Patent Local Rules

Northern Distrcit of California local patent rules: first to adopt

Patent Local Rules date back to December 1, 2000, when the Northern District
of California promulgated the first set of rules governing the content and timing
of disclosures in patent cases. These rules established a default regime for operationalizing
the claim construction process that developed following the Supreme Court’s
decision in Markman v. Westview Instruments, 515 U.S. 1192 (1995).

The Northern District of California has since updated its Patent Local Rules.
Thirty-one district courts now have some form of Patent Local Rules. Many follow
the Northern District of California model. Some districts have augmented the model
to address distinctive aspects of their docket. For example, the District of New Jersey,
which is home to many pharmaceutical companies, developed rules specific to
Hatch-Waxman ANDA cases. Other districts, such as the District of Massachusetts,
implement somewhat different approaches. Some districts also include model
scheduling orders and protective orders in their local rules.

History of the Northern Distrcit of California local patent rules: first to adopt

On December 1, 2000, the United States District Court for the
Northern District of California adopted pioneering and innovative
Patent Local Rules.’ The idea of having separate Patent Local Rules
first surfaced in 1994. Chief Judge Thelton Henderson appointed
advisory committees to study and make recommendations on
revisions to the existing local rules so that they would be aligned with
amendments which had been made to the national rules. Due in large
part to the growth of the electronics industry in the Silicon Valley, a
relatively large number of patent infringement cases were pending in
the District. Many of these cases involved complexities unique to
patent cases. Judge Henderson appointed District Judge Ronald
Whyte to Chair an advisory committee to determine whether the
District should adopt a set of local rules specifically addressing patent
cases. The advisory committee determined that separate patent local
rules would be extremely helpful and recommended a set of rules.
The Court approved the rules and published them for public
comment. With relatively few changes, the rules were adopted and
became effective on January 1, 2001.

In the years following their adoption, other districts have
determined to adopt patent local rules, many of which utilized the
original Northern District Patent Local Rules as a template.6 The
Northern District’s Patent Local Rules, and others patterned after
them, have been enforced in district court cases and have been cited
approvingly by the Federal Circuit.

Local Rules in the Northern District (1977 – 1990)

The Northern District Patent Local Rules regulate the procedure to be followed in patent
infringement cases from the time that a complaint is filed up to a
claim construction hearing before the court. The Rules may be
summarized as containing three elements:

• cooperation-parties are required to confer to develop a case schedule and to make joint
  submissions;
• disclosure-parties are required to make timely disclosures of their legal contentions and provide supporting documentation; and
• judicial management-the assigned judge becomes involved in the case early and may actively supervise the process leading up to the claim construction hearing.

As the following discussion indicates, these three elements of the Patent
Local Rules are a consequence of civil litigation reform developments
within the Northern District itself, and nation-wide reform mandates
which accompanied the development of the Patent Local Rules.

Prior to the adoption of its innovative Patent Local Rules, the
Northern District of California had earned a reputation among
practitioners and scholars for innovative programs and procedures
which were built on these same three elements. During the 1970’s
under the leadership of Chief Judge Robert Peckham, the Northern
District received national recognition for its court-based Alternative
Dispute Resolutions (ADR) programs.

In 1980, the Judicial Conference Advisory Committee on the
Federal Rules of Civil Procedure (Advisory Committee) noted the
widespread criticism, particularly the abuses in the pretrial discovery
process. While it regarded the concerns as serious, the Advisory
Committee did not regard the abuse so serious as to require basic
changes in the rules that govern discovery. However, the Advisory
Committee saw the benefit in encouraging judges to become more
actively involved in managing civil cases. At the recommendation
of the Advisory Committee, in 1980, Rule 26(f was added
specifically to provide for a “scheduling conference.” Under FRCP
26(f), the scheduling conference could be ordered by the court on its
own motion or upon motion of any party.35 The Advisory Committee noted that the procedure was intended to provide a hearing before the court for an attorney who has unsuccessfully attempted to effect a reasonable program or plan for discovery with opposing counsel. The Advisory Committee stated:

“It is not contemplated that requests for discovery conferences will
be made routinely…. A number of courts routinely consider
discovery matter in preliminary pretrial conferences held shortly
after the pleadings are closed. The subdivision does not interfere
with such a practice. It authorizes the court to combine a discovery
conference with a pretrial conference under Rule 16 if a pretrial
conference is held sufficiently early to prevent or curb abuse.”

The Effect of Markman v. Westview on the Patent Local Rules

In 1994, when Chief Judge Henderson asked District Judge
Whyte to chair an advisory committee to develop Patent Local Rules,
the United States Court of Appeals for the Federal Circuit was
reviewing Markman v. Westview Instruments, Inc.80 The case was on
appeal from a 1991 decision by the Eastern District of Pennsylvania.

Source: James Ware and Brian Davy, The History, Content, Application and Influence of the Northern District of California’s Patent Local Rules, 25 Santa Clara High Tech. L.J. 965 (2012).

Pleading Requirements

In New Hampshire, the patent rules provide for heightened pleading requirements. Specifically, pursuant to SPR 2.1(a) any complaint (or counterclaim) for patent infringement must contain:

“a list of all products or processes (by model number, trade name, or other specific identifying characteristic) for which the claimant or counterclaimant has developed a good-faith basis for alleging infringement, as of the time of filing the pleading; and at least one illustrative asserted patent claim (per asserted patent) for each accused product or process.”

General Overview of “Local Patent Rules”

Patent local rules typically establish the timing and disclosure requirements for infringement and invalidity contentions, production of infringement/invalidity related documents, as well as procedures and timetables for Markman proceedings. Other topics commonly treated in patent local rules are confidentiality (e.g., protective orders), the production of opinion letters where willful infringement is alleged, and similar matters. Patent rules supplement—not replace—the Federal Rules of Civil Procedure and local civil rules.

Substantive patent law, at least in theory, is consistent throughout the country thanks largely to the exclusive jurisdiction of the Federal Circuit over patent appeals. Patent local rules, on the other hand, can and do vary significantly from district to district because they govern procedural aspects of patent cases. This is true even though many districts’ patent rules are patterned after those of the Northern District of California.

Infringement Contentions

Most patent local rules provide that infringement contentions must be served on the opposing party between 14 and 30 days after the case management conference (“CMC”). Two notable exceptions are worth pointing out: (1) in the N.D. Ohio infringement contentions are due much earlier—15 calendar days following the Answer or motion under FRCP 12 and (2) in the Eastern District of Texas and the Eastern District of Washington infringement contentions are due 10 days before the CMC.

All patent local rules require plaintiff patentees to identify the asserted claims and to serve claim charts mapping the claims against the accused product(s). Likewise, the patentee must identify whether the accused infringement is literal and/or under the doctrine of equivalents. Many rules also require disclosure of alleged priority dates and which terms a patentee believes are subject to means plus function treatment under 35 U.S.C. § 112(f) (better known under its pre-AIA numbering as 35 U.S.C. § 112 ¶ 6).

Less common is the requirement to identify the particular subsections of 35 U.S.C. § 271 under which infringement is alleged. Such a requirement may be especially important where contributory infringement or inducement is expected to play a prominent role in the case. Similarly, there is variance across districts regarding the requirement to disclose the basis for a charge of willfulness as part of the infringement contentions.

Invalidity Contentions

Invalidity contentions are to the accused infringer what infringement contentions are to the patentee plaintiff. Unsurprisingly, patent local rules for invalidity contentions roughly mirror their counterpart infringement contentions. With respect to invalidity contentions, the heart of all patent local rules is the requirement that the accused infringer disclose the prior art it plans to rely on for anticipation and obviousness purposes and to serve claim charts mapping the prior art against each element of the claims at issue. Further, with respect to obviousness, most districts also require the accused infringer to identify the specific combinations of prior art it plans to rely on. Other common local rule provisions include the requirement to identify claim terms subject to 35 U.S.C. § 112 ¶ 6 means plus function treatment and to raise issues of definiteness, enablement, and written description.

Given the increased viability of § 101 subject matter eligibility challenges in the wake of the Supreme Court’s Bilski and Prometheus decisions (and their progeny), the inclusion or absence of a requirement to articulate a 35 U.S.C. § 101 defense in the invalidity contentions takes on increased significance. Similarly, patent litigators would do well to determine whether patent local rules require disclosure of unenforceability defenses (e.g., inequitable conduct or patent misuse) as part of the invalidity contentions. Most do not, but some do (e.g., N.D. Ill, N.D. Ohio).

Regarding the timing of invalidity disclosures, there is a wide variation among districts—contrast the Northern District of Illinois (two weeks after infringement contentions) with the Southern District of California (two months after infringement contentions).

Amending Contentions

Patent local rules deal with the amendment question in two ways. First, some districts provide for serving initial/preliminary contentions as well as a separate round of final contentions. Second, and more commonly, other districts provide for a single set of contentions that automatically become final at a defined point but which may be amended for specified reasons (such as to comply with an unfavorable claim construction order) or other “good cause.”

Document Production

When and what documents a party must produce is an important consideration in any litigation, but can take on special significance in patent cases because the costs can be astronomical and many of the documents sought may contain sensitive business information. In contrast to most district court litigation, local patent rules typically place an affirmative requirement on parties to produce certain categories of documents without waiting for document requests from an opposing party.

Representative provisions from the Eastern District of Texas, excerpted below, give a feel for the disclosure burden. At the time a party serves its infringement contentions it must produce “[d]ocuments . . . sufficient to evidence each . . . sale of or offer to sell[] the claimed invention prior to the date of application for the patent in suit,” “[a]ll documents evidencing the conception, reduction to practice, design, and development of each claimed invention, [prior to the priority date],” and “[a] copy of the file history for each patent in suit.” E.D. Tex., P.R. 3-2.

Similarly, at the time invalidity contentions are due, a party must produce “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements [of the accused products in the infringement claim chart and a] copy of each item of prior art identified [in the invalidity claim chart] which does not appear in the file history of the patent(s) at issue[, including English translations].” E.D. Tex., P.R. 3-4.

One topic of interest where willful infringement or inducement is at issue concerns the disclosure of advice of counsel opinions. Many patent local rules require a party to produce an exculpatory opinion shortly after the court’s claim construction order or forfeit the right to rely on it. Others key the production date to the close of fact discovery.

Claim Construction

Nearly all patent local rules address the timing and procedures for the claim construction process including timelines for exchanging terms, proposed constructions, claim construction briefing, the preparation of a joint claim construction statement, and the Markman hearing itself. Several districts (S.D. Ind., W.D. Penn., and S.D. Tex.), to their credit, provide timetables in which the court is expected to return a claim construction order following the Markman hearing.

Another important requirement imposed in some districts is a limit on the number of terms allowed for construction, most commonly ten terms (see N.D. Cal., D. Idaho, and N.D. Ill.). Other districts generically require the parties to meet and confer to “narrow[] or resolv[e] differences.” See, e.g., N.D. Ga. Patent L.R. 6.1(b).

Districts are roughly split between simultaneous exchange of claim construction briefs and consecutive briefing (i.e. opening/opposition/reply). An outlier is the Northern District of Illinois which requires the accused infringer to fire the first salvo in the claim construction battle because “[patentees] are more likely to argue for a ‘plain meaning’ construction.” See comment to N.D. Ill. LPR 4.2.

Author: Travis Jensen

Implementation

This part lists the Patent Local Rules that have been implemented as of March 11, 2015.

California
• Northern District (last updated Nov. 1, 2014)
• Southern District (last updated Feb. 2, 2015)
Colorado (adopted Aug. 1, 2014)
Delaware
• Chief Judge Stark scheduling order (non-ANDA issued June 2014, ANDA issued July 1, 2014) — included in Chapter 7 (non-ANDA), Chapter 10 (ANDA)
• Judge Robinson scheduling order (last updated Feb. 5, 2015)
• Judge Sleet scheduling order (patent) (last updated Feb. 25,
2014)
• Judge Andrews Rule 16 patent scheduling order (last updated April 2012)
Georgia
• Northern District (effective July 15, 2004)

Idaho (revised Jan. 2, 2015)
Illinois
• Northern District (last updated Apr. 28, 2015)
Indiana
• Northern District (last updated Aug. 15, 2014)
• Southern District Patent Case Management Plan (revised Nov. 3, 2014)
Maryland (revised July 1, 2014)
Massachusetts (updated through Jan. 6, 2015)
Minnesota: uses Form 4 for patent cases (special Rule 26(f) report) (last updated May 14, 2013)
Missouri
• Eastern District (effective Jan. 1, 2011)
Nevada (effective Aug. 1, 2011)
New Hampshire (last updated Dec. 1, 2013)
New Jersey (last updated Apr. 3, 2014)
New York
• Eastern District (effective Apr. 8, 2013)
• Northern District (effective Jan. 1, 2012)
• Southern District (updated Jan. 30, 2015)
North Carolina
• Eastern District (last updated Aug. 2013)
• Middle District (last updated Mar. 1, 2014)
• Western District (effective Mar. 31, 2011)
Ohio
• Northern District (effective Oct. 22, 2009)
• Southern District (effective June 1, 2010)
Pennsylvania
• Western District (effective Dec. 1, 2009)
Appendix D: Patent Local Rules
Appendix D-3
Tennessee
• Western District (last updated Jan. 1, 2014)
Texas
• Eastern District (last updated May 19, 2015)
• Northern District (Dallas Div.) (last updated Dec. 1, 2009)
• Southern District (last updated Dec. 1, 2009)
Utah (effective Dec. 1, 2013)
Washington
• Eastern District (effective Nov. 10, 2010)
• Western District (effective Jan. 1, 2009)

The best source for checking for updates to patent local rules remains the official website of
each district court of interest.

The Northern District of California and the District of New Jersey have similar
rules in many areas. Both jurisdictions require infringement claim charts and enforce
§ 271 rules and § 101 defenses on invalidity contentions in the same way. The
jurisdictions differ in the required timing for infringement and invalidity contentions,
as well as rules for document disclosure and claim construction.

In addition, several federal districts are known as “rocket dockets”—districts in
which cases are typically disposed of much faster than in other federal districts. Typically
these districts have special rules for handling patent cases, go to trial within a
year of filing the complaint, are willing to resolve cases on summary judgment motions,
and tend to view discovery disputes harshly. The Eastern District of Texas,
Eastern District of Virginia, and the Western District of Wisconsin are commonly
viewed as rocket dockets (along with the International Trade Commission). Many of
these districts have judges who establish standing orders to move cases forward in a
rapid fashion, and the local rules in these jurisdictions (even if not specific to patents)
tend to support efficient management of the docket.

However, each venue is unique. In the Eastern District of Texas, local counsel is
generally needed, and the local patent rules must be observed. Notably, infringement
contentions are due no later than ten days before the initial case-management conference.
The Western District of Wisconsin does not have local patent rules, but
judges do have specific procedures for patent cases—including mandating that infringement
contentions be served within five weeks of the first scheduling conference. In the Eastern District of Virginia, all cases proceed quickly, and there are no specific rules for patent cases.

See generally
James Ware & Brian Davy, The History, Content, Application, and Influence of the
Northern District of California’s Patent Local Rules, 25 Santa Clara Computer & High
Tech. L.J. 965 (2009).