I. Intro-What Are “Local Patent Rules”?
Since the Northern District of California first adopted local patent rules in 2001, patent rules have become part and parcel of many patent cases in districts throughout the country. Approximately 30 U.S. district courts have formally adopted patent local rules. Several other districts have implemented patent rules on a provisional basis and individual judges across the country have standing orders tantamount to 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.
II. 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.
III. 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).
A. 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.”
IV. 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.
V. 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.