall serve, but not file, its answering brief, not to exceed 8,250 words, on
_ _ _ _ _ _ _. The Plaintiff shall serve, but not file, its reply brief, not to
exceed 5,500 words, on _ _ _ _ _ _ _. The Defendant shall serve, but not
file, its sur-reply brief, not to exceed 2,750 words, on _ _ _ _ _ _. The text
for each brief shall be 14-point and in Times New Roman or a similar typeface.
Each brief must include a certification by counsel that the brief complies with the
type and number limitations set forth above. The person who prepares the
certification may rely on the word count of the word-processing system used to
prepare the brief.
No later than - - - - - - - [four weeks before the claim construction
hearing], the parties shall file a Joint Claim Construction Brief. (Should the parties
later stipulate or otherwise request to have this deadline extended, the parties will
presumptively lose their claim construction hearing date upon the Court's granting
the extension.) The parties shall copy and paste their untitled briefs into one brief,
with their positions on each claim term in sequential order, in substantially the
form below.
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JOINT CLAIM CONSTRUCTION BRIEF
I. Agreed-upon Constructions
II. Disputed Constructions
A. [TERM 1]
1. Plaintiffs Opening Position
2. Defendant's Answering Position
3. Plaintiffs Reply Position
4. Defendant's Sur-Reply Position
B. [TERM2]
1. Plaintiffs Opening Position
2. Defendant's Answering Position
3. Plaintiffs Reply Position
4. Defendant's Sur-Reply Position
Etc. The parties need not include any general summaries of the law relating to
claim construction. If there are any materials that would be submitted in an
appendix, the parties shall submit them in a Joint Appendix. Citations to intrinsic
evidence shall be set forth in the Joint Claim Construction Brief. Citations to
expert declarations and other extrinsic evidence may be made in the Joint Claim
Construction Brief as the parties deem necessary, but the Court will review such
extrinsic evidence only if the Court is unable to construe the disputed claim terms
based on the intrinsic evidence. See Vitronics Corp. v. Conceptronic, Inc., 90 F .3d
1576, 1584 (Fed. Cir. 1996). Declarations shall not contain legal argument or be
used to circumvent the briefing word limitations imposed by this paragraph. The
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Joint Claim Construction Brief and Joint Appendix shall comply with paragraphs 8
and 12 of this Order.
15. Meet and Confer Confirmation and Amended Claim Chart. On or
before _ _ _ _ _ _ [no earlier than three weeks before the claim construction
hearing and no later than two weeks before the claim construction hearing],
Delaware and lead counsel for the parties shall meet and confer and thereafter file
an Amended Joint Claim Construction Chart that sets forth the terms that remain in
dispute. During the meet and confer, the parties shall attempt to reach agreement
on any disputed terms where possible and to narrow the issues related to the
remaining disputed terms. The parties shall file with the Amended Joint Claim
Construction Chart a letter that identifies by name each individual who participated
in the meet and confer, when and how (i.e., by telephone or in person) the meet
and confer occurred, and how long it lasted. If no agreements on constructions
have been reached or if no dispute has been narrowed as a result of the meet and
confer, the letter shall so state, and the parties need not file an Amended Joint
Claim Construction Chart.
16. Hearing on Claim Construction. Beginning at _ _ __ .m. on
_ _ _ _ _ _ _ _ the Court will hear argument on claim construction. Absent
prior approval of the Court (which, if it is sought, must be done by joint letter
submission no later than the date on which answering claim construction briefs are
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due to be served), the parties shall not present testimony at the argument, and the
argument shall not exceed a total of three hours.
17. Disclosure of Expert Testimony.
(a) Expert Reports. For the party with the initial burden of proof
on the subject matter, the initial Federal Rule 26(a)(2) 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 provide the dates and
times of their experts' availability for deposition. Depositions of experts
shall be completed on or before _ _ _ _ _ __
(b) 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 the
deadline for dispositive motions set forth herein, unless otheiwise ordered by
the Court.
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18. Case Dispositive and Daubert Motions.
(a) No Early Motions Without Leave. All case dispositive motions
and the opening briefs and affidavits supporting such motions shall be
served and filed on or before _ _ _ _ _ _ _. No case dispositive
motion under Rule 56 may be filed more than ten days before this date
without leave of the Court. Reply briefs for any motions under Rule 56 shall
be due on or before - - - - - - - [three months before the pretrial
conference]. Should the parties later stipulate or otherwise request to have
the reply brief deadline extended, the parties will lose their trial date upon
the Court's granting the extension, and no new trial date will be given until
the dispositive motion(s) has(have) been decided.
(b) Motions to Be Filed Separately. A party shall not combine into
a single motion multiple motions that rely in whole or in part on different
facts.
(c) Word Limits. Each party is permitted to file as many case
dispositive motions as desired; provided, however, that each SIDE will be
limited to a combined total of 10,000 words for all opening briefs, a
combined total of 10,000 words for all answering briefs, and a combined
total of 5,000 words for all reply briefs, regardless of the number of case
dispositive motions that are filed. In the event that a party files, in addition
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to a case dispositive motion, a Daubert motion to exclude or preclude all or
any portion of an expert's testimony, the total amount of words permitted for
all case dispositive and Daubert motions shall be increased for each SIDE to
12,500 words for all opening briefs, 12,500 words for all answering briefs,
and 6,250 words for all reply briefs. The text for each brief shall be 14-point
/
and in Times New Roman or a similar typeface. Each brief must include a
certification by counsel that the brief complies with the type and number
limitations set forth above. The person who prepares the certification may
rely on the word count of the word-processing system used to prepare the
brief.
(d) Ranking of Summary Judgment Motions. A party that files
more than one summary judgment motion shall number each motion to make
clear the order in which the party wishes the Court to consider the motions
in question. The first motion the party wishes the Court to consider shall be
designated #I, the second motion shall be designated #2, and so on. 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.
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(e) Ranking of Daubert Motions. A party that files more than one
.Daubert motion shall number each motion to make clear the order in which
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. The Court will review the
party's Daubert 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
Daubert motions filed by the party. If the Court denies a Daubert motion
and the party that brought the motion does not cross examine the expert
witness at trial about the matters raised in the Daubert motion, the Court will
reduce by an appropriate amount the time allotted to that party at trial.
(t) Concise Statement of Facts Requirement. Any motion for
summary judgment shall be accompanied by a separate concise statement
detailing each material fact as to which the moving party contends that there
are no genuine issues to be tried that are essential for the Court's
determination of the summary judgment motion (not the entire case). 1 A
1
The party must detail each material/act in its concise statement of facts. The
concise statements of facts play an important gatekeeping role in the Court's
consideration of summary judgment motions.
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party must submit a separate concise statement of facts for each summary
judgment motion. Any party that opposes the motion shall file and serve
with its opposing papers a separate document containing a single concise
statement that admits or disputes the facts set forth in the moving party's
concise statement, as well as sets forth all material facts as to which it is
contended that there exists a genuine issue necessary to be litigated.
(g) Focus of the Concise Statement. When preparing the separate
concise statement, a party shall reference only the material facts that are
absolutely necessary for the Court to determine the limited issues presented
in the motion for summary judgment (and no others), and each reference
shall contain a citation to a particular affidavit, deposition, or other
document that supports the party's interpretation of the material fact.
Documents referenced in the concise statement may, but need not, be filed in
their entirety if a party concludes that the full context would be helpful to the
Court (e.g., a deposition miniscript with an index stating what pages may
contain key words may often be useful). The concise statement shall
particularly identify the page and portion of the page of the document
referenced. The document referred to shall have relevant portions
highlighted or otherwise emphasized. The parties may extract and highlight
the relevant portions of each referenced document, but they shall ensure that
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enough of a document is attached to put the matter in context. If a party
determines that an entire deposition transcript should be submitted, the party
should consider whether a miniscript would be preferable to a full-size
transcript. If an entire transcript is submitted, the index of terms appearing
in the transcript must be included, if it exists. When multiple pages from a
single document are submitted, the pages shall be grouped in a single
exhibit. Concise statements of fact shall comply with paragraphs 8 and 12
of this Order.
(h) Word Limits for Concise Statement. The concise statement in
support of or in opposition to a motion for summary judgment shall be no
longer than 1,750 words. The text for each statement shall be 14-point and
in Times New Roman or a similar typeface. Each statement must include a
certification by counsel that the statement complies with the type and
number limitations set forth above. The person who prepares the
certification may rely on the word count of the word-processing system used
to prepare the statement.
(i) Affidavits and Declarations. Affidavits or declarations setting
forth facts and/or authenticating exhibits, as well as exhibits themselves,
shall be attached only to the concise statement (i.e., not briefs).
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G) Scope of Judicial Review. When resolving motions for
summary judgment, the Court shall have no independent duty to search and
consider any part of the record not otherwise referenced in the separate
concise statements of the parties. Further, the Court shall have no
independent duty to review exhibits in their entirety, but rather the Court
will review only those portions of the exhibits specifically identified in the
concise statements. Material facts set forth in the moving party's concise
statement will be deemed admitted unless controverted by a separate concise
statement of the opposing party.
19. Applications by Motion. Except as otherwise specified herein, any
application to the Court shall be by written motion. Any non-dispositive motion
should contain the statement required by Local Rule 7 .1.1.
20. Pretrial Conference. On
- - - - - - - - - the Court will hold
a Rule 16(e) final pretrial conference in court with counsel beginning at _ _
_ .m. The parties shall file a joint proposed final pretrial order in compliance with
Local Rule 16.3(c) no later than 5:00 p.m. on _ _ _ _ _ _ _ _ _ _ [21
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) for the
preparation of the proposed joint final pretrial order. The joint pretrial order shall
comply with paragraphs 8 and 12 of this Order.
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21. 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 party shall be limited to three in limine requests, unless
otherwise permitted by the Court. Each in limine request and any response shall
contain the authorities relied upon; each in limine request may be supported by a
maximum of three pages of argument and may be opposed by a maximum of three
pages of argument, and the party making the in limine request may add a maximum
of one 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-page submission (and, for the moving parties, a single
one-page reply). No separate briefing shall be submitted on in limine requests,
unless otherwise permitted by the Court. Motions in limine shall comply with
paragraphs 8 and 12 of this Order.
22. Compendium of Cases. A party may submit with any briefing two
courtesy copies of a compendium of the selected authorities on which the party
would like the Court to focus. The parties should not include in the compendium
authorities for general principles or uncontested points of law (e.g., the standards
for summary judgment or claim construction). An authority that is cited only once
by a party generally should not be included in the compendium. An authority
already provided to the Court by another party should not be included in the
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compendium. Compendiums of cases shall not be filed electronically with the
Court, but a notice of service of a compendium of cases shall be filed electronically
with the Court. Compendiums shall comply with paragraph 12 of this Order.
23. Jury Instructions, Voir Dire, and Special Verdict Forms. Where a
case is to be tried to a jury, pursuant to Local Rules 47.l(a)(2) and 51.1, the parties
should file (i) proposed voir dire, (ii) preliminary jury instructions, (iii) final jury
instructions, and (iv) special verdict forms no later than 5 :00 p.m. on
_ _ _ _ _ _ _ _ _ _ _ _ _ [21 days before the pretrial conference]. The
parties shall submit simultaneously with filing each of the foregoing four
documents in Word format to cfc
[email protected].
24. Trial. This matter is scheduled for a _-day _____ trial
beginning at 8:30 a.m. on _ _ _ _ _ _ _ _ with the subsequent trial days
beginning at 8:30 a.m. Until the case is submitted to the jury for deliberations, the
jury will be excused each day at 4:30 p.m. The trial will be timed, as counsel will
be allocated a total number of hours in which to present their respective cases.
The Honorable Colm F. Connolly
United States District Court Judge
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Revised April 18, 2022
EXHIBIT A
Counsel Shall Provide a Chart of All
Relevant Deadlines
EVENT DEADLINE
