Overview of Patent Local Ruels
Patent local rules are case management protocols that impose a series of incremental obligations upon litigating parties at various stages throughout the litigation process. Usually devised by district courts, these rules generally focus on the disclosure of infringement and invalidity contentions, detailed information about accused products, prior art, and invalidity arguments, and the schedule for disclosure of claim construction positions by the parties. Designed in large part to expedite the adjudication of patent disputes, patent local rules are said to promote efficiency by narrowing issues for resolution and facilitating early settlement efforts.
Although they have become commonplace, patent local rules are a relatively recent development in the United States. While the Northern District of California was arguably the first court to adopt local patent rules in 1991 (to govern the handling of discovery disputes in patent cases), the vast majority of U.S. courts adopted them more recently – in many cases, pursuant to the directives of the Federal Circuit. Indeed, the Courts of Appeals for the Seventh and Federal Circuits largely credit the advisory committee’s 1998 report calling for courts to craft local patent rules to address issues it saw as unique to patent cases. Many of these courts hold that the Federal Circuit "strongly encourage[s]" the use of local rules that control discovery and motion practice in patent cases.
Nevertheless, patent local rules are not uniformly adopted and their scope varies greatly from district to district. For example , the Central District of California does not maintain its own patent local rules, and instead applies those of the Northern District of California, while other districts’ patent local rules also incorporate and adapt the Northern District’s rules. Because most federal district courts have adopted some version of the Northern District of California’s patent local rules, those rules are often referred to as "model" patent local rules.
Individual districts have particularly different practices regarding the application of local rules to cases transferred from another district. For instance, the Northern District of California’s rules apply whenever a patent case is transferred to that district, unless otherwise ordered by a judge. The Central District of California, however, follows the Patent Local Rules of the Northern District of California only when no scheduling or Rule 16 order had previously been issued prior to transfer to the Central District of California, and only to the extent that the presiding judge finds the rules to be consistent with the Court System General Order 439. The Eastern District of Texas, the Court of Appeals for the Federal Circuit, and the Fourth Circuit all appear to stand with the Central District of California on this issue. By contrast, to the extent that the Central District of California, the Northern District of California, the Eastern District of Virginia, and the District of Delaware all apply their local patent rules to cases that were transferred into their districts.
The Purpose of Patent Local Rules
Each Court has local rules that define the timing and scope of the pleadings based on the case type and technology. The default rules are often set by the court and adjusted from there based on each unique litigation. These local rules can have a significant impact on the efficiency and effectiveness of patent litigation.
The most significant impact of local rules on patent litigation is the streamlining of the patent claims and defenses. A limited number of claims are often asserted and the bulk of the case revolves around those claims. Under the local rules, only so many claims will be allowed and any claim or defense added to the case after that date may need leave of the Court to do so.
Local rules set the determination of the scope of the case from step one. With the efficient and effective simplified timelines and scope of the work, the parties are able to invest their resources more wisely which hopefully decreases the cost of litigation. Additionally, the streamlined litigation allows for the Courts to hear more cases and in turn, assist in the timely and effective resolution of those cases.
Another impact of patent local rules is making plain the complex patent litigation process and issues. By requiring the parties to identify what they believe to be the most significant issues at the beginning and focus on those throughout the litigation, the parties and courts are able to reduce the time and cost associated with the comprehensive complexity of most patent litigation.
What is Covered By Patent Local Rules
Accountability and predictability are essential in the handling of patent cases. The local patent rules ensure that all parties comply with the rules of procedure guiding their actions. Following the prescribed procedures prevents parties from gaining unfair advantages, and from unreasonably delaying the schedule of proceedings. Most local patent rules provide a set of guidelines outlining what is required from the claim chart and briefings. As a patent case progresses, the local rules will continued to be followed throughout the duration of the case. Although the specifics may differ slightly from one jurisdiction to another, most local patent rules include similar basic elements and requirements. These guidelines include provisions on disclosures, infringement contentions, invalidity contentions, and discovery. All of these are explained below.
The following are key elements commonly found in local patent rules:
Contentions and Disclosure of Asserted Claims and Infringement Also referred to as "Patent Rules 3-1," the Local Patent Rules guide the parties in their disclosures of asserted claims and infringement contentions per rule 3-1(1) through 3-1(3). The contentions must also explain how the accused products have been infringed. For these contentions, the patent holder’s claim should expressly state whether it is asserting direct, contributory, or induced infringement. If there are multiple alleged infringements, the contentions must be identified separately in accordance with their respective limitation e.g., asserted independent claims and/or asserted dependent claims. Every contentions statement should contain facts and evidences supporting how each limitation of an asserted claim has been satisfied by the allegedly infringing product or service. If any product or service covers multiple patents or multiple ways of infringement, the contentions must expressly identify all the asserted patents together with all the various accused infringing acts and assert claims contained therein. The Local Patent Rules frequently require parties to provide specific contentions for each accused product or service. Parties are expected to identify the asserted independent claims and every accused infringing act for each of the asserted claims in separate claim charts. The charts must clearly include an identification of the accused products and infringing acts in corresponding tables and/or appendices that break down the asserted claims into their every limitation. The charts should help the court in identifying the specific imposes of the infringement claims without needing to comb through the patent in order to find the subject matter of the infringement.
Infringement Profile Also referred to as "Patent Rule 3-1 (4)," parties are required to provide evidence of their infringement analysis. Through this party will let others know how their own product(s) infringed a patent and resulted in the lawsuit. The analysis must be supported with evidence capable of narrowing down the infringement issues. The infringement analysis must contain at least the following information:
Discovery Discovery is governed by Local Patent Rule 3-8. Local Rule 3-8 outlines a party’s obligations to produce discovery regarding damages. The Local Rule requires parties to append all documents supporting their damages contentions and computation of damages. The Rule also provides the time for the parties to produce an initial disclosure and an amended disclosure of their claims damage.
Invalidity Contentions Similar to infringer contentions, Local Rule 3-3 governs the amendment of invalidity contentions and states that if a defendant accuses the validity of a party’s patent, the party may amend its contention. In addition, if additional prior art is discovered, upon a good cause shown, the party is allowed to amend its invalidity contentions. The party seeking to invalidate the patent is required to provide a chart just like the one submitted by the patent holder. The amendment must identify at least one item of prior art for each limitation of an asserted claim. The party may meet this requirement by providing expert testimony fully supporting their contentions and theories. Local Rule 3-6 governs the amendment to infringement and invalidity contentions. Rule 3-6 allows parties to amend contentions, subject to a showing of good cause. Amendments under Local Rule 3-6 must be timely, and their explanations supported by articulable justifications.
Differences Between The Various Patent Local Rules
Geographic location plays an important role in patent caselaw, as patent local rules can and do vary from one federal district court to another. Courts have adopted and continue to adopt their own local rules for patent cases, generally after consulting with the bar and public hearings. These local rules differ in their requirements—in these sources of diversity, in other words, rest some of the strengths, weaknesses, and vulnerabilities of many a patent. Consider, for example, the following two sets of local rules, one from the District of Delaware and the other from the Northern District of California. In the District of Delaware, by default, "[w]ithin 14 days after the date of service of ‘Claim Terms, Claim Elements, and Claim Limitations by Claim,’ each party shall serve a ‘preliminary selection,’ in such party’s preferred form, of asserted claims, preliminary list of prior art, and terms for construction, in separate court designated forms." In the Northern District of California, contrastingly, "each party shall propose terms for construction and shall provide by affidavit or declaration supporting evidence that the proffered constructions are the constructions used in the party’s infringement contentions." Also, in the District of Delaware, a "local dispute resolution expert shall be assigned to assist in the settlement of every patent case." In the Northern District of California, by contrast, there is "no presumptive referral to a magistrate judge to manage a patent case." In the District of Delaware, moreover, "shorter briefing times and page lengths for motions, including summary judgment motions, may be established by the Parties’ stipulation, subject to an additional retraining order under Federal Rule of Civil Procedure 59(e)." In the Northern District of California, conversely, "[u]nder unusual circumstances, the court may shorten the time for noticing a motion, and may alter the page limits for the motion, its opposition and reply." Local rules like those found in the District of Delaware and the Northern District of California—seemingly innocuous, but possibly far from it—can have critical, case-altering effects. As a means for imposing limits and for resolving disputes relating to scope and timing, these local rules can challenge and, where they threaten over-commitments of resources in the litigation context, compel opportunistic parties to reevaluate and alter their assertions and strategies.
How Patent Local Rules Impact Litigation
Practitioners are presented with many challenges when operating under and falling within the very strict confines of the patent local rules. Of particular note, there are a number of pitfalls that often lay in wait for the unknowing. The most common pitfall is anticipating a shortened response timeframe due to reasons outside of the litigants’ control. A common practice among practitioners is to file a written motion asking the Court for a presumption of "unintentional delay" if a party’s document production exceeds a good faith estimate . A second known issue is meeting the reasonable "deadline" for document productions as set forth in the patent local rules for that particular district. Although the patent local rules provide a "reasonable" time period in which to provide discovery, it can be a tricky proposition to provide such documents by the deadline without trial-like production efforts. Finally, exhaustive discovery is a paramount concern among those practicing in patent local rules districts. Unfortunately, patent local rules lead to responsive document production in a piecemeal fashion. Therefore, parties are often faced with the need to supplement documents upon a moment’s notice.
How To Deal With Patent Local Rules
Effectively navigating the complexities of patent local rules is critical to the success of litigation in favorable venues. These rules are generally unique to each federal district, meaning there is no "one size fits all" strategy. However, there are several effective strategies and best practices that can apply to each district’s rules. These strategies involve familiarizing oneself with any and all governing local rules before practicing, from the answer to the last pretrial dispositive motion.
Make Sure You Know the Local Rules
The first step to navigating local rules is knowing them. This means more than a cursory glance to ensure your thousands of pages of filing are in compliance and you have met the current deadlines. Familiarity with the nuances of each district’s particular rules will better prepare you to be able to present cases in the best possible light. It is also important to bear in mind that some local rules may not come into play until the consequential motions for summary judgment and/or motions in limine are filed prior to trial. Therefore, it may not be practical to thoroughly research local rules for every district at the outset of a patent case or even an appeal to the Federal Circuit.
Have a Plan
First and foremost, attorneys must always develop a plan for managing patent litigation. This plan will be based on the legal theories that have been developed during the litigation, attorneys’ strategic goals, and the local rules of the forum district. There are several specific examples of local rule violations, however, some of the most egregious of these violations are: These actions can easily put good attorneys and their clients in a hole they may never be able to recover from. Parties who don’t abide by the jurisdiction’s local rules are often sanctioned by courts, which don’t take violations lightly.
Recent Patent Local Rules Developments and Trends
Patent local rules are evolving within many districts. Some districts adopted special patent procedures years ago, but they have received little attention since—much like the initial rules were seemingly meant to do. A few districts have recently adopted patent local rules that depart significantly from existing local rules in a few critical areas. For example, the Northern District of California recently made some substantial changes to its already unique patent local rules. At the same time, the Eastern District of Texas is currently considering adopting modifications to its rules that would follow the Northern District of California’s proposal. Texas’ proposed changes do not go quite as far as Northern California’s changes, but Texas’s proposed changes also depart from its current scheme in notable ways. The changes proposed by the Northern District of California would alter the customary procedure for Markman hearings. The new procedure would: The Texas proposal is more subtle, but would address the issue of claim construction discovery. Currently, the Eastern District of Texas’s patent local rules place no real limitations on claim construction discovery, which is often a factor slowing the pace of patent litigation. Under the current Texas rules, discovery relating to experts on the issues of claim construction are required. For comparison, the Northern District of California’s modified rules would have parties first disclose their extrinsic evidence on claim construction issues with their claim construction briefs. As a result, any extrinsic discovery would be limited to the period between the parties’ claim construction disclosures and their submission of their claim construction briefs. Perhaps these rules change will be good for the parties, but the manner in which they were proposed can raise red flags. Unlike the rules of the Northern District of California, which went through an extensive process during which parties were asked to comment on proposed changes, those currently before the Eastern District of Texas were proposed unilaterally modified by the current Texas judges without the same kind of process. The Northern District of California previously had use special scheduling conferences to address subject matter jurisdiction, but now updates schedules automatically on day one. The Eastern District of Texas also uses automatic scheduling for cases but with a unique element, which creates a new tier for complex cases. For example, the Texas rules kick a case up to the complex tier if a party has filed and served five patent infringement lawsuits in Texas or the United States International Trade Commission within one month preceding the complaint at issue. By creating another tier, this new rule may slow cases down as they wiggle through this additional pocket of scheduling.
Synopsis – A Look at Patent Local Rules
The Local Patent Rules play a pivotal role in patent litigation, providing a structured framework within which parties must operate during the course of the litigation. They establish guidelines for claim construction, discovery of infringement and invalidity contentions, disclosure of witness information, and motions practice prior to trial, among other procedures. A firm understanding of and adherence to these rules is essential for a party navigating the complex landscape of patent litigation. With only a narrow margin of error for mistakes, parties must approach these rules with the diligence and care that they warrant. Consequently , one must not only be aware of the existence of local patent rules but also comprehend their interpretation and application in practice.
In sum, familiarizing oneself with the local patent rules of a particular forum and adhering to them throughout the course of the litigation is of the utmost importance for a party. Numerous procedural traps lay in wait for the unwary. A failure to comply with the local patent rules can have severe implications for one’s case. Therefore, with careful study and guidance, a party can navigate this minefield of potential malfeasance and be better prepared for the rigors of defending or prosecuting a claim.