In International Business Machines Corporation v. Zynga Inc., C.A. No. 22-590-GBW (D. Del.), the parties agreed in the scheduling order to a rather vague set of case narrowing provisions:
On November 30, 2023, Plaintiff shall perform a first narrowing of the number of asserted claims. On December 7, 2023, Defendant shall perform a first narrowing of the number of asserted invalidity references.
. . . On February 28, 2024, Plaintiff shall perform a second narrowing of the number of asserted claims. On March 5, 2024, Defendant shall perform a second narrowing of the number of asserted invalidity references.
Id., D.I. 89 at 12-13.
It looks like the parties may have added these limitations on their own initiative. I don't see them in Judge Williams' form scheduling order.
They set a timeline but—obviously—they leave the actual narrowing limits for a later dispute. When the time for that dispute came around, Plaintiff sought to limit the number of overall invalidity "theories" that the defendant could pursue. Id., D.I. 255 at 2. Defendant responded that it had agreed to limit only the number of "references," not the number of "theories." Id., D.I. 252 at 1-2.
Judge Williams agreed, and held plaintiff to the literal language of the scheduling order:
ORAL ORDER: The Court . . . will impose limits on the number of obviousness references, not the number of obviousness theories, at this time. While the Court sympathizes with Plaintiff's position that a limit solely on references, with no limit on theories, hypothetically allows Defendant to propose millions of theories, the parties agreed to limit the number of "references," understood "references" to be different from "theories," and filed a scheduling order with the Court to that effect.
International Business Machines Corporation v. Zynga Inc., C.A. No. 22-590-GBW, D.I. 253 (D. Del. Jan. 18, 2023).
The Court added some language, however, indicating that proposing millions of theories might not be a good idea:
The Court reminds both parties to conduct themselves reasonably and recognizes that, if parties do not appropriately narrow the case, there may give good cause for an amended scheduling order with further case narrowing in the future. Moreover, the Court reminds the parties that this will be a timed trial.
Id.
This was a pretty slick argument by defendant's counsel. It would have been easy to say "sure, the scheduling order says 'references,' but everybody knows that the court usually limits the number of combinations."
Instead, they focused on the exact language of the scheduling order, and showed how it was a knowing choice. The Court didn't mention it, but they also showed how plaintiff had agreed to this limitation in another case (and meant it), and argued that changing the scheduling order at this point would require good cause. They did a great job—and it worked.
I expect next time plaintiffs' counsel here proposes case narrowing in a scheduling order, they'll be thinking carefully about the precise words used (I know I will).
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