Hon. Christopher J. Burke · U.S. District Court for the District of Delaware
=== Standing Order Regarding Courtesy Copies ===
STANDING ORDER REGARDING COURTESY COPIES Unless a specific Order to the contrary is entered in a case, all parties shall provide to the Court two (2) courtesy copies of all briefs (including letter briefs), as well as any documents filed in support of such briefs (i.e., appendices, exhibits, declarations, affidavits, tutorials, etc.). All parties shall provide one (1) copy of any other document filed (e.g., letters and stipulations). This Order also applies to papers filed under seal. Unless ordered differently by the Court, such copies must be provided to the Court by no later than noon the business day after the filing is made electronically. Dated: May 10, 2022 Christopher J. Burke UNITED STATES MAGISTRATE JUDGE
=== Standing Order Regarding Courtroom Opportunities for Newer Attorneys ===
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELA WARE STANDING ORDER REGARDING COURTROOM OPPORTUNITIES FOR NEWER ATTORNEYS ORDER The Court is cognizant of a growing trend in which fewer cases go to trial, and in which there are generally fewer opportunities in court for speaking or "stand-up" engagements. This is especially true for newer attorneys, that is, attorneys practicing for less than seven years ("newer attorney(s )"). Recognizing the importance of the development of future generations of practitioners through courtroom opportunities, the undersigned Judge encourages the participation of newer attorneys in proceedings in my courtroom-particularly as to oral argument on motions where the newer attorney drafted or contributed significantly to the briefing for the motion. To that end, the Court adopts the following procedures regarding oral argument as to pending motions: ( 1) After a motion is fully briefed, either as part of a Request for Oral Argument, or in a separate Notice filed thereafter, a party may alert the Court that, if argument is granted, it intends to have a newer attorney argue the motion (or a portion of the motion). (2) If such notice is provided, the Court will: (A) Grant the request for oral argument on the motion, if it is at all practicable to do so. (B) Strongly consider allocating additional time for oral argument beyond what the Court may otherwise have allocated, were a newer attorney not arguing the motion. (C) Permit other more experienced counsel of record the ability to provide some assistance to the newer attorney who is arguing the motion, where appropriate during oral argument. All attorneys, including newer attorneys, will be held to the highest professional standards. Relatedly, all attorneys appearing in court are expected to be adequately prepared and thoroughly familiar with the factual record and the applicable law, and to have a degree of authority commensurate with the proceeding. The Court also recognizes that there may be many different circumstances in which it is not appropriate for a newer attorney to argue a motion. Thus, the Court emphasizes that it draws no inference from a party's decision not to have a newer attorney argue any particular motion before the Court. Additionally, the Court will draw no inference about the importance of a particular motion, or the merits of a party's argument regarding the motion, from the party's decision to have (or not to have) a newer attorney argue the motion. Dated: January 23, 2017 ~.~ Christopher J. Burke d UNITED ST ATES MAGISTRATE JUDGE 2
=== Standing Order for ADR Mediation - Revised 01/16 ===
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE IN THE MATTER OF: ALL MATTERS REFERRED TO A MAGISTRATE JUDGE FOR ALTERNATIVE DISPUTE RESOLUTION/ MEDIATION STANDING ORDER At Wilmington this 20th day of January, 2016. IT IS HEREBY ORDERED that for all matters referred to a Magistrate Judge for Alternative Dispute Resolution ("ADR"), including mediation , as follows : The contents of any written and oral statements made by the participants or their representatives during or in relation to a court-sponsored ADR proceeding, including any ADR-related telephonic or other communications made directly to the Court at any point in the case, are confidential. Disclosure of confidential ADR communications is prohibited , except as authorized by the Court or agreed to by the parties. The ADR process itself is confidential and not open to the public. IT IS FURTHER ORDERED that any communications regarding the ADR/mediation process, including but not limited to the scheduling or rescheduling of teleconferences or mediation dates, are not to bee-filed or docketed. Such communications are to be made as designated or ordered by the Magistrate Judge. Mediation statements are not to bee-filed or docketed. M Christopher J. Burke, U.S. Magistrate Judge
=== Discovery Matters - Motion to Resolve Discovery Dispute - Revised 01/13 ===
MOTION FOR TELECONFERENCE TO RESOLVE DISCOVERY DISPUTE [Name party] respectfully moves this Court to schedule a teleconference to address an outstanding dispute regarding discovery matters. As a result of a previous teleconference with Chambers, the parties will provide submissions and present their respective positions consistent with the Court’s prior order regarding discovery matters during a teleconference on [date and time] with counsel for [party] to initiate the call. Date:
=== Discovery Matters - Joint Motion to Resolve Protective Order Dispute - Revised 01/13 ===
JOINT MOTION FOR TELECONFERENCE TO RESOLVE PROTECTIVE ORDER DISPUTE [Names of parties] respectfully move this Court to schedule a teleconference to address an outstanding dispute regarding the drafting of a protective order. As a result of a previous teleconference with Chambers, the parties will provide submissions and present their respective positions consistent with the Court’s prior order regarding such disputes during a teleconference on [date and time] with counsel for [party] to initiate the call. Date:
=== Proposed Final Non-Patent Pretrial Order - Revised 06/14 ===
[Note: Throughout, material in brackets is provided as guidance to counsel as to the Court’s practices and/or the matter that needs to be addressed in the Proposed Final Pretrial Order.] REVISED September 2011 PROPOSED FINAL PRETRIAL ORDER This matter comes before the Court at a final pretrial conference held pursuant to Rule 16 of the Federal Rules of Civil Procedure and Local Rule 16.3. Plaintiff(s) Counsel: [List name, address, telephone number, and e-mail address(es)] Defendant(s) Counsel: [List name, address, telephone number, and e-mail address(es)] I. Nature of the Case [The parties should prepare a brief statement of the nature of the case (personal injury, federal tort claim, breach of contract, patent infringement, etc.) including the claims of the parties. The principal purpose of this statement is to assist the Court in explaining the case to prospective jurors upon selection of a jury.] II. Jurisdiction This is an action for [state the remedy sought, such as damages or injunctive or declaratory relief]. The jurisdiction of the Court is not disputed [or, if the issue has not previously been raised, the basis on which jurisdiction is contested] and is based on [state the statutory, constitutional, or other basis of jurisdiction]. III. Facts A. Uncontested Facts The following facts are not disputed or have been agreed to or stipulated to by the parties: [This section should contain a comprehensive statement of the facts which will become a part of the evidentiary record in the case and which, in jury trials, may be read to the jury at the beginning of the evidentiary portion of the trial.] B. Contested Facts [Identify the facts in issue, with a brief statement of what each party intends to prove in support of its claims and/or defenses. These summaries should be sufficient to identify for the Court the essential facts in issue and to fairly notify the other parties of what counsel expects to prove at trial.] IV. Issues of Law [Include a statement of the issues of law which any party contends remain to be litigated, and a citation of authorities relied upon by each party.] [The Court will preclude a party from seeking relief based on claims and defenses not described in the draft pretrial order.] V. Witnesses [Indicate which witnesses will testify in person and which by deposition. Any witness not listed will be precluded from testifying, absent good cause shown. Indicate if there are any objections to a witness and, if so, briefly state the basis for the objection.] [In the absence of an alternative agreement between the parties, witnesses will be sequestered. Also, unless the parties reach an alternative agreement, the order of the presentation of evidence will follow the burden of proof.] A. List of Witnesses the Plaintiff Expects to Call 1. 2. Expert witnesses Non-expert witnesses 2 B. List of Witnesses Defendant Expects to Call 1. 2. Expert witnesses Non-expert witnesses C. List of Witnesses Third Parties Expect to Call [If there are any third parties to the action, they should include an identical list of witnesses as that contained in Parts A and B above.] D. Testimony by Deposition [Counsel should confer prior to the pretrial conference to determine which testimony will be offered by deposition (including video tape depositions), to agree on the designation of those portions of the depositions to be offered into evidence, and to identify objections. If there are objections that will need to be resolved, counsel will submit the transcript and a summary of the objections with the draft pretrial order. All irrelevant and redundant material, including colloquy between counsel and objections, will be eliminated when the deposition is read or viewed at trial.] VI. Exhibits A. Exhibits [The parties are to provide a list of pre-marked exhibits that each party intends to offer at trial, along with citations to the Federal Rules of Evidence to note any objections thereto lodged by any other party. Exhibits not listed will not be admitted unless good cause is shown. Exhibits not objected to will be received into evidence by the operation of the Final Pretrial Order without the need for additional foundation testimony.] On or before the first day of trial, counsel will deliver to the Courtroom Deputy a 3 completed AO Form 187 exhibit list for each party. A party will provide exhibits to be used in connection with direct examination by 3:00 p.m. the day before their intended use, and objections will be provided no later than 7:30 p.m. the night before their intended use. If good faith efforts to resolve the objections fail, the party objecting to the exhibits shall bring its objections to the Court’s attention prior to the witness being called to the witness stand. B. Demonstrative Exhibits The parties will exchange demonstratives to be used in opening statements by 8:00 p.m. two nights before opening statements. The parties will provide any objections to such demonstratives by 12:00 noon on the day before opening statements. A party will provide demonstrative exhibits to be used in connection with direct examination by 3:00 p.m. the day before their intended use, and objections will be provided no later than 7:30 p.m. the night before their intended use. If any of the demonstratives change after the deadline, the party intending to use the demonstrative will promptly notify the opposing party of the change(s). The party seeking to use a demonstrative will provide a color representation of the demonstrative to the other side in PDF form. However, for video or animations, the party seeking to use the demonstrative will provide it to the other side on a DVD or CD. For irregularly sized physical exhibits, the party seeking to use the demonstrative will provide a color representation as a PDF of 8.5 x 11 copies of the exhibits. This provision does not apply to demonstratives created during testimony or demonstratives to be used for cross examination, neither of which need to be provided to the 4 other side in advance of their use. In addition, blow-ups or highlights of exhibits or parts of exhibits or testimony are not required to be provided to the other side in advance of their use. If good faith efforts to resolve objections to demonstrative exhibits fail, the objecting party shall bring its objections to the Court’s attention prior to the opening statements or prior to the applicable witness being called to the witness stand. VII. Damages [Include an itemized statement of all damages, including special damages.] VIII. Bifurcated Trial [Indicate whether the parties desire a bifurcated trial, and, if so, why.] IX. 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 five (5) 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 and may be opposed by a maximum of three (3) pages of argument, and the party making the in limine request may add a maximum of one (1) 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.] X. Discovery 5 Each party has completed discovery. XI. Number of Jurors There shall be eight jurors. The Court will conduct jury selection through the “struck juror” method, beginning with the Court reading voir dire to the jury panel in the courtroom, continuing by meeting with jurors individually in chambers and there addressing any challenges for cause, and concluding back in the courtroom with peremptory strikes. XII. Non-Jury Trial [If the parties desire a detailed opinion from the Court post-trial, counsel should include a proposed post-trial briefing schedule in the draft pretrial order.] In their initial briefs, each party shall provide proposed Findings of Fact, separately stated in numbered paragraphs, constituting a detailed listing of the relevant material facts the party believes it has proven, in a simple narrative form. In their initial briefs, each party shall also provide Conclusions of Law, with supporting citations. XIII. Length of Trial [The trial will be timed. Indicate the number of hours the parties request for their trial presentations.] Time will be charged to a party for its opening statement, direct and redirect examinations of witnesses it calls, cross-examination of witnesses called by any other party, and closing argument. The Courtroom Deputy will keep a running total of trial time used by counsel. XIV. Amendments of the Pleadings [Indicate any amendments of the pleadings desired by any party, along with a statement whether the proposed amendment is objected to and, if objected to, the grounds for the 6 objection.] XV. Additional Matters [List here any additional issues requiring resolution prior to trial, including whether the parties anticipate requesting that the courtroom be closed to the public for a portion of any specified witness’ testimony.] XVI. Settlement [Provide a certification that the parties have engaged in a good faith effort to explore the resolution of the controversy by settlement, including a description of the overall extent of such efforts and identification of the date of the most recent substantive discussions regarding settlement.] 7 IT IS HEREBY ORDERED that this Final Pretrial Order shall control the subsequent course of the action, unless modified by the Court to prevent manifest injustice. DATED: ___________________________ ___________________________________ The Honorable Christopher J. Burke UNITED STATES MAGISTRATE JUDGE APPROVED AS TO FORM AND SUBSTANCE: ___________________________________ ATTORNEY FOR PLAINTIFF(S) ___________________________________ ATTORNEY FOR DEFENDANT(S) 8
=== Form Letter Regarding Mediation Referral Request - Revised 03/12 ===
[DATE] The Honorable Christopher J. Burke United States Magistrate Judge United States District Court Boggs Federal Building 844 North King Street, Unit 28 Wilmington, DE 19801 RE: [Case Name and Number] Dear Judge Burke: This joint letter confirms that the parties [agree or do not agree] to Your Honor serving as the mediating judge in this case. Therefore, the parties [request or do not request] that mediation be referred to another United States Magistrate Judge in this Court. [Signature]
=== Proposed Final Patent Pretrial Order - Revised 04/14 ===
REVISED June 2014 [Note: Throughout, material in brackets is provided as guidance to counsel as to the Court's practices and/or matter that needs to be addressed in the Proposed Final Pretrial Order.] PROPOSED FINAL PRETRIAL ORDER- PATENT This matter comes before the Court at a final pretrial conference held pursuant to Rule 16 of the Federal Rules of Civil Procedure. Plaintiff(s) Counsel: [List name, address, telephone number, and e-mail address]' Defendant(s) Counsel: [List name, address, telephone number, and e-mail address] 2 I. Nature of the Case [The parties should prepare a brief statement of the nature of the case including identification of the parties and their claims. This statement may be used by the Court to explain the case to prospective jurors during the process of jury selection.] II. Jurisdiction This is an action for [state the remedy sought, such as damages or injunctive or declaratory relief]. The jurisdiction of the Court is not disputed [or, if the issue has not previously been raised, the basis on which jurisdiction is contested] and is based on [state the statutory, constitutional, or other basis of jurisdiction]. 1[For simplicity, "Plaintiff(s)" refers throughout this form order to the party asserting infringement of its patent( s ). ] 2[For simplicity, "Defendant(s)" refers throughout this form order to the party accused of infringement.] 1 III. Facts A. Uncontested Facts Any party, with prior notice to all other parties, may read any or all of the uncontested facts to the jury or Court, and will be charged for the time used to do so. The following facts are not disputed or have been agreed to or stipulated to by the parties: [This section should contain a comprehensive statement of the uncontested facts which the parties intend to make part ofthe evidentiary record, either by reading to the jury, or in a bench trial reading to the Court and/or filing with the Court in conjunction with post-trial briefing.] B. Contested Facts [Identify the facts in issue, with a brief statement of what each party intends to prove in support of its claims and/or defenses. These summaries should be sufficient to identify for the Court the essential facts in issue and to fairly notify the other parties of what counsel expects to prove at trial.] IV. Issues of Law [Include a statement of the issues of law which any party contends remain to be litigated, and a citation of authorities relied upon by each party.] [The Court will preclude a party from seeking relief based on claims and defenses not described in the draft pretrial order.] 2 V. Witnesses [Indicate which witnesses will testify in person and which by deposition. Indicate ifthere are any objections to a witness and, if so, briefly state the basis for the objection.] Any witness not listed will be precluded from testifying, absent good cause shown. In the absence of an alternative agreement between the parties, fact witnesses will be sequestered. Also, unless the parties reach an alternative agreement, the order of the presentation of evidence will follow the burden of proof. [The presumptive order of proof is: Phase I: Plaintiff case-in-chief on infringement and damages Phase II: Defendant response on infringement and damages, and case-in-chief on invalidity Phase III: Plaintiff rebuttal on infringement and damages, and response on invalidity Phase N: Defendant rebuttal on invalidity] A. List of Witnesses the Plaintiff Expects to Call 1. Expert witnesses [For any expert witness, the Plaintiff shall indicate the precise subject matter on which it will ask the Court to recognize the witness's expertise. At trial, the Plaintiff should offer the witness as an expert on that same subject matter. No deviations as to the described subject matter will be permitted without approval of all parties or the Court, on good cause shown.] 2. Non-expert witnesses 3 B. List of Witnesses Defendant Expects to Call 1. Expert witnesses [For any expert witness, the Defendant shall indicate the precise subject matter on which it will ask the Court to recognize the witness's expertise. At trial, the Defendant should offer the witness as an expert on that same subject matter. No deviations as to the described subject matter will be permitted without approval of all parties or the Court, on good cause shown.] 2. Non-expert witnesses C. List of Witnesses Third Parties Expect to Call [If there are any third parties to the action, they should include a list of witnesses like those contained in Parts A and B above.] D. Testimony by Deposition [Counsel should confer prior to the pretrial conference to determine which testimony will be offered by deposition (including video tape depositions), to agree on the designation of those portions of the depositions to be offered into evidence, and to identify objections.] This pretrial order contains the maximum universe of deposition designations, counter-designations, and objections to admission of deposition testimony; none ofthe foregoing shall be supplemented without approval of all parties or leave ofthe Court, on good cause shown. If there are objections that remain to be resolved, the party calling the witness by deposition shall, no later than two (2) calendar days before the witness is to be called at trial, submit, on behalf of all parties: (i) a copy of the entire deposition testimony of the witness at issue, clearly highlighting the designations, counter-designations, and pending objections; and (ii) a cover letter clearly identifying the pending objections as well as a brief indication (i.e., no 4 more than one sentence per objection) of the basis for the objection and the offering party's response to it. Failure to comply with these procedures, absent an agreement by the parties and approval by the Court, will result in waiver of the use of the deposition testimony or waiver of objection to the use ofthe deposition testimony. All irrelevant and redundant material, including colloquy between counsel and objections, will be eliminated when the deposition is read or viewed at trial. When the witness is called to testify by deposition at trial, the party calling the witness shall provide the Court with two copies of the transcript of the designations and counter designations that will be read or played. The parties will be charged for all time that elapses from the time the witness is called until the next witness is called, according to the proportions to be provided by the parties. E. Impeachment with Prior Inconsistent Testimony [The parties shall provide their position(s) as to whether the Court should allow objections to the use of deposition and other prior testimony for impeachment purposes, including objections based on lack of completeness and/or lack of inconsistency.] F. Objections to Expert Testimony [The parties shall provide their position(s) as to whether the Court should rule at trial on objections to expert testimony as beyond the scope of prior expert disclosures, taking time from the parties' trial presentation to argue and decide such objections; or whether the Court should instead defer ruling on all such objections unless renewed in writing following trial, subject to the proviso that a party prevailing on such a post-trial objection will be entitled to have all of its 5 costs associated with a new trial paid for by the party that elicited the improper expert testimony at the earlier trial.] VI. Exhibits A. Exhibits [The parties are to provide a list of pre-marked exhibits which each party intends to offer at trial, along with citations to the Federal Rules of Evidence to note any objections thereto lodged by any other party.] This pretrial order contains the maximum universe of exhibits to be used in any party's case-in-chief, as well as all objections to the admission of such objections, neither of which shall be supplemented without approval of all parties or leave of the Court, on good cause shown. Exhibits not listed will not be admitted unless good cause is shown. No exhibit will be admitted unless offered into evidence through a witness, who must at least be shown the exhibit. At some point before the completion of the witness' testimony, any party that has used an exhibit with the witness and wishes that exhibit to be admitted into evidence must formally move the exhibit into evidence, by exhibit number. Exhibits may not be published, displayed, or otherwise shown to the jury until after they have been admitted into evidence. Once admitted, counsel may publish exhibits to the jury without requesting to do so. A party will provide exhibits to be used in connection with direct examination by 6:00 p.m. the day before their intended use, and objections will be provided no later than 8:00p.m. the night before their intended use. If good faith efforts to resolve the objections fail, the party objecting to the exhibits shall bring its objections to the Court's attention prior to the witness being called to the witness stand. Failure to comply with these procedures, absent an agreement 6 by the parties and approval by the Court, will result in waiver of the use of an exhibit or waiver of objection to the exhibit. Exhibits not objected to will be received into evidence by the operation ofthe Final Pretrial Order without the need for additional foundation testimony, provided they are shown to a witness. On or before the first day of trial, counsel will deliver to the Courtroom Deputy a completed AO Form 187 exhibit list for each party. B. Demonstrative Exhibits The parties will exchange demonstratives to be used in opening statements by 8:00 p.m. two nights before opening statements. The parties will provide any objections to such demonstratives by 12:00 p.m (noon) on the day before opening statements. A party will provide demonstrative exhibits to be used in connection with direct examination by 6:00p.m. the night before their intended use, and objections will be provided no later than 8:00p.m. the night before their intended use. If any of the demonstratives change after the deadline, the party intending to use the demonstrative will promptly notify the opposing party of the change(s). The party seeking to use a demonstrative will provide a color representation of the demonstrative to the other side in PDF form. However, for video or animations, the party seeking to use the demonstrative will provide it to the other side on a DVD or CD. For irregularly sized physical exhibits, the party seeking to use the demonstrative will provide a color representation as a PDF of 8.5 x 11 copies of the exhibits. This provision does not apply to demonstratives created during testimony or 7 demonstratives to be used for cross-examination, neither of which need to be provided to the other side in advance of their use. In addition, blow-ups or highlights of exhibits or parts of exhibits or testimony are not required to be provided to the other side in advance of their use. If good faith efforts to resolve objections to demonstrative exhibits fail, the objecting party shall bring its objections to the Court's attention prior to the opening statements or prior to the applicable witness being called to the witness stand. Failure to comply with these procedures, absent an agreement by the parties and approval by the Court, will result in waiver of the use of an exhibit or waiver of objection to the exhibit. VII. Damages [Include an itemized statement of all damages, including special damages.] VIII. Bifurcated Trial [Indicate whether the parties desire a bifurcated trial, and, if so, why.] IX. 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 and may be opposed by a maximum of three (3) pages of argument, and the side making the in limine request may add a maximum of one (1) 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 8 the Court. No separate briefing shall be submitted on in limine requests, unless otherwise permitted by the Court. X. Discovery Each party has completed discovery. XI. Number of Jurors There shall be eight jurors. The Court will conduct jury selection through the "struck juror" method, beginning with the Court reading voir dire to the jury panel in the courtroom, continuing by meeting with jurors individually in chambers or at sidebar and there addressing any challenges for cause, and concluding with peremptory strikes. XII. Non-Jury Trial [If the parties desire a detailed opinion from the Court post-trial, counsel should include a proposed post-trial briefing schedule, including page limits, in the draft pretrial order.] Along with their initial briefs, each party shall provide proposed Findings of Fact, separately stated in numbered paragraphs, constituting a detailed listing of the relevant material facts the party believes it has proven, in a simple narrative form, along with citations to the record. The proposed Findings of Fact shall be limited to a maximum of_ pages. No separate Conclusions of Law shall be filed. XIII. Length of Trial The trial will be timed. Unless otherwise ordered, time will be charged to a party for its opening statement, direct and redirect examinations of witnesses it calls, cross-examination of witnesses called by any other party, closing argument, its argument on any motions for judgment 9 as a matter oflaw, and all sides' argument on objections a party raises (outside the presence of the jury) to another party's exhibits and demonstrative exhibits. The Courtroom Deputy will keep a running total of trial time used by counsel. If any party uses all of its allotted trial time, the Court will terminate that party's trial presentation. Considering the Court's procedures for counting time, and considering the nature and extent of the parties' disputes, the parties request_ hours for their trial presentation. [Indicate the number ofhours the parties request for their trial presentations. On days other than those involving jury selection, jury instructions, or deliberations, a typical day involves between 5 1i and 6 1i of trial time. In a typical bench trial, each day will involve between 6 and 7 hours of trial time. If the Court has previously set a maximum number of days that will be reserved for trial in this matter, the Court will not, absent good cause shown, allocate more hours for trial presentations than can be accommodated within the number of days reserved.] XIV. Motions for Judgment as a Matter of Law [The parties shall provide their position(s) as to how they will make motions for judgment as a matter oflaw, whether it be immediately at the appropriate point during trial or at a subsequent break, whether the jury should be in or out of the courtroom at the time such motions are made and/or argued, and whether such motions may be supplemented in writing.] XV. Amendments of the Pleadings [Indicate any amendments of the pleadings desired by any party, along with a statement whether the proposed amendment is objected to and, if objected to, the grounds for the objection.] 10 XVI. Additional Matters [List any additional issues requiring resolution prior to trial, including whether the parties anticipate requesting that the courtroom be closed to the public for a portion of any specified witness' testimony.] XVII. Settlement [Provide a certification that the parties have engaged in a good faith effort to explore the resolution of the controversy by settlement, including a description of the overall extent of such efforts and identification of the date of the most recent substantive discussions regarding settlement.] IT IS HEREBY ORDERED that this Final Pretrial Order shall control the subsequent course of the action, unless modified by the Court to prevent manifest injustice. DATED: --------------- UNITED STATES DISTRICT JUDGE APPROVED AS TO FORM AND SUBSTANCE: ATTORNEY FOR PLAINTIFF(S) ATTORNEY FOR DEFENDANT(S) 11
=== Order Governing Mediation Conferences - Statements - Revised 09/25 ===
THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE Plaintiff(s), v. Defendant(s). Civil Action No. ____-_________-___ ORDER GOVERNING MEDIATION CONFERENCES AND MEDIATION STATEMENTS THIS ORDER CONTAINS IMPORTANT INFORMATION WHICH SHOULD BE READ BY COUNSEL PRIOR TO PREPARATION OF A MEDIATION STATEMENT. At Wilmington this day of 20___. MEDIATION CONFERENCE 1. A mediation conference is scheduled with Plaintiff(s) and Defendant(s) for , , , beginning at _ .m. TIMING OF ARRIVAL AND DEPARTURE FROM MEDIATION 2. Unless otherwise notified by the Court, the mediation conference will begin at .m. and parties should expect it will last until .m. Thus, required participants attending the mediation should not make air or train reservations that would require them to leave Judge Burke’s Chambers prior to .m. (unless the Court has previously indicated that it will excuse those persons from the mediation early). To the extent that the mediation ends prior to .m. because no further progress can be made, or because the parties reach agreement on settlement, required participants will be excused by the Court at that time and may then leave the courthouse. If a mediation is still ongoing at .m., Judge Burke will then talk with the parties to determine whether there is joint interest in extending the mediation. If any party has questions about these timing requirements, they should contact Judge Burke’s Chambers by phone in advance of the mediation to address those questions. REQUIRED PARTICIPANTS 3. Each party must be represented at the mediation conference by at least one of each of the following types of required participants, each of whom should be very familiar with the case: (a) Delaware counsel; (b) outside counsel (if the case is not being litigated exclusively by Delaware counsel); and (c) a party representative who has full authority to act on behalf of that party. A representative with “full authority” is someone who, if persuaded during mediation that their side should offer or accept a certain amount of money to settle the case, has the ability, on the spot, to authorize the offer or acceptance of such a payment—even if prior to the start of the mediation that representative’s party had not expected to offer or accept a payment of that size. A representative with “full authority” is also someone who has knowledge of the dispute and has knowledge of the business objectives and operations of the representative’s company (if applicable), so that the representative can generate and consider solutions in real time during the mediation. If any party has any questions as to whether they are able to bring a representative with settlement authority to the mediation, they should contact Judge Burke’s Chambers by phone in advance of the mediation to address those questions. In-person attendance at the mediation conference by the required participants described above is required unless otherwise authorized by the Court. Any request to modify this in-person- attendance requirement shall be made in writing to the Magistrate Judge, with a copy to all counsel or pro se parties, no later than fourteen (14) days before the mediation conference. CONTACT INFORMATION FOR REQUIRED PARTICIPANTS 4(a). No later than the date on which mediation statements are due (see ¶ 5 below), counsel shall provide to the Court in a writing separate from the mediation statement, for each attorney who will be attending the mediation conference: (i) a direct dial work telephone number, (ii) a cellular telephone number, and (iii) an e-mail address where the attorney can be regularly reached. Unrepresented parties shall provide at least one of these three forms of contact information. 4(b). No later than the date on which mediation statements are due (see ¶ 5 below), counsel shall submit a list of all participants, including attorney and non-attorney representatives who will be attending mediation on behalf of their party, to the opposing party or parties. If a party has concerns regarding the disclosed attendees for the opposing party, they should raise those concerns promptly with counsel for the opposing party and with the Court. CONFIDENTIAL MEDIATION STATEMENTS 5. On or before , , an original and one copy of a confidential mediation statement containing all of the information required by ¶ 7 shall be submitted only to the Magistrate Judge. The mediation statements shall be delivered to the Clerk’s Office in an envelope addressed to U. S. Magistrate Judge Christopher J. Burke and marked “CONFIDENTIAL MEDIATION STATEMENT.” The statements shall not be exchanged among the parties or counsel (unless the parties jointly agree to do so), shall not be provided to the trial judge, and shall not become part of the record in this matter. Mediation statements shall not be electronically filed since they are not part of the Court record. 6. The mediation statements may be in memorandum or letter form. They must be double-spaced, in no less than a 12-point font, and be no longer than ten (10) pages. 7. The mediation statements must contain each of the following headings and must contain a discussion of each of the topics described below: a) “The Parties”: Provide a description of who the parties are, their relationship, if any, to each other, and by whom each party is represented, including the identity of all individuals who will be participating on behalf of a party during the mediation conference. b) “Factual and Legal Background”: Provide a brief factual background, clearly indicating which material facts are or are not in dispute, and a brief summary of the relevant law, including applicable statutes, cases and standards. Explain your side’s position as to the key factual and legal issues in the case. It is helpful to the Court, particularly with regard to complex litigation in which a large number of legal issues are pending and unresolved, if counsel for all sides can communicate with each other in advance of filing the mediation statement, in order to attempt to ensure that all of parties will address the same key legal issues in their respective statements.1 1 In patent cases, the parties need not provide a summary of applicable law as to issue areas that are common to most such cases (e.g., the legal requirements for direct and indirect patent infringement or for demonstrating patent invalidity). However, to the extent that the case involves legal issues that do not commonly arise in every patent litigation, a summary of applicable law as to those issues would be helpful. c) “Honest Discussion of Strengths and Weaknesses”: Provide an honest discussion of the strengths and weaknesses of the party's claims and/or defenses. This section should include description of both strengths and weaknesses— not just the former. d) “Settlement Efforts”: Provide a brief description of prior settlement negotiations and discussions, including the most recent offers or demands exchanged between the parties, the reasons for rejection, and the party's assessment as to why settlement has not been reached. e) “Settlement Proposal”: Describe the party’s proposed framework for a resolution (i.e., describe what the material components of a settlement agreement are from the party’s perspective and provide a proposal as to what the content of each of those components should be). Identify any interests or issues not directly involved in this matter that may frustrate or further settlement. If the party has any suggestions as to how the Court may be helpful in reaching a resolution, such suggestions should also be described. f) “Fees and Costs”: List separately each of the following: (i) attorneys’ fees and costs incurred to date; (ii) other fees and costs incurred to date; (iii) good faith estimate of additional attorneys’ fees and costs to be incurred if this matter is not settled; and (iv) good faith estimate of additional other fees and costs to be incurred if this matter is not settled. In addition to the required topics described above, and provided that the mediation statement complies with the page limit stated above, counsel are encouraged to address any other matter they believe may be of assistance to the Court. 8. Pertinent documents may be submitted as exhibits to the mediation statement. Counsel are requested to limit such exhibits to those that are most directly relevant to the mediation, and to try to limit the total number of pages of exhibits to a manageable number.2 CONFIDENTIALITY 9. The contents of the mediation statements and the mediation conference discussions, including any resolution or settlement, shall remain confidential, shall not be used in the present litigation nor any other litigation (whether presently pending or filed in the future), and shall not be construed as nor constitute an admission. Breach of this provision shall subject the violator to sanctions. EX PARTE CONTACTS 10. Before, during, and after the scheduled mediation conference, the Court may find it necessary and useful to communicate with one or more parties outside the presence of the other party or parties. REQUEST TO BRING ELECTRONIC EQUIPMENT 11(a). Possession by an attorney of an electronic device is permitted in accordance with this Court's Standing Order regarding possession by attorneys of cameras and personal electronic devices, dated May 15, 2023. Any request that representatives of a party be permitted to utilize electronic devices during the mediation conference (i.e., contrary to the provisions in the Standing Order) shall be made in writing by counsel and shall be submitted in a separate letter no later than the date on which mediation statements are due (see ¶ 5 above). The request shall include the name(s) of the individual(s), a list of the equipment requested to be authorized, and a representation about why that counsel believes the presence of the requested equipment will be of assistance in the mediation process. 2 In a patent case, the Plaintiff(s) should include the patent(s)-in-suit as an exhibit/exhibits to their mediation statement. 11(b). To obtain WiFi access for the date(s) of mediation, counsel are directed to the Court’s website. It is the responsibility of Delaware counsel to complete and submit the required form on the website to obtain authorization of the Court, no later than 5 business days prior to the date on which the mediation conference is scheduled. Failure to submit the request in accordance with the Court’s website will result in the request being denied. OBLIGATION OF GOOD FAITH PARTICIPATION 12. The required participants shall be available and accessible throughout the mediation process. The Court expects the parties’ full and good faith cooperation with the mediation process. In particular, the Court expects both the lawyers and the party representatives to be fully prepared to participate. The Court encourages all participants to keep an open mind in order to reassess their previous positions and to find creative means for resolving the dispute. AVOIDANCE OF SANCTIONS 13. All counsel are reminded of their obligations to read and comply with this Order. Delaware counsel are reminded of their obligations to inform out-of-state counsel of this Order. To avoid the imposition of sanctions, counsel shall advise the Court immediately of any problems regarding compliance with this Order. /s/ Christopher J. Burke UNITED STATES MAGISTRATE JUDGE
=== Rule 16 Scheduling Order - Patent - Revised 03/2025 ===
SCHEDULING ORDER REVISED March 2025 For Patent Cases This ____ day of ________, 202__, the Court having conducted an initial Rule 16 scheduling and planning conference pursuant to Federal Rule of Civil Procedure 16(b) and Local Rule 16.1 on ___________, 202__, 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 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)(1) within five (5) days of the date of this Order. 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 on Magistrate Judge Burke’s section of the Court’s website (http://www.ded.uscourts.gov) under the “Guidelines” tab, 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 ___________, 202_. 3. 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 file it with the Court within ten (10) 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 7(g) below. 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. 4. Papers Filed Under Seal. When filing papers under seal, counsel shall follow the District Court’s policy on Filing Sealed Civil Documents in CM/ECF and section G of the 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. Should any party intend to request to seal or redact all or any portion of a transcript of a court proceeding (including a teleconference), such party should expressly note that intent at the start of the court proceeding. Should the party subsequently choose to make a request for sealing or redaction, it must, promptly after the completion of the transcript, file with the Court a motion for sealing/redaction, and include as attachments: (1) a copy of the complete transcript highlighted so the Court can easily identify and read the text proposed to be sealed/redacted; and (2) a copy of the proposed redacted/sealed transcript. With its request, the party seeking redactions must demonstrate why there is good cause for the redactions and why disclosure of 2 the redacted material would work a clearly defined and serious injury to the party seeking redaction. 5. Courtesy Copies. The parties shall provide to the Court two (2) courtesy copies of all briefs and any other document filed in support of any briefs (i.e., appendices, exhibits, declarations, affidavits, etc.). This provision also applies to papers filed under seal. Unless ordered differently by the Court, such copies must be provided to the Court by no later than noon the business day after the filing is made electronically. 6. [Eliminate this paragraph in ANDA cases] Disclosures. Absent agreement among the parties, and approval of the Court: a. If one or more of the patents-in-suit have already been licensed or the subject of a settlement agreement, either: (1) Plaintiff shall provide the licenses and/or settlement agreements to Defendant no later than _____________, or (2) if Plaintiff requires a Court Order to make such disclosures, Plaintiff shall file any necessary proposed orders no later than _____________. Plaintiff shall represent in the scheduling order that it is complying or has complied with this requirement. b. By ___________, Plaintiff shall identify the accused product(s), including accused methods and systems, and its damages model, as well as the asserted patent(s) that the accused product(s) allegedly infringe(s). Plaintiff shall also produce the file history for each asserted patent. c. By ___________, Defendant shall produce core technical documents related to the accused product(s), sufficient to show how the accused product(s) work(s), 3 including but not limited to non-publicly available operation manuals, product literature, schematics, and specifications. Defendant shall produce sales figures for the accused product(s). d. By ___________, Plaintiff shall produce an initial claim chart relating each known accused product to the asserted claims each such product allegedly infringes. e. By ___________, Defendant shall produce its initial invalidity contentions for each asserted claim, as well as the known related invalidating references. f. g. h. By ___________, Plaintiff shall provide final infringement contentions. By ___________, Defendant shall provide final invalidity contentions. 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. 7. Discovery. Unless otherwise ordered by the Court, the limitations on discovery set forth in Local Rule 26.1 shall be strictly observed. a. Discovery Cut Off. All discovery in this case shall be initiated so that it will be completed on or before ________, 202_. b. Document Production. Document production shall be substantially complete by _______, 202_. c. Requests for Admission. A maximum of ___ requests for admission are permitted for each side. d. Interrogatories. 4 i. A maximum of ___ interrogatories, including contention interrogatories, are permitted for each side. 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 served, shall first be addressed by the party with the burden of proof. The adequacy of all interrogatory answers shall, in part, 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 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 26(a)(2) disclosure of expert testimony is due on or before ___________, 202_. The supplemental disclosure to contradict or rebut evidence on the same matter identified by another party is due on or before ____________, 202_. Reply expert reports from the party with the initial burden of proof are due on or before ___________, 202_. 5 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. Expert Report Supplementation. The parties agree they [will] [will not] [CHOOSE ONE] permit expert declarations to be filed in connection with motions briefing (including case-dispositive motions). iii. Objections to Expert Testimony. [For ANDA cases] 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 fourteen days after the close of expert discovery, unless otherwise ordered by the Court. Briefing will be presented pursuant to the Court’s Local Rules. [For non-ANDA cases] 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. Briefing on such motions is subject to the page limits set out in connection with briefing of case dispositive motions. 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. 6 ii. Should counsel find, after good faith efforts—including verbal communication among Delaware and Lead Counsel for all parties to the dispute—that they are unable to resolve a discovery matter or a dispute regarding a protective order (other than that involving the initial drafting of a protective order, which is discussed further below), the parties involved in the discovery matter or protective order dispute shall file a joint letter in substantially the following form: Dear Judge Burke: 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. The moving party (i.e., the party seeking relief from the Court) should also file a “Motion For Teleconference To Resolve Discovery Dispute.” The suggested text for this motion can be found in Judge Burke’s section of the Court’s website, in the “Forms” tab, under the heading “Discovery Matters - Motion to Resolve Discovery Dispute.” 7 iv. The Court will thereafter set a discovery dispute telephone conference and a briefing schedule. The movant’s opening letter brief shall include as attachments: (1) a proposed order, attached as an exhibit, setting out the nature of the relief requested of the Court; and (2) to the extent that the dispute relates to responses to certain discovery requests, an attached exhibit (or exhibits) containing the requests and the responses in dispute. To the extent that factual issues are disputed or are otherwise central to the Court’s analysis, the parties shall attach as an exhibit (or exhibits) to their letter briefs sworn declarations or affidavits regarding those issues. The parties should also consult and follow Judge Burke’s “Guidelines for Discovery Disputes,” which is found in the “Guidelines” tab on Judge Burke’s section of the District Court’s website. The parties shall also comply with paragraph 5 regarding the submission of courtesy copies; if they fail to do so, the telephone conference may be cancelled. v. Should the Court find further briefing necessary upon the 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. vi. Should counsel find, after good faith efforts—including verbal communication among Delaware and Lead Counsel for all parties to the dispute—that they are unable to resolve a dispute regarding the initial drafting of a protective order, the parties involved in the dispute shall file a joint letter in substantially the following form: Dear Judge Burke: The parties in the above-referenced matter write to request the scheduling of a 8 teleconference to resolve a protective order dispute. 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] vii. The parties shall also file a “Joint Motion For Teleconference To Resolve Protective Order Dispute.” The suggested text for this motion can be found in Judge Burke’s section of the Court’s website, in the “Forms” tab, under the heading “Discovery Matters - Joint Motion to Resolve Protective Order Dispute.” viii. The Court will thereafter set a protective order dispute teleconference and a briefing schedule. Along with their respective letter briefs, each side should include as an attachment the side’s proposal as to how the content of the disputed portion(s) of the protective order should read. The parties shall also comply with paragraph 5 regarding the submission of courtesy copies; if they fail to do so, the telephone conference may be cancelled. ix. Should the Court find further briefing necessary upon the 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. 9 8. Motions to Amend. a. Any motion 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) single-spaced 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to amend. 9. Motions to Strike. a. Any motion to strike any pleading or other document or testimony shall NOT be accompanied by an opening brief but shall, instead, be accompanied by a letter, not to exceed three (3) single-spaced 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to strike. 10 10. Motions to Stay. a. Any motion to stay shall NOT be accompanied by an opening brief but shall, instead, be accompanied by a letter, not to exceed three (3) single-spaced pages, describing the basis for the requested relief. 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to stay. 11. Tutorial Describing the Technology and Matters in Issue. The parties may (though they are not required to) provide the Court, no later than the date on which the Joint Claim Construction Brief is due, with a tutorial on the technology at issue. In this regard, the parties may separately submit a DVD/flash drive containing a tutorial that is not more than 30 minutes in length. The tutorial should focus on the technology at issue and should not be used to argue claim construction contentions. The parties may choose to file their tutorial(s) under seal, subject to any protective order in effect. Each party may comment, in writing (in no more than 5 pages) on the opposing party’s tutorial. Any such comment shall be filed no later than seven days after the Joint Claim Construction Brief is due. As to the format selected, the parties should confirm the Court’s technical abilities to access the information contained in the tutorial. 12. Claim Construction Issue Identification. On ____________, 202_, the parties shall exchange a list of those claim term(s)/phrase(s) that they believe need construction and 11 their proposed claim construction 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 with the Court on ____________, 202_. 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) at issue as well as those portions of the intrinsic record relied upon shall be submitted with this Joint Claim Construction Chart. In this joint submission, the parties shall not provide argument. 13. Claim Construction Briefing. Plaintiff shall serve, but not file, its opening brief, not to exceed 20 pages, on claim construction on or before ____________, 202_. Defendant shall serve, but not file, its answering claim construction brief, not to exceed 30 pages, on or before ____________, 202_. Plaintiff shall serve, but not file, its reply brief, not to exceed 20 pages, on or before ____________, 202_. Defendant shall serve, but not file, its sur- reply brief, not to exceed 10 pages, on or before ____________, 202_. 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: I. II. A. Agreed-upon Constructions Disputed Constructions [TERM 1] 1. Plaintiff’s Opening Position 12 2. 3. 4. Defendant’s Answering Position Plaintiff’s Reply Position Defendant’s Sur-Reply Position B. [TERM 2] 1. 2. 3. 4. Plaintiff’s Opening Position Defendant’s Answering Position Plaintiff’s Reply Position Defendant’s Sur-Reply Position 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 file them in a joint appendix. Each party shall file concurrently with the Joint Claim Construction Brief 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 Brief. The motion shall not contain any argument and shall simply state that the party “requests that the Court adopt the claim construction position[s] of [the party] set forth in the Joint Claim Construction Brief (D.I. [ ]).” 14. Hearing on Claim Construction. Beginning at _______ _.m. on ___________, 202_, 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 the Joint Claim Construction Brief is due: (i) whether they request leave to present testimony at the hearing; (ii) the amount of time they are requesting be allocated to them for the hearing; and (iii) the order in which they intend to present the claim terms at issue, including which side will present first for each term. Provided that the parties comply with all portions of this Scheduling Order, and any other orders of the Court, the Court will endeavor to issue its claim construction order within sixty (60) days of the conclusion of the claim construction hearing. 13 15. Interim Status Report. On _______, 202_, counsel shall file a joint letter with the Court with an interim report on the nature 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. 16. Supplementation. Absent agreement among the parties, and approval of the Court, no later than _____________________, the parties must finally supplement, inter alia, the identification of all accused products and of all invalidity references. 17. Case Dispositive Motions. [For ANDA cases] Absent agreement between the parties, and prior approval from the Court, the Court will not hear case dispositive motions in ANDA cases. [For non-ANDA cases] a. All case dispositive motions, an opening brief, and affidavits, if any, in support of the motion shall be served and filed on or before ____________, 202_ . Briefing will be presented pursuant to the Court’s Local Rules, as modified by this Order. b. No early motions without leave. No case dispositive motion under Rule 56 may be filed more than ten (10) days before the above date without leave of the Court. A party seeking leave to file a case dispositive motion prior to ten (10) days before the deadline set forth above shall do so by filing a motion and an accompanying letter brief with the Court of no more than four (4) single-spaced pages, explaining the reasons why an earlier-filed motion should be permitted. If any party wishes to contest this request, it may do so by filing a responsive letter brief of no more than four (4) single-spaced pages, within seven (7) days from the date the requesting party filed its brief. No reply briefs shall be filed. 14 c. Concise Statement of Facts Requirement. Any motion for summary judgment shall be accompanied by a separate concise statement, not to exceed six pages, which details each material fact that the moving party contends is essential for the Court’s resolution of the summary judgment motion (not the entire case) and as to which the moving party contends there is no genuine issue to be tried. Each fact shall be set forth in a separate numbered paragraph and shall be supported by specific citation(s) to the record. Any party opposing the motion shall include with its opposing papers a response to the moving party’s concise statement, not to exceed six pages, which admits or disputes the facts set forth in the moving party’s concise statement on a paragraph-by-paragraph basis. To the extent a fact is disputed, the basis of the dispute shall be supported by specific citation(s) to the record. Failure to respond to a fact presented in the moving party’s concise statement of facts shall indicate that fact is not in dispute for purposes of summary judgment. The party opposing the motion may also include with its opposing papers a separate concise statement, not to exceed four pages, which sets forth material facts as to which the opposing party contends there is a genuine issue to be tried. Each fact asserted by the opposing party shall also be set forth in a separate numbered paragraph and shall be supported by specific citation(s) to the record. d. The moving party shall include with its reply papers a response to the opposing party’s concise statement of facts, not to exceed four pages, on a paragraph-by- paragraph basis. e. Page limits combined with Daubert motion page 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 40 pages for all opening briefs, a combined total of 40 15 pages for all answering briefs, and a combined total of 20 pages for all reply briefs regardless of the number of case dispositive motions that are filed. In the event that a party files, in addition 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 pages permitted for all case dispositive and Daubert motions shall be increased to 50 pages for all opening briefs, 50 pages for all answering briefs, and 25 pages for all reply briefs for each SIDE.1 f. Hearing. The Court will hear argument on all pending case dispositive and Daubert motions on ____________________ beginning at _______ _.m. [The parties should propose a date approximately two to three months prior to the requested pretrial conference date.] 18. Applications by Motion. Except as otherwise specified herein, any application to the Court shall be by written motion filed with the Court. Any non-dispositive motion should contain the statement required by Local Rule 7.1.1. 19. Pretrial Conference. On ________, 202_, the Court will hold a pretrial conference in court with counsel beginning at _____ _.m. [The parties should request a date approximately two to four weeks prior to their requested trial date.] 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 with the information required by the form of Patent Pretrial 1 The parties must work together to ensure that the Court receives no more than a total of 250 pages (i.e., 50 + 50 + 25 regarding one side’s motions, and 50 + 50 + 25 regarding the other side’s motions) of briefing on all case dispositive motions and Daubert motions that are covered by this scheduling order and any other scheduling order entered in any related case that is proceeding on a consolidated or coordinated pretrial schedule. 16 Order, which can be found in the “Forms” tab on Judge Burke’s section of the Court’s website (www.ded.uscourts.gov), on or before ________, 202_. [The parties should insert a date no less than seven (7) days before the requested pretrial conference date.] 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. As noted in the Patent Pretrial Order, the parties shall include in their joint proposed pretrial order, among other things: a. a request for a specific number of hours for their trial presentations, as well as a requested number of days, based on the assumption that in a typical jury trial day (in which there is not jury selection, jury instruction, or deliberations), there will be 5 ½ to 6 ½ hours of trial time, and in a typical bench trial day there will be 6 to 7 hours of trial time; b. their position as to whether the Court should allow objections to efforts to impeach a witness with prior testimony, including objections based on lack of completeness and/or lack of inconsistency; c. their position as to whether the Court should rule at trial on objections to expert testimony as beyond the scope of prior expert disclosures, taking time from the parties’ trial presentation to argue and decide such objections, or defer ruling on all such objections unless renewed in writing following trial, subject to the proviso that a party prevailing on such a post-trial objection will be entitled to have all of its costs associated with a new trial paid for by the party that elicited the improper expert testimony at the earlier trial; and; d. their position as to how to make motions for judgment as a matter of law, whether it be immediately at the appropriate point during trial or at a subsequent break, whether 17 the jury should be in or out of the courtroom, and whether such motions may be supplemented in writing. 20. 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) single-spaced pages of argument and may be opposed by a maximum of three (3) single-spaced pages of argument, and the party making the in limine request may add a maximum of one (1) additional single-spaced 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 single-spaced submission (and, if the moving party, a single one (1)-page single-spaced reply), unless otherwise ordered by the Court. No separate briefing shall be submitted on in limine requests, unless otherwise permitted by the Court. 21. Jury Instructions, Voir Dire, and Special Verdict Forms. Where a case is to be tried to a jury, pursuant to Local Rules 47.1 and 51.1 the parties should file (i) proposed voir dire, (ii) preliminary jury instructions, (iii) final jury instructions, and (iv) special verdict forms three (3) full business days before the final pretrial conference. This submission shall be accompanied by a courtesy copy containing electronic files of these documents, in Word format, which may be submitted by e-mail to the trial judge’s staff. 22. Trial. This matter is scheduled for a __ day ____ [jury/bench] trial beginning at 9:30 a.m. on _________, 202_, with the subsequent trial days beginning at 9:00 a.m. Until the 18 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. 23. [Eliminate this paragraph in ANDA cases] Judgment on Verdict and Post- Trial Status Report. Within seven (7) days after a jury returns a verdict in any portion of a jury trial, the parties shall jointly file a form of order to enter judgment on the verdict. At the same time, the parties shall file a joint status report, indicating among other things how the case should proceed and listing any post-trial motions each party intends to file. 24. Post-Trial Motions. [For ANDA cases] The parties will address the post-trial briefing schedule and page limits in the proposed final pretrial order. [For non-ANDA cases] Unless otherwise ordered by the Court, all SIDES are limited to a maximum of 20 pages of opening briefs, 20 pages of answering briefs, and 10 pages of reply briefs relating to any post-trial motions filed by that side, no matter how many such motions are filed. ____________________________________ Christopher J. Burke UNITED STATES MAGISTRATE JUDGE 19 [Counsel Shall Provide a Chart of All Relevant Deadlines] EVENT DEADLINE 20
=== Rule 16 Scheduling Order - Non Patent - Revised 03/22 ===
REVISED March 2022 For Non-Patent Cases SCHEDULING ORDER This ____ day of ________, 202__, the Court having conducted an initial Rule 16 scheduling and planning conference pursuant to Federal Rule of Civil Procedure 16(b) and Local Rule 16.1 on ___________, 202__, 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 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)(1) within five (5) days of the date of this Order. 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 on Magistrate Judge Burke’s section of the Court’s website (http://www.ded.uscourts.gov) under the “Guidelines” tab, 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 ___________, 202_. 3. 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 file it with the Court within ten (10) 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 6(g) below. 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. 4. Papers Filed Under Seal. When filing papers under seal, counsel shall follow the District Court’s policy on Filing Sealed Civil Documents in CM/ECF and section G of the 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. Should any party intend to request to seal or redact all or any portion of a transcript of a court proceeding (including a teleconference), such party should expressly note that intent at the start of the court proceeding. Should the party subsequently choose to make a request for sealing or redaction, it must, promptly after the completion of the transcript, file with the Court a motion for sealing/redaction, and include as attachments: (1) a copy of the complete transcript highlighted so the Court can easily identify and read the text proposed to be sealed/redacted; and (2) a copy of the proposed redacted/sealed transcript. With its request, the party seeking redactions must demonstrate why there is good cause for the redactions and why disclosure of 2 the redacted material would work a clearly defined and serious injury to the party seeking redaction. 5. Courtesy Copies. The parties shall provide to the Court two (2) courtesy copies of all briefs and any other document filed in support of any briefs (i.e., appendices, exhibits, declarations, affidavits, etc.). This provision also applies to papers filed under seal. Unless ordered differently by the Court, such copies must be provided to the Court by no later than noon the business day after the filing is made electronically. 6. Discovery. Unless otherwise ordered by the Court, the limitations on discovery set forth in Local Rule 26.1 shall be strictly observed. a. Discovery Cut Off. All discovery in this case shall be initiated so that it will be completed on or before ________, 202_. b. Document Production. Document production shall be substantially complete by _______, 202_. 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. 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 served, shall first be addressed by the party with the burden of 3 proof. The adequacy of all interrogatory answers shall, in part, 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 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 26(a)(2) disclosure of expert testimony is due on or before ___________, 202_. The supplemental disclosure to contradict or rebut evidence on the same matter identified by another party is due on or before ____________, 202_. Reply expert reports from the party with the initial burden of proof are due on or before ___________, 202_. 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. 4 ii. Expert Report Supplementation. The parties agree they [will] [will not] [CHOOSE ONE] permit expert declarations to be filed in connection with motions briefing (including case-dispositive motions). iii. 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. 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. ii. Should counsel find, after good faith efforts—including verbal communication among Delaware and Lead Counsel for all parties to the dispute—that they are unable to resolve a discovery matter or a dispute regarding a protective order (other than that involving the initial drafting of a protective order, which is discussed further below), the parties involved in the discovery matter or protective order dispute shall file a joint letter in substantially the following form: Dear Judge Burke: 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 5 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. The moving party (i.e., the party seeking relief from the Court) should also file a “Motion For Teleconference To Resolve Discovery Dispute.” The suggested text for this motion can be found in Judge Burke’s section of the Court’s website, in the “Forms” tab, under the heading “Discovery Matters - Motion to Resolve Discovery Dispute.” iv. The Court will thereafter set a discovery dispute telephone conference and a briefing schedule. The movant’s opening letter brief shall include as attachments: (1) a proposed order, attached as an exhibit, setting out the nature of the relief requested of the Court; and (2) to the extent that the dispute relates to responses to certain discovery requests, an attached exhibit (or exhibits) containing the requests and the responses in dispute. To the extent that factual issues are disputed or are otherwise central to the Court’s analysis, the parties shall attach as an exhibit (or exhibits) to their letter briefs sworn declarations or affidavits regarding those issues. The parties should also consult and follow Judge Burke’s “Guidelines for Discovery Disputes,” which is found in the “Guidelines” tab on Judge Burke’s section of the District Court’s website. The parties shall also comply with paragraph 5 regarding the submission of courtesy copies; if they fail to do so, the telephone conference may be cancelled. 6 v. Should the Court find further briefing necessary upon the 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. vi. Should counsel find, after good faith efforts—including verbal communication among Delaware and Lead Counsel for all parties to the dispute—that they are unable to resolve a dispute regarding the initial drafting of a protective order, the parties involved in the dispute shall file a joint letter in substantially the following form: Dear Judge Burke: The parties in the above-referenced matter write to request the scheduling of a teleconference to resolve a protective order dispute. 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] vii. The parties shall also file a “Joint Motion For Teleconference To Resolve Protective Order Dispute.” The suggested text for this motion can be found in Judge 7 Burke’s section of the Court’s website, in the “Forms” tab, under the heading “Discovery Matters - Joint Motion to Resolve Protective Order Dispute.” viii. The Court will thereafter set a protective order dispute teleconference and a briefing schedule. Along with their respective letter briefs, each side should include as an attachment the side’s proposal as to how the content of the disputed portion(s) of the protective order should read. The parties shall also comply with paragraph 5 regarding the submission of courtesy copies; if they fail to do so, the telephone conference may be cancelled. ix. Should the Court find further briefing necessary upon the 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. 7. Motions to Amend. a. Any motion 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) single-spaced 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to amend. 8 8. Motions to Strike. a. Any motion to strike any pleading or other document or testimony shall NOT be accompanied by an opening brief but shall, instead, be accompanied by a letter, not to exceed three (3) single-spaced 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to strike. 9. Motions to Stay. a. Any motion to stay shall NOT be accompanied by an opening brief but shall, instead, be accompanied by a letter, not to exceed three (3) single-spaced pages, describing the basis for the requested relief. 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) single-spaced pages. c. Within three (3) days thereafter, the moving party may file a reply letter, not to exceed two (2) single-spaced pages, and, by this same date, the parties may file a letter requesting a teleconference to address the motion to stay. 9 10. Interim Status Report. On _______, 202_, counsel shall file a joint letter with the Court with an interim report on the nature 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. 11. Case Dispositive Motions. a. All case dispositive motions, an opening brief, and affidavits, if any, in support of the motion shall be served and filed on or before ____________, 202_ [a date approximately four months prior to the pretrial conference]. Briefing will be presented pursuant to the Court’s Local Rules. b. No early motions without leave. No case dispositive motion under Rule 56 may be filed more than ten (10) days before the above date without leave of the Court. A party seeking leave to file a case dispositive motion prior to ten (10) days before the deadline set forth above shall do so by filing a motion and an accompanying letter brief with the Court of no more than four (4) single-spaced pages, explaining the reasons why an earlier-filed motion should be permitted. If any party wishes to contest this request, it may do so by filing a responsive letter brief of no more than four (4) single-spaced pages, within seven (7) days from the date the requesting party filed its brief. No reply briefs shall be filed. c. Concise Statement of Facts Requirement. Any motion for summary judgment shall be accompanied by a separate concise statement, not to exceed six pages, which details each material fact that the moving party contends is essential for the Court’s resolution of the summary judgment motion (not the entire case) and as to which the moving party contends 10 there is no genuine issue to be tried. Each fact shall be set forth in a separate numbered paragraph and shall be supported by specific citation(s) to the record. Any party opposing the motion shall include with its opposing papers a response to the moving party’s concise statement, not to exceed six pages, which admits or disputes the facts set forth in the moving party’s concise statement on a paragraph-by-paragraph basis. To the extent a fact is disputed, the basis of the dispute shall be supported by specific citation(s) to the record. Failure to respond to a fact presented in the moving party’s concise statement of facts shall indicate that fact is not in dispute for purposes of summary judgment. The party opposing the motion may also include with its opposing papers a separate concise statement, not to exceed four pages, which sets forth material facts as to which the opposing party contends there is a genuine issue to be tried. Each fact asserted by the opposing party shall also be set forth in a separate numbered paragraph and shall be supported by specific citation(s) to the record. d. The moving party shall include with its reply papers a response to the opposing party’s concise statement of facts, not to exceed four pages, on a paragraph-by- paragraph basis. 12. Applications by Motion. Except as otherwise specified herein, any application to the Court shall be by written motion filed with the Court. Any non-dispositive motion should contain the statement required by Local Rule 7.1.1. 13. Pretrial Conference. On ________, 202_, the Court will hold a pretrial conference in court with counsel beginning at _____ _.m. [The parties should request a date approximately two to four weeks prior to their requested trial date.] Unless otherwise ordered by the Court, the parties should assume that filing the pretrial order satisfies the pretrial disclosure 11 requirement of Federal Rule of Civil Procedure 26(a)(3). The parties shall file with the Court the joint proposed final pretrial order with the information required by the form of Final Non-Patent Pretrial Order, which can be found in the “Forms” tab on Judge Burke’s section of the Court’s website, on or before ________, 202_. [The parties should insert a date no less than seven (7) days before the requested pretrial conference date.] 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. 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) single-spaced pages of argument and may be opposed by a maximum of three (3) single-spaced pages of argument, and the party making the in limine request may add a maximum of one (1) additional single-spaced 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 single-spaced submission (and, if the moving party, a single one (1)-page single-spaced reply), unless otherwise ordered by the Court. No separate briefing shall be submitted on in limine requests, unless otherwise permitted by the Court. 15. Jury Instructions, Voir Dire, and Special Verdict Forms. Where a case is to be tried to a jury, pursuant to Local Rules 47.1 and 51.1 the parties should file (i) proposed voir dire, (ii) preliminary jury instructions, (iii) final jury instructions, and (iv) special verdict forms 12 three (3) full business days before the final pretrial conference. This submission shall be accompanied by a courtesy copy containing electronic files of these documents, in Word format, which may be submitted by e-mail to the trial judge’s staff. 16. Trial. This matter is scheduled for a __ day ____ [jury/bench] trial beginning at 9:30 a.m. on _________, 202_, with the subsequent trial days beginning at 9:00 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. ____________________________________ Christopher J. Burke UNITED STATES MAGISTRATE JUDGE 13 [Counsel Shall Provide a Chart of All Relevant Deadlines] EVENT DEADLINE 14
=== Standing Order in Non-Pro Se Matters for Objections filed under Federal Rule of Civil Procedure 72 ===
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE STANDING ORDER IN NON-PRO SE MATTERS FOR OBJECTIONS FILED UNDER FED. R. CIV. P. 72 WHEREAS pursuant to Federal Rule of Civil Procedure 72, objections to a Magistrate Judge’s decision on dispositive and non-dispositive matters are due within fourteen (14) days after being served with a copy of the Report & Recommendation (“R&R”) or Order, IT IS ORDERED THAT in all cases in which such objections are filed, unless otherwise ordered by the District Judge, the objecting party must provide the District Judge to whom the case is assigned a courtesy copy of all filings (e.g., motions, briefs, appendices) associated with the matter to which the R&R or Order relates. IT IS FURTHER ORDERED THAT such courtesy copies shall be provided to the District Judge no later than five (5) days after the objections are filed. ___________________________________ Honorable Mary Pat Thynge U.S. Magistrate Judge U.S. District Court for the District of Delaware ___________________________________ Honorable Leonard P. Stark U.S. Magistrate Judge U.S. District Court for the District of Delaware DATED: November 16, 2009
=== Standing Order in Pro Se Matters for Objections filed under Federal Rule of Civil Procedure 72 ===
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE STANDING ORDER IN PRO SE MATTERS FOR OBJECTIONS FILED UNDER FED. R. CIV. P. 72 WHEREAS pursuant to Federal Rule of Civil Procedure 72, objections to a Magistrate Judge’s decision on dispositive and non-dispositive matters are due within fourteen (14) days after being served with a copy of the Report & Recommendation (“R&R”) or Order, IT IS ORDERED THAT in all pro se cases in which such objections are filed, unless otherwise ordered by the District Judge, the party represented by counsel must provide the District Judge to whom the case is assigned a courtesy copy of all filings (e.g., motions, briefs, appendices) associated with the matter to which the R&R or Order relates. IT IS FURTHER ORDERED THAT such courtesy copies shall be provided to the District Judge no later than five (5) days after the objections are filed. ___________________________________ Honorable Mary Pat Thynge U.S. Magistrate Judge U.S. District Court for the District of Delaware ___________________________________ Honorable Leonard P. Stark U.S. Magistrate Judge U.S. District Court for the District of Delaware DATED: November 16, 2009
=== U.S. Magistrate Judge Consent Forms - Revised 01/09 ===
AO 85 (Rev. 01/09) Notice, Consent, and Reference of a Civil Action to a Magistrate Judge UNITED STATES DISTRICT COURT for the __________ District of __________ Plaintiff v. Defendant Civil Action No. NOTICE, CONSENT, AND REFERENCE OF A CIVIL ACTION TO A MAGISTRATE JUDGE Notice of a magistrate judge’s availability. A United States magistrate judge of this court is available to conduct all proceedings in this civil action (including a jury or nonjury trial) and to order the entry of a final judgment. The judgment may then be appealed directly to the United States court of appeals like any other judgment of this court. A magistrate judge may exercise this authority only if all parties voluntarily consent. You may consent to have your case referred to a magistrate judge, or you may withhold your consent without adverse substantive consequences. The name of any party withholding consent will not be revealed to any judge who may otherwise be involved with your case. Consent to a magistrate judge’s authority. The following parties consent to have a United States magistrate judge conduct all proceedings in this case including trial, the entry of final judgment, and all post-trial proceedings. Parties’ printed names Signatures of parties or attorneys Dates IT IS ORDERED: This case is referred to a United States magistrate judge to conduct all proceedings and order the entry of a final judgment in accordance with 28 U.S.C. § 636(c) and Fed. R. Civ. P. 73. Reference Order Date: District Judge’s signature Printed name and title Note: Return this form to the clerk of court only if you are consenting to the exercise of jurisdiction by a United States magistrate judge. Do not return this form to a judge. AO 85A (Rev. 01/09) Notice, Consent, and Reference of a Dispositive Motion to a Magistrate Judge UNITED STATES DISTRICT COURT for the __________ District of__________ Plaintiff v. Defendant Civil Action No. NOTICE, CONSENT, AND REFERENCE OF A DISPOSITIVE MOTION TO A MAGISTRATE JUDGE Notice of a magistrate judge’s availability. A United States magistrate judge of this court is available to conduct all proceedings and enter a final order dispositive of each motion. A magistrate judge may exercise this authority only if all parties voluntarily consent. You may consent to have motions referred to a magistrate judge, or you may withhold your consent without adverse substantive consequences. The name of any party withholding consent will not be revealed to any judge who may otherwise be involved with your case. Consent to a magistrate judge’s consideration of a dispositive motion. The following parties consent to have a United States magistrate judge conduct any and all proceedings and enter a final order as to each motion identified below (identify each motion by document number and title). Motions: Parties’ printed names Signatures of parties or attorneys Dates IT IS ORDERED: The motions are referred to a United States magistrate judge to conduct all proceedings and enter a final order on the motions identified above in accordance with 28 U.S.C. § 636(c). Reference Order Date: District Judge’s signature Printed name and title Note: Return this form to the clerk of court only if you are consenting to the exercise of jurisdiction by a United States magistrate judge. Do not return this form to a judge.
=== Default Standard for Discovery of Electronically Stored Information ("E-Discovery") ===
DEFAULT STANDARD FOR DISCOVERY, INCLUDING DISCOVERY OF ELECTRONICALLY STORED INFORMATION {"ESI") 1. General Provisions a. Cooperation. Parties are expected to reach agreements cooperatively on how to conduct discovery under Fed . R. Civ. P. 26-36. In the event that the parties are unable to agree on the parameters and/or timing of discovery, the following default standards shall apply until further order of the Court or the parties reach agreement. b. Proportionality. Parties are expected to use reasonable , good faith and proportional efforts to preserve, identify and produce relevant information. 1 This includes identifying appropriate limits to discovery, including limits on custodians, identification of relevant subject matter, time periods for discovery and other parameters to limit and guide preservation and discovery issues. c. Preservation of Discoverable Information. A party has a common law obligation to take reasonable and proportional steps to preserve discoverable information in the party's possession , custody or control. (i) Absent a showing of good cause by the requesting party, the parties shall not be required to modify, on a going-forward basis, the procedures used by them in the ordinary course of business to back up and archive data; provided , however, that the parties shall preserve the non-duplicative discoverable information currently in their possession , custody or control. 1lnformation can originate in any form , including ESI and paper, and is not limited to information created or stored electronically. (ii) Absent a showing of good cause by the requesting party, the categories of ESI identified in Schedule A attached hereto need not be preserved . d. Privilege. (i) The parties are to confer on the nature and scope of privilege logs for the case, including whether categories of information may be excluded from any logging requirements and whether alternatives to document-by-document logs can be exchanged . (ii) With respect to information generated after the filing of the complaint, parties are not required to include any such information in privilege logs. (iii) Activities undertaken in compliance with the duty to preserve information are protected from disclosure and discovery under Fed . R. Civ. P. 26(b)(3)(A) and (B) . (iv) Parties shall confer on an appropriate non-waiver order under Fed . R. Evid . 502 . Until a non-waiver order is entered , information that contains privileged matter or attorney work product shall be immediately returned if such information appears on its face to have been inadvertently produced or if notice is provided within 30 days of inadvertent production. 2. Initial Discovery Conference. a. Timing. Consistent with the guidelines that follow, the parties shall discuss the parameters of their anticipated discovery at the initial discovery conference (the "Initial Discovery Conference") pursuant to Fed . R. Civ. P. 26(f) , which shall take place before the Fed. R. Civ. P. 16 scheduling conference ("Rule 16 Conference"). 2 b. Content. The parties shall discuss the following : (i) The issues, claims and defenses asserted in the case that define the scope of discovery. (ii) The likely sources of potentially relevant information (i.e ., the "discoverable information"), including witnesses , custodians and other data sources (e.g., paper files , email , databases, servers, etc.). (iii) Technical information , including the exchange of production formats . (iv) The existence and handling of privileged information . (v) The categories of ESI that should be preserved. 3. Initial Disclosures. Within 30 days after the Rule 16 Conference, each party shall disclose: a. Custodians. The 1 0 custodians most likely to have discoverable information in their possession , custody or control , from the most likely to the least likely. The custodians shall be identified by name, title, role in the instant dispute, and the subject matter of the information. b. Non-custodial data sources.2 A list of the non-custodial data sources that are most likely to contain non-duplicative discoverable information for preservation and production consideration , from the most likely to the least likely. c. Notice. The parties shall identify any issues relating to: (i) Any ESI (by type, date, custodian, electronic system or other criteria) 2That is, a system or container that stores ESI , but over which an individual custodian does not organize, manage or maintain the ESI in the system or container (e.g ., enterprise system or database) . 3 that a party asserts is not reasonably accessible under Fed. R. Civ. P. 26(b)(2)(C)(i) . (ii) Third-party discovery under Fed . R. Civ. P. 45 and otherwise , including the timing and sequencing of such discovery. (iii) Production of information subject to privacy protections, including information that may need to be produced from outside of the United States and subject to foreign laws. Lack of proper notice of such issues may result in a party losing the ability to pursue or to protect such information. 4. Initial Discovery in Patent Litigation.3 a. Within 30 days after the Rule 16 Conference and for each defendant, 4 the plaintiff shall specifically identify the accused products 5 and the asserted patent(s) they allegedly infringe , and produce the file history for each asserted patent. b. Within 30 days after receipt of the above, each defendant shall produce to the plaintiff the core technical documents related to the accused product(s) , including but not limited to operation manuals, product literature, schematics, and specifications . c. Within 30 days after receipt of the above , plaintiff shall produce to each defendant an initial claim chart relating each accused product to the asserted claims each product allegedly infringes. 3As these disclosures are "initial ," each party shall be permitted to supplement. 4For ease of reference , "defendant" is used to identify the alleged infringer and "plaintiff' to identify the patentee. 5For ease of reference , the word "product" encompasses accused methods and systems as well. 4 d. Within 30 days after receipt of the above, each defendant shall produce to the plaintiff its initial invalidity contentions for each asserted claim, as well as the related invalidating references (e.g. , publications, manuals and patents). e. Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited . 5. Specific E-Discovery Issues. a. On-site inspection of electronic media. Such an inspection shall not be permitted absent a demonstration by the requesting party of specific need and good cause. b. Search methodology. If the producing party elects to use search terms to locate potentially responsive ESI , it shall disclose the search terms to the requesting party. Absent a showing of good cause, a requesting party may request no more than 10 additional terms to be used in connection with the electronic search . Focused terms, rather than over-broad terms (e.g ., product and company names), shall be employed . The producing party shall search (i) the non-custodial data sources identified in accordance with paragraph 3(b) ; and (ii) emails and other ESI maintained by the custodians identified in accordance with paragraph 3(a) . c. Format. ESI and non-ESI shall be produced to the requesting party as text searchable image files (e.g., PDF or TIFF) . When a text-searchable image file is produced , the producing party must preserve the integrity of the underlying ESI , i.e., the 5 original formatting , the metadata (as noted below) and , where applicable , the revision history. The parties shall produce their information in the following format: single page TIFF images and associated multi-page text files containing extracted text or OCR with Concordance and Opticon load files containing all requisite information including relevant metadata. d. Native files. The only files that should be produced in native format are files not easily converted to image format, such as Excel and Access files . e. Metadata fields. The parties are only obligated to provide the following metadata for all ESI produced , to the extent such metadata exists: Custodian , File Path , Email Subject, Conversation Index, From , To , CC , BCC , Date Sent, Time Sent, Date Received , Time Received , Filename, Author, Date Created, Date Modified , MD5 Hash, File Size , File Extension , Control Number Begin , Control Number End, Attachment Range , Attachment Begin , and Attachment End (or the equivalent thereof) . 6 SCHEDULE A 1. Deleted , slack, fragmented , or other data only accessible by forensics . 2. Random access memory (RAM) , temporary files , or other ephemeral data that are difficult to preserve without disabling the operating system. 3. On-line access data such as temporary internet files , history, cache , cookies , and the like. 4. Data in metadata fields that are frequently updated automatically, such as last opened dates. 5. Back-up data that are substantially duplicative of data that are more accessible elsewhere. 6. Voice messages. 7. Instant messages that are not ordinarily printed or maintained in a server dedicated to instant messaging . 8. Electronic mail or pin-to-pin messages sent to or from mobile devices (e.g., iPhone and Blackberry devices), provided that a copy of such mail is routinely saved elsewhere. 9. Other electronic data stored on a mobile device, such as calendar or contact data or notes, provided that a copy of such information is routinely saved elsewhere. 10. Logs of calls made from mobile devices. 11 . Server, system or network logs. 12. Electronic data temporarily stored by laboratory equipment or attached electronic 7 equipment, provided that such data is not ordinarily preserved as part of a laboratory report. 13. Data remaining from systems no longer in use that is unintelligible on the systems in use. 8
=== Default Standard for Access to Source Code ===
DEFAULT STANDARD FOR ACCESS TO SOURCE CODE Absent agreement among the parties, the following procedures shall apply to ensure secure access to source code: 1. A single electronic copy of source code or executable code shall be made available for inspection on a stand-alone computer. 2. The stand-alone computer shall be password protected and supplied by the source code provider. 3. The stand-alone computer shall be located with an independent escrow agent, with the costs of such to be shared by the parties. If the parties cannot agree on such an agent, each party shall submit to the court the name and qualifications of their proposed agents for the court to choose. 4. Access to the stand-alone computer shall be permitted, after notice to the provider and an opportunity to object, to two (2) outside counsel representing the requesting party and two (2) experts retained by the requesting party, all of whom have been approved under the protective order in place. No one from the provider shall have further access to the computer during the remainder of discovery. 5. Source code may not be printed or copied without the agreement of the producing party or further order of the court. 6. The source code provider shall provide a manifest of the contents of the stand-alone computer. This manifest, which will be supplied in both printed and electronic form, will list the name, location, and MD5 checksum of every source and executable file escrowed on the computer. 7. The stand-alone computer shall include software utilities which will allow counsel and experts to view, search, and analyze the source code. At a minimum, these utilities must provide the ability to (a) view, search, and line-number any source file, (b) search for a given pattern of text through a number of files, (c) compare two files and display their differences, and (d) compute the MD5 checksum of a file. 8. If the court determines that the issue of missing files needs to be addressed, the source code provider will include on the stand-alone computer the build scripts, compilers, assemblers, and other utilities necessary to rebuild the application from source code, along with instructions for their use. 2
=== Checklist ===
Case Management Checklist Case Name and Number Counsel Lead Counsel for Delaware Counsel for Lead Counsel for Delaware Counsel for _________ _ Meet and Confer Counsel have met and conferred and have made good faith efforts to discuss, in person and/ or by telephone, each of the topics listed in the Checklist below, and will be prepared to address these topics at the Case Management Conference ("CMC"). Discovery • What are the core technical documents? • • • Does any party intend to request production of electronic mail? If so, why? How many custodians should be searched? What methods will be used to search for electronic documents (e.g., key word searches, predictive coding)? How can the Court best assist the parties to provide meaningful interrogatory responses to avoid discovery disputes over the adequacy of such responses? If sourcecode is going to be produced, when, where, and how will it be made available? Claim Construction • What are the 1 or 2 most important claim terms requiring construction? • • • Should the Court consider a "super-early" limited claim construction hearing on those most important terms? What is the maximum number of claim terms the parties will ask the Court to construe? How can the parties help the Court achieve its goal of ruling on claim construction disputes within 60 days of the claim construction hearing? 1 Narrowing the Case • At what point(s) in the case will it be appropriate to limit/reduce the number of accused devices/functionalities, asserted patents, asserted claims, invalidity defenses (including obviousness combinations), and prior art references? • • Are there products that are not colorably different than the currently-accused products that Plaintiff expects or Defendant should expect will be added to the case? Should damages or any other portion of the case be bifurcated? Related Cases • What related cases are pending, in any Court, and what is their filing date and current status? • • Does Plaintiff plan to file additional related cases and, if so, on what schedule and how should that plan affect how this case will proceed? Has any patent-in-suit been litigated before and how soon is Plaintiff willing to produce the results of any such litigation, including settlement agreements? Remedies • What initial revenue/ sales information does Plaintiff need to assess the value of the case and how soon is Defendant willing to produce such information? • • • What type of relief is Plaintiff seeking: lost profits, reasonable royalties, injunction, and/ or any other form of relief? What does Plaintiff contend is the "smallest saleable unit"? Has the patent been licensed or offered for any license and how soon is Plaintiff willing to produce licensing information? Amendments • What will be the deadline for proposed amendments to the pleadings, including adding allegations of indirect and/ or willful infringement as well as inequitable conduct? • What will be the deadline for adding or altering the accused devices/functionalities, asserted claims, and prior art? Supplementation • Will expert declarations/ affidavits be permitted to be filed with case-dispositive and other motions, without other parties' agreement or leave of the Court? • What will be the deadline for supplementing infringement, invalidity, damages, and other contentions? 2 Protective Order • Are there any reasons this case requires provisions that are not typical of the protective order generally entered in this Court's patent cases? Motions to Dismiss/Transfer/Stay • Have any of these motions been filed and/ or does any party anticipate filing such a motion? • • Will the parties consent to magistrate judge jurisdiction at least for the limited purpose of resolving these motions? 1 Should discovery and other exchanges of information (e.g., Default Standards~ 4 disclosures) be stayed during pendency of these motions? Motions for Summary Judgment • Are there any motions that are potentially fully case dispositive - or that would be dispositive of such a significant portion of the case that its resolution would greatly enhance the likelihood of a cost-effective pre-trial disposition- and that the parties agree the Court should hear early? • • If the Court is to hear any early summary judgment motion, which, if any, other parts of the case should be stayed? If the Court is to hear any early summary judgment motion, what is the moving party going to give up (e.g., the opportunity to file a motion on the same subject matter later in the case)? Other Matters • Are any post-grant review procedures underway or planned that might affect the manner in which this case should proceed? • • Would the Plaintiff be willing to stipulate to a maximum damages figure in exchange for restrictive discovery and an accelerated trial date? How soon can this case be ready for alternative dispute resolution? Scheduling • Address each matter listed in the Revised Patent Form Scheduling Order and submit, along with this Checklist, a joint proposed scheduling order, clearly identifying points of disagreement. 1The identity of any party or parties declining to consent should not be disclosed to the Court at any point, only the fact that there is not unanimous consent. 3
=== Guidelines for Discovery Disputes ===
Guidelines for Discovery Disputes 1. The moving party should, in its letter brief, clearly state the relief it is seeking as to each dispute. 2. The moving party should attach a proposed order to its letter brief as an exhibit. In that proposed order, the moving party should also clearly set out the nature of the requested relief as to each dispute. 3. With regard to other types of exhibits the parties attach to their letter briefs, the parties should highlight in yellow those portions of the exhibits that are particularly important and that they want the Court to focus on. 4. If a party is attaching an exhibit to its letter brief, and the exhibit is large (i.e., more than 20 pages), the party should simply include the cover page/first page of the exhibit and then only those other portions of the exhibit that are relevant to the discovery dispute. So, for example, if a party is attaching as an exhibit a 100-page expert report, but only 10 pages of the report are truly relevant to the dispute, then the party should only include the cover page and the 10 relevant pages of the report. 5. If the discovery dispute relates to certain discovery requests (e.g., interrogatories or requests for production of documents), then the moving party should attach those discovery requests and any relevant responses as exhibits to its letter brief. The responding party should include as exhibits to its letter brief any discovery requests and/or responses that it believes are relevant and that the moving party did not already submit. 6. If the date when a certain discovery request/report was filed/served is relevant to the dispute, and if a party is attaching that request/report as an exhibit to its letter brief, then the party should also include the page of the exhibit that indicates on what date the request/report was filed/served. 7. If the discovery dispute involves disputed, material factual issues (e.g., whether obtaining certain discovery would be unduly costly or burdensome), then the party with the burden should strongly consider attaching as an exhibit to its letter brief a sworn declaration or affidavit regarding that disputed issue.
=== Tips Regarding Markman Briefing and Hearings ===
Tips Regarding Markman Briefing and Hearings 1. Judge Burke will permit parties to brief no more than 10 terms in advance of the Markman hearing. At the hearing, he will permit argument on no more than six terms. He will provide constructions for those first six argued terms (and, depending on the circumstances, for some or all of any additional terms that were briefed) in the days/weeks/months after the hearing. Judge Burke encourages parties to try to focus on identifying only the most important terms that need to be addressed early in the case. The fewer terms that parties agree should be addressed in the Markman briefing, the more pages of briefing the parties will get on each term—and the quicker Judge Burke will be able to issue his claim constructions on all of the identified terms. 2. If you think a claim term should be given its plain and ordinary meaning, you still need to provide Judge Burke with a proposed construction that sets out what you think that plain and ordinary meaning actually is. In other words, if the other side thinks that the term means X, and you disagree, then you must have some view as to what “not X” means. So provide that understanding to Judge Burke in the form of a proposed construction! This will help to ensure that Judge Burke has a good sense of your claim construction position. And it will help you to avoid seeming as if you are trying to hide the ball. 3. It is important to use every page of your share of the Joint Claim Construction Brief to persuade the Court about the merits of your positions. Often, parties spend a number of pages at the beginning of their brief attempting to set out a “theme”—e.g., how the other side is consistently taking a particular approach to the Markman process that is not correct. These “theme” arguments, which don’t directly go to the merits, are probably better off omitted. Also, while it can be helpful and necessary for a party to explain some key factual aspects of the technology at issue in its briefing, note that this can also be accomplished (sometimes more effectively) in the party’s claim construction tutorial. In the end, make sure that as much of your brief as possible goes to the merits of your side’s position about the meaning of the disputed claim terms. 4. For every claim term at issue, there will be at least one and perhaps many different disputes between the parties. In the first paragraph of your brief regarding a term, it helps if you clearly: (a) state how many disputes you 1 think there are; (b) set out what you understand the disputes to be; and (c) explain what particular portion of your (and/or your opponent’s) proposed construction relates to each dispute. After you do that, then use the rest of your briefing on that term to tell the Court why you should prevail on each dispute. 5. Citations to case law in a Markman brief can be helpful, to a point. For example, it is sometimes useful to cite to a prior judicial opinion in order to identify a relevant tenet of claim construction, or to show that a particular word is widely understood to be a “nonce” word, or to note that another court has construed the same term in the same patent(s). But keep in mind that Markman issues are very often fact-specific and patent- specific. Citations to opinions in other cases dealing with different patents and different technology can often feel inapposite, and thus amount to a waste of briefing space. 6. Means-plus-function (“MPF”) terms are complicated, including for the Court. They require a number of steps of analysis and often necessitate a close review of various portions of the specification. So you need to do what you can to make things easier for the Court if a MPF term is at issue in the briefing. One common problem involves a situation where a party is attempting to show a link between the claimed function and certain structure found in the specification. Often, that party is suggesting that many different portions of the specification should be included as references to the requisite structure—but the party does not always explain in its briefing why each different portion of the specification at issue actually can be said to be linked to and perform the relevant function. Be sure that you address every portion of the identified references to structure and explain why they are correct. 7. Slides can be helpful in a Markman presentation. But trying to present too many slides is distracting. That is because, inevitably, the presenter spends his or her limited time trying to rush through all of the slides that he or she has prepared, instead of focusing on Judge Burke’s questions. And a slide deck with an inordinate number of slides can start to look like an attempt to put an additional brief before the Court that it didn’t request. A good rule of thumb is that, when it comes to a Markman hearing, you shouldn’t have more slides for your presentation than there are pages in your share of the Joint Claim Construction Brief. And remember that you will have limited 2 time for your presentation, and that Judge Burke is going to take up about half of that time with his questions. So if you have one hour of argument time, for example, you should only include enough slides for about a half hour’s worth of presentation time. 8. It goes without saying that your slides need to be tied in some way to a point that you made in your briefing. But the best slides amount to a different way of getting across that point. For example, say in your brief you want to emphasize that the same term (i.e., term #1) appears in five different parts of the patent—and that when it does, it is always accompanied by a particular phrase. A slide that has five different pop-up bubbles with the text of each portion of the specification included therein (along with related citations) can be really helpful in depicting this for the Court. That is because it gives the Court a unique illustration of exactly how term #1 is used in the patent— in a manner that is visually different than what is conveyed by a string citation in a brief. 9. If you want to make a substantive argument at the Markman hearing, and that argument is new—meaning it cannot be fairly said to relate to something you wrote in your briefing (like an argument you thought up for the first time in the days before the hearing)—then this is a problem. Arguments made for the first time during the hearing, with no advance notice to the opposing side or the Court, will likely be deemed waived or forfeited. If you plan to make an argument at the hearing that is not fairly presented in your briefing, then you should at least give the opposing side a heads-up before the hearing that you plan to raise the issue. And you should inform the Court by letter of the same. Even then, it may well be too late if the notice provided is not fair notice, or is not provided far enough in advance. 10. Judge Burke will let you attempt to argue that a claim term is indefinite at Markman. But if you are going to do that, it often will make sense for you to include expert declarations or other evidence along with your Markman briefing regarding how a POSITA would understand the term at issue in light of the patent’s disclosures. It is hard for Judge Burke to conclude that a POSITA would not be informed with reasonable certainty about the scope of an invention if he never hears from an expert on that score. Additionally, keep in mind that indefiniteness arguments are not particularly efficient at Markman if it is clear that further discovery is needed as to the issue. So you should be prepared to explain why that is not the case. 3
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