Richards Layton & Finger
 

Judge Connolly Issues New Form Patent Scheduling Orders

April 22, 2019

Today, Judge Connolly issued new form patent scheduling orders requiring detailed early disclosure of infringement and invalidity contentions (along with related document productions), which contentions can only be modified for good cause. In doing so, Judge Connolly created two separate scheduling orders—one for cases in which infringement is alleged, and one for cases in which only invalidity is at issue.

In infringement cases, Judge Connolly requires that infringement contentions be served within 30 days of the entry of the scheduling order, along with a production of documents covering 10 categories identified in the order. Invalidity contentions are due 45 days thereafter, with a document production of prior art, source code, or other documentation to show the operation of an accused instrumentality, and documents regarding several categories of damages issues. Where infringement is not at issue, Judge Connolly requires that invalidity contentions be served within 30 days of the date of the entry of the scheduling order, along with a document production of the prior art identified.

In both scheduling orders, amendments to contentions may be made only upon order for good cause shown. Non-exhaustive examples of circumstances constituting good cause include: (a) recent discovery of material prior art despite earlier diligent search, and (b) recent discovery of non-public information about the accused instrumentality that was not discovered, despite diligent efforts, before service of the infringement contentions.

Judge Connolly also updated his scheduling orders with additional requirements related to briefing and claim construction, including:

  • Pinpoint citations are required in all briefing, letters, and concise statements of fact.
  • Two hard copies of all briefs, discovery dispute letters, supporting materials, joint pretrial orders, motions in limine, and compendiums are to be provided to the Court, excerpting and highlighting the text of exhibits and attachments that the parties wish the Court to read.
  • Each party is to file a motion for claim construction along with the joint claim construction chart.
  • A party seeking discovery dispute relief must file a motion along with its letter that in no more than one paragraph sets forth the relief sought.
  • Multiple motions seeking separate and distinct relief may not be combined into a single motion.
  • The word limit for the concise statement of facts in support of or in opposition to a motion for summary judgment has been enlarged from 1,500 to 1,750 words.

To view Judge Connolly’s new orders and additional changes, click on the links below.