Judge Stark overhauls patent practices in District of Delaware: 10 key changes

Intellectual Property and Technology Alert


The same day he took the reins as Chief Judge for the District of Delaware, Judge Leonard P. Stark substantially overhauled his patent practices. Effective with all cases filed on or after July 1, 2014, Judge Stark implemented changes resulting from the Patent Study Group (PSG) that he and Judge Sue L. Robinson spearheaded to curb litigation abuse and streamlining patent litigation in the District of Delaware.

In conjunction with these changes, Judge Stark sent a letter to counsel describing the changes, his new form patent scheduling order, his new form patent pretrial order and the now-required case management checklist.

The ten most relevant changes to his patent procedures follow:

1. Early dispute resolution procedures. Within seven days of the patent case being assigned, Judge Stark is referring scheduling and any motions to dismiss, stay or transfer to Magistrate Judge Christopher Burke. Within seven days of the case referral to Magistrate Judge Burke, the plaintiff must file a Procedures Order, setting forth the procedures regarding discovery motions and briefing policies for motions to amend and motions to strike. Adding to Judge Stark’s current discovery dispute practices, the procedures require, in relevant part:

  • Before raising a discovery dispute, both lead and Delaware counsel for each party must meet and confer verbally to resolve the dispute;
  • To request a discovery teleconference, the parties must submit a three-page joint letter detailing, in a non-argumentative fashion, the issues in dispute and listing the Lead and Delaware counsel who met and conferred on the issues; and
  • A motion to amend or strike is no longer accompanied by an opening brief.  Instead, a party must submit a three-page letter describing the basis for relief.

2. Early mandatory case management meet and confer. Within 10 days after any defendant files a responsive pleading or motion, the Court will enter a Case Management Order requiring that, within 30 days, both lead and Delaware counsel for each party must meet and confer and make a good faith effort to discuss each of the topics listed in the court’s new case management checklist  and submit a proposed joint scheduling order to be considered at the case management conference. The case management checklist includes an extensive list of over 30 meet and confer topics, including:

  • Identification of the core technical documents
  • Identification of the one or two most important claim terms requiring construction and a determination of whether “super-early” claim construction is appropriate for those terms;
  • Determination of the maximum number of claim terms requiring construction;
  • Determination of the time by which the parties can limit accused products, asserted patents, asserted claims, invalidity defenses and prior art references;
  • Whether bifurcation of damages or other issues is helpful;
  • Whether and when the plaintiff plans to file additional related cases;
  • The type of relief the plaintiff is seeking and other early damages discovery issues;
  • The deadlines for amending pleadings, infringement contentions, asserted claims, invalidity contentions, prior art references and other contentions;
  • Whether discovery should be stayed during any pending motions to dismiss, transfer or stay;
  • Whether the court should consider early motions for summary judgment, stay portions of the case while those motions are pending, and what the moving party will sacrifice in order to bring early summary judgment;
  • Whether there are any post-grant review procedures under way that would affect the case; and
  • Discuss and finalize the proposed form of scheduling order. 

3. In-person attendance by lead and Delaware counsel at the CMC. Judge Stark’s practice had been to allow scheduling conferences by telephone, but he is now requiring lead and Delaware counsel to appear in person for the CMC.

4. Scheduling trials at the CMC. Judge Stark’s practice had been to set a trial date after the case had substantially progressed, but he is now setting trial dates at the case management conference. Parties requesting a more expedited trial can request that Magistrate Judge Burke preside.

5. Additional early discovery required beyond the Delaware Default Standards. Judge Stark’s new patent procedures require early discovery of information beyond that required by the Delaware Default Standards.  The new initial discovery exchange schedule is as follows:

  • First, the plaintiff shall identify the asserted patents, the accused product(s), and its damages model;
  • Second,  the defendant shall produce core technical documents “sufficient to show how the accused product(s) work(s)” and sales figures for the accused product(s);
  • Third, the plaintiff shall produce an initial infringement claim chart for each known accused product;
  • Fourth, the defendant shall produce initial invalidity contentions for each asserted claim;
  • Fifth, the plaintiff shall provide final infringement contentions; and
  • Sixth, the defendant shall provide final invalidity contentions.

6. Early and separate Markman hearings. Judge Stark indicated that he may be persuaded to hold early Markman hearings if construing two or three terms will significantly streamline the case. However, he made it clear that he is “usually not persuaded” by a “plain and ordinary meaning” construction.

7. Markman decision timing. Judge Stark’s announced goal is to issue Markman decisions within 60 days of the hearing.

8. Page limits on motions for summary judgment, Daubert and post-trial motions.  Each side is limited to 50 total pages of opening briefing for all summary judgment and Daubert motions combined, 50 pages of answering briefing and 20 pages of reply briefing. Thus, no more than 250 pages of total briefing are allowed for all related cases proceeding on a consolidated or coordinated schedule.

9. Revised pretrial order and trial guidelines.  Judge Stark has implemented new pretrial guidelines regarding the trial timing, evidentiary issues and motions practice. Pretrial conferences will now be limited to two hours.

10. Post-trial briefing. Each side is limited to a total of 20 pages of opening briefing, 20 pages of answering briefing and 10 pages of reply briefing, regardless of the number of motions filed. Judge Stark will also make an effort to provide indications to counsel on whether he would be willing to disturb a particular jury ruling.

To ensure that these changes, and those of the other judges, are having the desired effect, Judge Stark plans to establish a working group to revisit the Delaware Default Standards and address case management issues for “related cases.”

 We will continue to monitor the rules and procedures and will report back periodically.