Intellectual Property Law

Guest Post - The Interplay of Rule 16 and Rule 26(f) and Timing of the Meet and Confer

By Karen E. Keller, Andrew A. Lundgren et al.

In a short minute order, Judge Sleet recently confirmed that the Federal Rules of Civil Procedure permit discovery to begin before the Court sets the Rule 16 conference. Many defendants in recent years have refused to participate in the Rule 26(f) discovery planning conferences on grounds that commencing discovery was not permitted until the Court set the Rule 16 conference, with the net effect of slowing down litigation and extending the ultimate case disposition. Defendants usually have been unswayed by the actual text of the Federal Rules (see, e.g., Rule 37(f) (providing for sanctions if a party refuses to participate in a Rule 26(f) conference) and the Notes of Advisory Committee on 1980 amendments (stating that "New Rule 26(f) imposes a duty on parties to participate in good faith in the framing of a discovery plan by agreement upon the request of any party.")), and available remedies were few. Judge Sleet's minute order expressly confirms that the parties can initiate the discovery planning conference (presumably at a reasonable time and in good faith) without pre-authorization of the Court (stating that neither of Rules 16 or 26, or Local Rule 16.2 "preclude the parties from commencing discovery prior to the court noticing or conducting a scheduling conference").

Author: John W. Shaw chairs YCST's Intellectual Property Litigation Section, and he also practices in the firm's Commercial Litigation Section. Mr. Shaw appears before all state and federal Delaware courts, and he has extensive experience in a wide variety of intellectual property and commercial disputes pending before the United States District Court for the District of Delaware. Mr. Shaw also devotes a portion of his practice to counseling intellectual property owners on trademark, patent, trade secret, and other intellectual property matters.

Mr. Shaw graduated from the Pennsylvania State University with high honors and distinction in 1989, and, after working as an engineer with General Electric, he graduated magna cum laude from the University of Pittsburgh School of Law in 1994. Before joining Young Conaway in 1995, Mr. Shaw clerked for the Honorable Murray M. Schwartz in the United States District Court for the District of Delaware. Mr. Shaw is admitted to practice as a registered patent agent before the United States Patent and Trademark Office.

A copy of the minute order can be found here.

Full post as published by Delaware IP Law Blog on February 26, 2009 (boomark / email).