Generally Delaware counsel are downright accommodating when it comes to granting extension requests. One common refrain is that "if we don't grant it, they'll just move, and the Court will grant it."
Often that's true—I've seen multiple successful emergency motions to extend deadlines after opposing counsel unreasonably denied an extension. Typically these seek a short extension (a few days, or sometimes 30 days for a response to a complaint) and are backed by good reasons.
Uh Oh - An Emergency Extension Motion Fails
That's why I thought it was interesting to see an "emergency" attempt at extending a deadline fail, in Speyside Medical, LLC v. Medtronic Corevalve, LLC, C.A. No. 20-361-GBW-CJB (D. Del.).
In that case, about six weeks before the SJ deadline, the defendant moved to strike one of Plaintiff's infringement theories as contrary to the Court's claim construction or, in the alternative, for a new construction. The briefing took some time and the hearing was set for a few weeks out.
Two days before the SJ motions deadline, Magistrate Judge Burke denied the motion to strike. But he granted the request to resolve the claim construction dispute, and asked for a briefing proposal:
ORAL ORDER: The Court . . . hereby ORDERS that the Motion [to strike] is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) Medtronic first argues that Speyside has introduced a new infringement theory in its Final Infringement Contentions and in its Infringement Expert Report that is "contrary to the Court's claim construction" with respect to the Court's construction of the claim term "substantially equal to or less than." . . . The Court DENIES this portion of the Motion. The claim construction dispute/infringement theory at issue in the Motion relates to a different term ("a length of the carrier element... ") that has not been construed by the Court. . . . Therefore, there is no basis to strike the infringement theory at issue as being contrary to the Court's claim construction.; (2) Medtronic alternatively argues that the Court should allow further claim construction briefing regarding the parties' dispute about the claim term "a length of the carrier element." . . . The Court GRANTS this portion of the Motion. By no later than October 10, 2023, the parties shall meet and confer regarding a process by which the District Court can resolve this additional claim construction dispute and submit a status report of no longer than one page.
Id., D.I. 325.
The very next day—one day before the SJ deadline—the defendant filed a letter seeking an "emergency request for an extension of the . . . deadline for dispositive and Daubert motions." D.I. 326.
The motion boils down to this: the new construction is dispositive of infringement of one patent, and defendant will file different SJ and Daubert motions depending on which way it goes. That sounds like the defendant doesn't want to have to waste time and pages on an unnecessary motion if it loses on the claim construction issue.
This Seems Ill-Advised
Defendant asked to defer the motions until a week after the decision on claim construction. This strikes me as a longshot, with trial is set for March, 2024.
Claim construction opinions are notoriously time consuming for the Court. If the parties submit a briefing schedule on Oct. 10, briefing likely won't even be done until around Thanksgiving. Argument would be a few weeks after that, sometime before Christmas, and even a quick claim construction opinion probably wouldn't issue until at least mid-January, with the holidays in between.
Defendant proposes to then start sj briefing a week after that, likely putting opening briefs in mid-January and the completion of SJ briefing in mid-February at the earliest. That would leave the Court around two weeks to hear and decide SJ before the PTC—and the claim construction R&R will still be subject to objections. Good luck with that request!
Judge Williams ultimately denied the emergency motion—but it did give the defendant the option to re-rank its SJ motions after the new claim construction issues:
ORAL ORDER: Having reviewed the parties' respective letters (D.I. 326 and 327), Medtronic's emergency request for an extension of the October 4, 2023 deadline to file dispositive and Daubert motions is DENIED. Under the circumstances, the Court is not convinced that an extension is justified or would aid in resolution of the case. Medtronic claims that its proposed construction of the recently requested additional term to be construed will be dispositive of infringement. However, this case has been pending for more than three years following a stay for IPR proceedings and neither side previously requested claim construction of the additional term. Also, there is no reason why Medtronic cannot move for summary judgment at this time based upon its proposed construction of that term while the parties brief in parallel the claim construction issue. Although the Court is denying the requested extension, the Court will allow the parties to modify the ranking of their respective summary judgment motions, if necessary, within fourteen (14) days after the Court issues its claim construction of the additional term.
D.I. 328.
That's a great outcome for defendant. The Court's ranking procedure requires a party to rank its SJ motions. Under that procedure, if, say, Motion #1 is denied, then Motions #2-5 are automatically denied as well. Re-ranking allows the defendant to put its new-claim-construction SJ motions first, but re-rank them if it loses the construction.
It was likely the ranking and page count issues that drove the defendant to file its emergency motion in the first place. After the Court denied the motion, it immediately filed its four SJ motions—so it obviously had them ready. But waiting to file until the claim construction opinion issued could have enabled them to spend many more pages on their other motions.
No Need to Panic
The bottom line is that this was not a typical emergency motion for a short extension. There is no reason to read into it that the Court is going to start denying well-founded extension motions. I vote that we all keep granting extensions, and not start making opposing counsel take them up with the Court.
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