Claim construction is one of the classic decision points in patent litigation. Like the cherry blossoms portend spring, a ripening Markman signals to litigants that the season of claim narrowing and expert reports has come at last.
But sometimes the winter is long and cold. Although several of our Judges formally endeavor to issue a Markman decision within 60 days of the hearing, their busy dockets often make that impossible. You'll thus sometimes see the parties try and push off the various deadlines that would normally be a bit easier with a Markman in place—most notably expert reports, which otherwise might have to be done with alternative constructions.
(Eds. note - an earlier draft of this post extended the spring metaphor a further two paragraphs. I think Valentine's Day is affecting me.)
An Oral Order from Judge Burke last week serves as a reminder that the lack of Markman order is not good cause per se to push those other deadlines. The Markman hearing in Bausch & Lomb Inc. v. SBH Holdings LLC, C.A. No. 20-1463-GBW-CJB (D. Del. Feb. 9, 2024) (Oral Order), was originally scheduled for June 2023, with opening expert reports due the next February. The hearing was rescheduled to September 2023, however, shortening the interregnum. When Judge Burke issued a statement on the docket notifying the parties that the Order would not be issued within 60 days of the hearing, the defendant moved to amend the schedule so that expert reports would not be due until 90 days after the order (with all subsequent events occurring a proportionate time after that).
Plaintiff opposed, however, noting that the delay in the hearing was due in part to the defendants' own unavailability and further stressing that parties in the district frequently serve expert reports before the claim construction order issues.
Judge Burke agreed with the plaintiff and denied the request to extend in its entirety:
The Court agrees with Plaintiffs that this portion of the Motion was "premised on the faulty notion that expert discovery cannot proceed without the Court's claim construction[,]" and that in reality, "proceeding with expert discovery without a Markman decision is not uncommon in this District." . . . Because Defendant could, with diligence, meet the currently-existing Scheduling Order deadlines even in the absence of a Markman ruling, there is not good cause to support its Motion. (2) In any event, the Court has today issued its Markman opinion, (D.I. 108), and it now has otherwise resolved all pending motions in this case that were before it. The parties, including Defendant, should already be well on their way to preparing this case for trial. They should continue to do so using the current schedule.
Id. (internal citations omitted)
Notably, in the briefing, the defendant stated that it had not yet even decided whether to obtain an expert. Hopefully they made that choice before now since they've only got a few weeks left for that busy soul to write a report.
Wear a jacket out there folks.
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