February 2023
For Patent Cases1
SCHEDULING ORDER
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 ORDERED that:
1. Rule 26(a)(1) Initial Disclosures. Unless otherwise agreed to by the parties, the
parties shall make their initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1)
within five days of the date of this Order.
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 ___________,
20__.
3. Discovery.
a. Discovery Cut Off. All discovery in this case shall be initiated so that it
will be completed on or before ________, 20__.
b. Document Production. Document production shall be substantially
complete by _______, 20__.
c. Requests for Admission. A maximum of ___ requests for admission are
permitted for each side.
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For ANDA cases, the form should be modified as necessary by, for example, deleting
paragraphs 10 and 14 and modifying paragraph 15 to reflect a three-day bench trial with trial
days from 8:30 to 5:00 (10 ½ hours per side).
d. Interrogatories. A maximum of ___ interrogatories, including contention
interrogatories, are permitted for each side.
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 or by agreement of the parties.
A defendant who becomes a cross-claimant or third-party plaintiff shall be considered as having
filed an action in this Court for the purpose of this provision.
f. Discovery Matters and Disputes Relating to Protective Orders. Should
counsel find 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 contact the
Court’s Case Manager to schedule an in-person conference/argument. Unless otherwise ordered,
by no later than seven business days prior to the conference/argument, any party seeking relief
shall file with the Court a letter, not to exceed three pages, outlining the issues in dispute and its
position on those issues. By no later than five business days 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 opposition. A party should include with its letter a proposed order with a detailed
issue-by-issue ruling such that, should the Court agree with the party on a particular issue, the
Court could sign the proposed order as to that issue, and the opposing party would be able to
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understand what it needs to do, and by when, to comply with the Court’s order. Any proposed
order shall be e-mailed, in Word format, simultaneously with filing to
[email protected].
If a discovery-related motion is filed without leave of the Court, it will be denied
without prejudice to the moving party’s right to bring the dispute to the Court through the
discovery matters procedures set forth in this Order.
g. Miscellaneous Discovery Matters.
i. The parties may, if they choose, agree to a timetable for initial
patent disclosures either as set forth in the Delaware Default Standard for Discovery or as agreed
to by the parties, and the parties should set forth any such agreement in the scheduling order.
ii. The parties should set forth a statement identifying any other
pending or completed litigation including IPRs involving one or more of the asserted patents.
Plaintiff2 should advise whether it expects to institute any further litigation in this or other
Districts within the next year. Defendant should advise whether it expects to file one or more
IPRs and, if so, when.
iii. The parties, if they think it necessary, should set times in the
schedule for reducing the number of asserted claims and asserted prior art used for anticipation
and obviousness combinations. The usual points where the Court will consider such limits are
before claim construction and after a ruling on claim construction.
iv. If one or more of the patents-in-suit have already been licensed or
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Plaintiff and Defendant refer to the party or parties asserting infringement and the party
or parties accused of infringement. The parties should modify the language as necessary, for
example, in a declaratory judgment action.
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the subject of a settlement agreement, either (1) Plaintiff shall provide the licenses and/or
settlement agreements to Defendant no later than the time of the initial Rule 16(b) scheduling
conference, or (2) if Plaintiff requires a Court Order to make such disclosures, Plaintiff shall file
any necessary proposed orders no later than twenty-four hours before the initial Rule 16(b)
scheduling conference. Plaintiff shall represent in the scheduling order that it is complying or
has complied with this requirement. All parties shall be prepared to discuss at the conference
what their preliminary views of damages are.
4. 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. Should counsel be unable to reach an agreement on a proposed form of order, counsel
must follow the provisions of Paragraph 3(f) 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 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.
5. Papers Filed Under Seal. When filing papers under seal, a redacted version of any
sealed document shall be filed electronically within seven days of the filing of the sealed
document.
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6. Claim Construction Issue Identification. On or before ________, 20__, 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)3. 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 ____________, 20__. The Joint Claim
Construction Chart, in Word format, shall be e-mailed simultaneously with filing to
[email protected]. The 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. The Joint Claim Construction Chart should
include an explanation of why resolution of the dispute makes a difference. A copy of the
patent(s) in issue as well as those portions of the intrinsic record relied upon shall be submitted
with the Joint Claim Construction Chart. In this joint submission, the parties shall not provide
argument.
7. Claim Construction Briefing4. Plaintiff shall serve, but not file, its opening brief,
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If a party proposes a construction of a term to be its “plain and ordinary” meaning, the
party must explain what that meaning is. If a term is arguably a means-plus-function term, and a
party does not propose a function and a structure, it is waiving any right to propose a function
and a structure at a later time.
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As each brief is written and provided to the opposing party, the individual responsible
for verifying the word count will represent to the other party that it has so verified and by what
means. These verifications should not be provided to the Court unless a dispute arises about
them. Pictures, Figures copied from the patent, and other illustrations do not count against the
word limit. Plaintiff should include with its opening brief one or more representative claims with
the disputed terms italicized. Should Defendant want to add additional representative claims,
Defendant may do so. The representative claims and the agreed-upon claim constructions do not
count against the word limits.
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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 past 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. Representative Claims
II. Agreed-upon Constructions
III. Disputed Constructions
A. [TERM 1]5
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s Reply Position
4. Defendant’s Sur-Reply Position
B. [TERM 2]
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s 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.
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For each term in dispute, there should be a table or the like setting forth the term in
dispute, the parties’ competing constructions, and why resolution of the dispute matters. The
table does not count against the word limits.
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8. Hearing on Claim Construction. Beginning at _____ a.m. on ___________, 20__,
the Court will hear argument on claim construction. Absent prior approval of the Court (which,
if it is sought, must be done so by joint letter submission no later than the date on which
answering claim construction briefs are due), the parties shall not present testimony at the
argument, and the argument shall not exceed a total of three hours. When the Joint Claim
Construction Brief is filed, the parties shall simultaneously file a motion requesting the above-
scheduled claim construction hearing, state that the briefing is complete, and state how much
total time the parties are requesting that the Court should allow for the argument.
9. Disclosure of Expert Testimony.
a. Expert Reports. For the party who has 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
___________, 20__. The supplemental disclosure to contradict or rebut evidence on the same
matter identified by another party is due on or before ____________, 20__. Reply expert reports
from the party with the initial burden of proof are due on or before ________, 20__. No other
expert reports will be permitted without either the consent of all parties or leave of the Court.
If any party believes that an expert report does not comply with the rules relating to timely
disclosure or exceeds the scope of what is permitted in that expert report, the complaining party
must notify the offending party within one week of the submission of the expert report. The
parties are expected to promptly try to resolve any such disputes, and, when they cannot
reasonably be resolved, use the Court’s Discovery Dispute Procedure or the complaint will be
waived.
Along with the submissions of the expert reports, the parties shall advise of the dates and
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times of their experts’ availability for deposition. Depositions of experts shall be completed on
or before _____________, 20__.
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 Pharm., 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 otherwise
ordered by the Court.
10. Case Dispositive Motions. All case dispositive motions shall be served and filed
on or before ____________, 20__. No case dispositive motion under Rule 56 may be filed more
than ten days before the above date without leave of the Court. Absent an order of the Court
upon a showing of good cause, each side is limited to one forty-page opening brief, one forty-
page answering brief, and one twenty-page reply brief for all of its Daubert and case dispositive
motions.
11. 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.
12. Pretrial Conference. On ________, 20 __, the Court will hold a Rule 16(e) final
pretrial conference in Court with counsel beginning at _____ a.m. The parties shall file a joint
proposed final pretrial order in compliance with Local Rule 16.3(c) no later than 5 p.m. on the
fourth business day before the date of the final 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.
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13. Motions in Limine. Motions in limine shall be separately filed, with each motion
containing all the argument described below in one filing for each motion. Any supporting
documents in connection with a motion in limine shall be filed in one filing separate from the
motion in limine. Each party shall be limited to three 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 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, if the moving party, a single one page
reply). No separate briefing shall be submitted on in limine requests, unless otherwise permitted
by the Court.
14. Jury Instructions, Voir Dire, and Special Verdict Forms. Where a case is to be
tried to a jury, pursuant to Local Rules 47.1(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 6 p.m. on the fourth business day before the date of the final pretrial
conference. Areas of dispute shall be identified as narrowly as possible and in a manner that
makes it readily apparent what the dispute is. The parties shall submit simultaneously with filing
each of the foregoing four documents in Word format to
[email protected].
15. Trial. This matter is scheduled for a five (5) day6 jury trial beginning at 9:30 a.m.
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Five days (i.e., about ten to thirteen hours per side) is the presumptive length of a patent
jury trial. If the parties think it is obvious that this will not be enough, they may put in a different
length and should be prepared to explain why at the Rule 16 conference. A final decision on the
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on _________, 20__, with the subsequent trial days beginning at 9:30 a.m. Until the case is
submitted to the jury for deliberations, the jury will be excused each day at 5:00 p.m. The trial
will be timed, as counsel will be allocated a total number of hours in which to present their
respective cases.
16. Discovery Referral. This matter is referred to a magistrate judge to handle all
discovery disputes including any that arise in connection with expert reports. (This referral is
optional, and should be deleted unless all parties agree to it.)
17. Mediation (for use in non-ANDA patent cases). The Parties are required to
engage in good faith in an in-person mediation. They are to hire a jointly agreed-upon mediator.
The timing of mediation efforts is left to the discretion of the Parties, but the mediation efforts
need to be conducted in advance of the pretrial conference. The Parties are required to submit a
joint statement no later than one week before the pretrial conference. The joint statement is to
included the identification of the mediator, the lead counsel for each party at the mediation, the
length of the mediation, and the certification of the lead mediation counsel that they have
engaged in the efforts in good faith. If the Parties anticipate any further efforts by the mediator at
the time of the submission, they should so advise. The joint statement should not disclose the
substance of any offers, counter-offers, or other negotiations.
_________________________________
UNITED STATES DISTRICT JUDGE
precise length of trial will not be made before the final pretrial conference.
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