Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 1 of 12 PageID #: 688
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`Exhibit
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 2 of 12 PageID #: 689
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 22-252 (MSG)
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`ARBUTUS BIOPHARMA
`CORPORATION and GENEVANT
`SCIENCES GmbH,
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`Plaintiffs,
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`v.
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`MODERNA, INC. and MODERNATX,
`INC.,
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`Defendants.
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`[PROPOSED] SCHEDULING ORDER
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`This
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`day of
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`, 2022, the Court having conducted an initial
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`Rule 16(b) scheduling conference pursuant to Local Rule 16.1(b), and the parties having
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`determined after discussion that the matter cannot be resolved at this juncture by settlement,
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`voluntary mediation, or binding arbitration;
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`IT IS HEREBY ORDERED that:
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`1.
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`Rule 26(a)(l) Initial Disclosures and E-Discovery Default Standard. Unless
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`otherwise agreed to by the parties, the parties shall make their initial disclosures pursuant to Federal
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`Rule of Civil Procedure 26(a)(l) within ten (10) days of the date the Court enters this Order. If they
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`have not already done so, the parties are to review the Court’s Default Standard for Discovery,
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`Including Discovery of Electronically Stored Information (‘‘ESI”), which
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`is posted at
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`http://www.ded.uscourts.gov (see Other Resources, Default Standard for Discovery) and is
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`incorporated herein by reference. The parties shall meet and confer about a proposed ESI Order and
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`submit it to the Court within forty-five (45) days from the date the Court enters this Order. Until the
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`parties have agreed on an appropriate ESI Order or the Court has resolved a dispute concerning a
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`proposed ESI Order and such order is entered, the Court’s Default Standard shall control. The lack
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 3 of 12 PageID #: 690
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`of agreement between the parties on an ESI Order shall not be used as a basis to refuse to respond to
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`discovery requests while such order is pending.
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`2.
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`Joinder of Other Parties and Amendment of Pleadings. All motions to join other
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`parties, and to amend or supplement the pleadings, shall be filed on or before March 24, 2023.
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`Unless otherwise ordered by the Court, any motion to join a party or motion to amend the pleadings
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`shall be made pursuant to the procedures set forth in Paragraphs 8(g) and 9.
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`3. Application to Court for Protective Order. Should counsel find it will be necessary to
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`apply to the Court for a protective order specifying terms and conditions for the disclosure of
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`confidential information, counsel should confer and attempt to reach an agreement on a proposed
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`form of order and submit it to the Court within twenty-one (21) days from the date the Court enters
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`this Order. Should counsel be unable to reach an agreement on a proposed form of order, counsel
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`must follow the provisions of Paragraph 8(g) below.
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`Any proposed protective order must include the following paragraph:
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`Other Proceedings. By entering this order and limiting the disclosure
`of information in this case, the Court does not intend to preclude
`another court from finding that information may be relevant and
`subject to disclosure in another case. Any person or party subject to
`this order who becomes subject to a motion to disclose another
`party’s information designated “confidential” [the parties should list
`any other level of designation, such as “highly confidential,” which
`may be provided for in the protective order] pursuant to this order
`shall promptly notify that party of the motion so that the party may
`have an opportunity to appear and be heard on whether that
`information should be disclosed.
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`4.
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`Papers Filed Under Seal. In accordance with section G of the Revised Administrative
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`Procedures Governing Filing and Service by Electronic Means, a redacted version of any sealed
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`document shall be filed electronically within seven (7) days of the filing of the sealed document.
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`5.
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`Courtesy Copies. The parties shall provide to the Court two (2) courtesy copies of
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`all briefs and any other document filed in support of any briefs (i.e., appendices, exhibits,
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 4 of 12 PageID #: 691
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`declarations, affidavits etc.). This provision also applies to papers filed under seal. All courtesy
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`copies shall be double-sided.
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`6.
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`ADR Process. This matter is referred to a magistrate judge to explore the possibility of
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`alternative dispute resolution.
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`7.
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`Disclosures. Absent agreement among the parties, and approval of the Court:
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`(a)
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`By July 26, 2022, Plaintiffs shall identify the accused product(s), including
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`accused methods and systems, and their damages model, as well as the asserted patent(s) that the
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`accused product(s) allegedly infringe(s). Plaintiffs shall also produce the file history for each
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`asserted patent.
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`(b)
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`By August 16, 2022, Defendants shall produce core technical documents
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`related to the accused product(s), sufficient to show how the accused product(s) work(s), including
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`but not limited to non-publicly available operation manuals, product literature, schematics, and
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`specifications. Defendants shall also produce sales figures for the accused product(s).
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`(c)
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`By September 30, 2022, Plaintiffs shall produce an initial claim chart
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`relating each known accused product to the asserted claims each such product allegedly infringes.
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`(d)
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`By November 14, 2022, Defendants shall produce their initial invalidity
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`contentions for each asserted claim, as well as the known related invalidating references.
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`(e)
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`By May 26, 2023, Plaintiffs shall provide final infringement contentions and
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`Defendants shall provide final invalidity contentions. The addition or substitution of asserted claims,
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`prior art references, and/or invalidity defenses may be made only by order of the Court upon a timely
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`showing of good cause.
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`8.
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`Discovery. Unless otherwise ordered by the Court or agreed to by parties, the
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`limitations on discovery set forth in the Federal Rules shall be strictly observed.
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`(a)
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`Fact Discovery Cut Off. All fact discovery in this case shall be initiated so
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 5 of 12 PageID #: 692
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`that it will be completed on or before April 14, 2023.
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`(b)
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`Document Production.
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`Document production shall be
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`substantially
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`complete by January 18, 2023.
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`(c)
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`Requests for Admission. A maximum of 45 requests for admission are
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`permitted for each side. Requests to admit the authenticity of a document shall not count toward this
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`limit.
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`(d)
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`Interrogatories.
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`i.
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`A maximum of 30 interrogatories,
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`including contention
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`interrogatories, are permitted for each side.
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`ii.
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`The Court encourages the parties to serve and respond to contention
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`interrogatories early in the case. In the absence of agreement among the parties, contention
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`interrogatories, if filed, shall first be addressed by the party with the burden of proof. The adequacy
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`of all interrogatory answers shall be judged by the level of detail each party provides (i.e., the more
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`detail a party provides, the more detail a party shall receive).
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`(e)
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`Depositions.
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`i.
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`Limitation on Hours for Deposition Discovery. Each side is limited to
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`a total of 100 hours of taking testimony by deposition upon oral examination, including depositions
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`of third parties. Any deposition lasting less than 4 hours will count as 4 hours against the total time
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`of the side taking the deposition. Each deposition will be limited to seven (7) hours in length of on-
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`the-record time except as specifically extended, by order of the Court, or otherwise agreed to by the
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`parties. For clarity, the hour limitations described in this paragraph do not apply to depositions of
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`expert witnesses.
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`ii.
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`Location of Depositions. The parties shall meet and confer
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`regarding locations of depositions, taking into account convenience for the deponent.
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 6 of 12 PageID #: 693
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`(f)
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`Disclosure of Expert Testimony.
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`i.
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`Expert Reports. For the party who has the initial burden of proof on
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`the subject matter, the initial Federal Rule of Civil Procedure 26(a)(2) disclosure of expert testimony
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`is due on or before June 9, 2023. The supplemental disclosure to contradict or rebut evidence on the
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`same matter identified by another party is due on or before August 11, 2023. Reply expert reports
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`from the party with the initial burden of proof are due on or before September 15, 2023. No
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`other expert reports will be permitted without either the consent of all parties or leave of the Court.
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`On or before September 18, 2023, the parties shall advise of the dates and times of their experts’
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`availability for deposition.
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`ii.
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`Expert Report Supplementation. The parties agree they will permit
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`expert declarations to be filed in connection with motions briefing.
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`iii.
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`Expert Discovery Cut-Off. All expert discovery in this case shall be
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`initiated so that it will be completed on or before October 13, 2023.
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`(g)
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`Discovery Matters and Disputes Relating to Protective Orders. Should
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`counsel find, after a reasonable effort pursuant to Local Rule 7.1.1, that they are unable to resolve a
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`discovery matter or a dispute relating to a protective order, a party may file correspondence on ECF
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`that shall not exceed three (3) pages outlining the issues in dispute and its position on those issues.
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`Within seven (7) days thereafter, any responsive correspondence shall also be filed on ECF and shall
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`not exceed three (3) pages. Upon review, the Court may schedule a telephone conference. Prior to
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`the above submissions, counsel shall meet and confer to make every effort to come to an amicable
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`resolution.
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`9.
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`Motions to Amend / Motions to Strike.
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`(a)
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`Any motion to amend (including a motion for leave to amend) a pleading or
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`any motion to strike any pleading or other document shall be made pursuant to the discovery dispute
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 7 of 12 PageID #: 694
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`procedure set forth in Paragraph 8(g) above.
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`(b)
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`Any such motion shall attach the proposed amended pleading as well as a
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`“redline” comparison to the prior pleading or attach the document to be stricken.
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`10.
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`Advice of Counsel. On or before February 17, 2023, the parties shall advise each
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`other if they intend to assert an advice of counsel defense and, if so, produce and identify all
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`documents they intend to rely on to support that defense.
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`11.
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`Technology Tutorials. Although technology tutorials are not required by the Court,
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`they are appreciated and, if any party chooses to file such a tutorial, it shall be submitted on or before
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`the date that the Joint Claim Construction Brief is filed.
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`12.
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`Claim Construction Issue Identification. On December 7, 2022, the parties shall
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`exchange a list of those claim term(s)/phrase(s) that they believe need construction and their proposed
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`claim construction of those term(s)/phrase(s). This document will not be filed with the Court.
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`Subsequent to exchanging that list, the parties will meet and confer to prepare a Joint Claim
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`Construction Chart to be submitted on January 18, 2023. The parties’ Joint Claim Construction
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`Chart should identify for the Court the term(s)/phrase(s) of the claim(s) in issue, and should include
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`each party’s proposed construction of the disputed claim language with citation(s) only to the intrinsic
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`evidence in support of their respective proposed constructions. Intrinsic evidence (including copies
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`of the patent(s) at issue) shall NOT be attached to the joint claim construction chart and, instead, the
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`parties shall include a joint appendix with the joint claim construction brief, and the joint appendix
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`shall include a copy of the patent(s) at issue and portions of all relevant intrinsic evidence that would
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`have otherwise been included with the joint claim construction chart, as well as any additional
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`evidence cited in the parties’ briefing.
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`13.
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`Claim Construction Briefing. Plaintiffs shall serve, but not file, their opening brief,
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`not to exceed 20 pages, on February 15, 2023. Defendants shall serve, but not file, their answering
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 8 of 12 PageID #: 695
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`brief, not to exceed 30 pages, on March 15, 2023. Plaintiffs shall serve, but not file, their reply brief,
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`not to exceed 20 pages, on April 5, 2023. Defendants shall serve, but not file, their sur-reply brief,
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`not to exceed 10 pages, on April 26, 2023. No later than April 28, 2023, the parties shall file a Joint
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`Claim Construction Brief. The parties shall copy and paste their unfiled briefs into one brief, with
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`their positions on each claim term in sequential order, in substantially the form below. If the joint
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`brief as submitted is more than 80 pages, the parties must certify that the page limits (or equivalent
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`word counts) in the Scheduling Order have been complied with and provide a brief explanation (e.g.,
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`formatting issues, listing of agreed-upon terms) as to why the brief is longer than 80 pages.
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`JOINT CLAIM CONSTRUCTION BRIEF
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`I.
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`II.
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`Agreed-Upon Constructions
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`Disputed Constructions
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`[TERM 1]
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`1.
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`2.
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`3.
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`4.
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`Plaintiffs’ Opening Position
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`Defendants’ Answering Position
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`Plaintiffs’ Reply Position
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`Defendants’ Sur-Reply Position
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`[TERM 2]
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`1.
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`2.
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`3.
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`4.
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`Plaintiffs’ Opening Position
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`Defendants’ Answering Position
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`Plaintiffs’ Reply Position
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`Defendants’ Sur-Reply Position
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`The parties need not include any general summaries of the law relating to claim construction. If
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`there are any materials that would be submitted in an index, the parties shall submit them in a Joint
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`Appendix.
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`13.
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`Hearing on Claim Construction. Beginning at 9:00 a.m. on May 18, 2023, the Court
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 9 of 12 PageID #: 696
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`will hear argument on claim construction. The parties need not include any general summaries of
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`the law relating to claim construction in their presentations to the Court. The parties shall notify the
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`Court, by joint letter submission, no later than the date on which their joint claim construction brief
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`is filed: (i) whether they request leave to present testimony at the hearing; and (ii) the amount of time
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`they are requesting be allocated to them for the hearing.
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`Provided that the parties comply with all portions of this Scheduling Order, and any other
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`orders of the Court, the parties should anticipate that the Court will issue its claim construction
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`order within sixty (60) days of the conclusion of the claim construction hearing. If the Court is
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`unable to meet this goal, it will advise the parties no later than sixty (60) days after the conclusion
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`of the claim construction hearing.
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`14.
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`Summary Judgment and Daubert Motions. If a side wishes to file any motion(s) for
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`summary judgment in this case, then on or before October 27, 2023, the side may file a single letter
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`of no more than three pages explaining the basis for the motion(s) and what undisputed facts support
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`entry of summary judgment. If a side wishes to file any motion(s) to exclude an expert’s opinion (or
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`multiple experts’ opinions) pursuant to Daubert, then on or before October 27, 2023, the side may
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`file a separate single letter of no more than three pages, identifying the opinion(s) sought to be
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`excluded and the basis for exclusion. Responses to any such letters may be filed on or before
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`November 3, 2023. Each such responsive letter shall be no more than three pages. No summary
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`judgment or Daubert motions may be filed without obtaining leave from the Court according to these
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`procedures.
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`15.
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`Applications by Motion. Except as otherwise specified herein, any application to the
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`Court shall be by written motion. Any non-dispositive motion should contain the statement required
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`by Local Rule 7.1.1.
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`16. Motions in Limine. Motions in limine shall not be separately filed. All in limine
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 10 of 12 PageID #: 697
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`requests and responses thereto shall be set forth in the proposed pretrial order. Each SIDE shall be
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`limited to three (3) in limine requests, unless otherwise permitted by the Court. The in limine request
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`and any response shall contain the authorities relied upon; each in limine request may be supported
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`by a maximum of three (3) pages of argument, may be opposed by a maximum of three (3) pages of
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`argument, and the side making the in limine request may add a maximum of one (l) additional page
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`in reply in support of its request. If more than one party is supporting or opposing an in limine request,
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`such support or opposition shall be combined in a single three (3) page submission (and, if the moving
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`party, a single one (1) page reply), unless otherwise ordered by the Court. No separate briefing shall
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`be submitted on in limine requests, unless otherwise permitted by the Court.
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`17.
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`Pretrial Conference. On February 2, 2024, the Court will hold a pretrial conference
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`in Court with counsel beginning at 9:00 a.m. Unless otherwise ordered by the Court, the parties
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`should assume that filing the pretrial order satisfies the pretrial disclosure requirement of Federal
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`Rule of Civil Procedure 26(a)(3). The parties shall file with the Court the joint proposed final pretrial
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`order in compliance with Local Rule 16.3(c) and the Court’s Preferences and Procedures for Civil
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`Cases not later than seven (7) days before the pretrial conference. Unless otherwise ordered by the
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`Court, the parties shall comply with the timeframes set forth in Local Rule 16.3(d)(1)-(3) for the
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`preparation of the joint proposed final pretrial order. The parties shall provide the Court two (2)
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`double-sided courtesy copies of the joint proposed final pretrial order and all attachments. The
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`proposed final pretrial order shall contain a table of contents and the paragraphs shall be numbered.
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`18.
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`Jury Instructions, Voir Dire, and Special Verdict Forms. Where a case is to be tried
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`to a jury, pursuant to Local Rules 47.1(a)(2) and 51.1 the parties should file (i) proposed voir dire,
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`(ii) preliminary jury instructions, (iii) final jury instructions, and (iv) special verdict forms seven (7)
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`days before the final pretrial conference. This submission shall be accompanied by a courtesy copy
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`containing electronic files of these documents, in Microsoft Word format, which may be submitted
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 11 of 12 PageID #: 698
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`by e-mail to Chambers_of_Judge_Mitchell_S_Goldberg@paed.uscourts.gov.
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`19.
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`Trial. This matter is scheduled for a 10 day jury trial beginning at 9:30 a.m. on
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`February 12, 2024, with the subsequent trial days beginning at 9:00 a.m. Until the case is submitted
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`to the jury for deliberations, the jury will be excused each day at 4:30 p.m. The trial will be timed,
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`as counsel will be allocated a total number of hours in which to present their respective cases.
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`20.
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`Judgment on Verdict and Post-Trial Status Report. Within seven (7) days after a jury
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`returns a verdict in any portion of a jury trial, the parties shall jointly submit a form of order to enter
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`judgment on the verdict. At the same time, the parties shall submit a joint status report, indicating
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`among other things how the case should proceed and listing any post-trial motions each party intends
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`to file.
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`21.
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`Post-Trial Motions. The parties will address the post-trial briefing schedule and page
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`limits in the proposed final pretrial order.
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`The Honorable Mitchell S. Goldberg
`United States District Judge
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`Case 1:22-cv-00252-MSG Document 28-1 Filed 08/01/22 Page 12 of 12 PageID #: 699
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`Exhibit A: Chart of Proposed Deadlines
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`Event
`Arbutus/Genevant to Identify Accused Products
`Exchange of Rule 26(a)(1) Initial Disclosures
`Filing of Joint Proposed Protective Order
`Filing of Joint Proposed ESI Order
`Moderna to Produce Core Technical Documents
`Arbutus/Genevant to Produce Initial Infringement Contentions
`Moderna to Produce Initial Invalidity Contentions
`Exchange List of Claim Term(s)/Phrase(s)
`Substantial Completion of Document Production
`Joint Claim Construction Chart
`Arbutus/Genevant’s Opening Claim Construction Brief
`Deadline to Assert Advice of Counsel Defense
`Moderna’s Answering Claim Construction Brief
`Joinder of Other Parties/Amendment/Supplementation
`Arbutus/Genevant’s Reply Claim Construction Brief
`Fact Discovery Cut-Off
`Moderna’s Sur-Reply Claim Construction Brief
`Filing of Joint Claim Construction Brief
`Claim Construction Hearing
`Arbutus/Genevant to Provide Final Infringement Contentions
`Moderna to Provide Final Invalidity Contentions
`Opening Expert Reports
`Rebuttal Expert Reports
`Reply Expert Reports
`Availability of Experts for Deposition
`Deadline for Expert Discovery
`Deadline for Requesting Permission to File Summary
`Judgment/Daubert Motions
`Deadline for Response to Request for Permission to File Summary
`Judgment/Daubert Motions
`Parties File Joint Proposed Final Pretrial Order, Jury Instructions, Voir
`Dire, and Special Verdict Forms
`Final Pre-Trial Conference
`Jury Trial (10 days)
`Filing of Joint Form of Order
`Filing of Joint Post-Trial Status Report
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`Deadline
`July 26, 2022
`10 days from Scheduling Order
`21 days from Scheduling Order
`45 days from Scheduling Order
`August 16, 2022
`September 30, 2022
`November 14, 2022
`December 7, 2022
`January 18, 2023
`January 18, 2023
`February 15, 2023
`February 17, 2023
`March 15, 2023
`March 24, 2023
`April 5, 2023
`April 14, 2023
`April 26, 2023
`April 28, 2023
`May 18, 2023
`May 26, 2023
`May 26, 2023
`June 9, 2023
`August 11, 2023
`September 15, 2023
`September 18, 2023
`October 13, 2023
`October 27, 2023
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`November 3, 2023
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`January 26, 2024
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`February 2, 2024
`February 12, 2024
`7 days after jury verdict
`7 days after jury verdict
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`11
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