In December of 2013, the District of Utah did what previously had only been done by a small number of individual judges (e.g., Judge Barbara Crabb)–require parties to brief dispositive summary judgment motions as part of claim construction. Only time will tell, but this is a trend I would expect to see gain traction.
The Southern District of California requires parties to ”[p]rovide a written summary of any oral advice and produce or make available for inspection and copying that summary and documents related thereto for which the attorney-client and work product protection have been waived.”
Bifurcation of damages from liability issues in the Northern District of Georgia is expressly disfavored by the local patent rules. See LPR 5.1. Most districts are silent on the issue. However, some districts invite parties to consider it. For example, the Western District of North Carolina suggests that the parties consider “[w]hether it may be appropriate to bifurcate discovery for infringement, invalidity, and damages issues.” P.R. 2.1(A)(7). Yet other districts mandate bifurcation of certain issues. For example, in the Southern District of Ohio willful infringement is always bifurcated. See S. D. Ohio Pat. R. 107.2.
The local patent rules in the Eastern and Western District of Washington, unlike all other district with patent rules, do not provide for the production of documents relating to infringement by an accused infringer.
If seeking (or defending against) a preliminary injunction factors heavily into your case, you should know that the patent rules in the Southern District of Indiana expressly contemplate “[c]ompression of the deadlines [when] a preliminary injunction is sought.” See also the Northern District of Ohio, Western District of Tennessee, Northern District of Ohio, Western District of Tennessee, Eastern District of Washington, and the Western District of Washington.
Although most local patent rules do not address damages related issues, a minority of districts do have rules that require patent owners to make a damages disclosure. For example, on January 17, 2017, the Northern District of California amended its rules to require the parties to serve “Damages Contentions.” These new rules have teeth. Beginning with the Initial Case Management Conference, the parties “shall provide the court with a non-binding, good-faith estimate of the damages range expected for the case along with an explanation for the estimates.” With its Infringement Contentions, the plaintiff must produce all comparable license agreements, documents related to marking, and F/RAND commitments, among other things. P.R. 3-2. With its Invalidity Contentions, the defendant must produce sales, revenue, cost, and profit data, and comparable license agreements. P.R. 3-4. Thereafter, the parties must exchange contentions setting forth their respective damages theories, computation of damages, and factual support therefore. P.R. 3-8 and 3-9. In the Southern District of Indiana, plaintiffs must serve a “statement of damages” within 30 days after a Markman order. See CMP III.R. Similarly, the patent rules for the Southern District of Texas require plaintiff patentees to produce “license agreements for the patents-in-suit.” P.R. 3-2(a)(4).
A majority of districts with local patent rules have provisions governing infringement contentions where joint direct infringement is alleged. Typically, a patentee plaintiff must describe “the role of each such party in the direct infringement.” See the local patent rules for the following districts: California Northern, Idaho, Illinois Northern, Maryland, Missouri Eastern, Nevada, New Hampshire, New Jersey, New York Northern, North Carolina Eastern, Ohio Northern, Ohio Southern, Tennessee Western, Washington Eastern, Washington Western.
Early Document Productions
The local patent rules of several districts requires parties to produce infringement and/or invalidity related documents with their initial disclosures or otherwise very early in a case. Several notable examples are the Northern District of Illinois (requiring patent plaintiffs to produce invalidity related documents with their initial disclosures and accused infringers to produce infringement and invalidity documents with their initial disclosures), Western District of Tennessee (requiring patent plaintiffs to produce invalidity related documents seven (7) days after the Answer is filed), and the Northern District of Ohio (requiring patent plaintiffs to produce invalidity related documents within fifteen (15) days after the Answer is filed). Patent plaintiffs often favor early production requirements but must take care to not be taken off guard by their own early production obligations.
A number of jurisdictions have patent rules requiring patent plaintiffs to produce all documents relating to ownership of the asserted patents. See the local patent rules for the following districts: California Northern, Idaho, Illinois Northern, Nevada, New Hampshire, New Jersey, New York Northern, North Carolina Eastern, Ohio Northern, and Tennessee Western. Others frame the obligation more broadly by requiring production of all documents relating to “[t]he standing of the party alleging infringement with respect to each patent upon which such allegations are based.” Maryland L.R. 804.1(b)(ii); see also S. D. Ohio Pat. R. 103.1(b)(5). More than just ownership documents, this requirement contemplates production licensing documents where an exclusive licensee may be bringing suit.
Districts with patent rules are roughly evenly split on whether claim construction briefing proceeds in parallel (i.e., the parties simultaneously exchange opening and responsive briefs) or is consecutive (i.e., an opening brief followed by a responsive brief and then a reply brief). It is interesting that in the Northern District of Illinois, which requires consecutive briefing, the alleged infringer files the opening brief. See LPR 4.2(a). In a comment to rule 4.2 the rules committee expressed their view that such an order is “more likely to promote a meaningful exchange regarding the contested points” because “[p]atent holders are more likely to argue for a ‘plain meaning’ construction or for non-construction of disputed terms; alleged infringers tend to be less likely to do so.”
There also exists an asymmetry in the District of Maryland where plaintiff patentees are required to identify claims to be construed and provide a proposed construction thirty (30) days before an accused infringer must do the same. Maryland L.R. 805.1(b-d).
Some judges have broken ranks entirely from a traditional claim construction process. As of July 28, 2011, Judge Crabb in the Western District of Wisconsin will only “construe terms as part of summary judgment motions practice” and “will not hold a stand-alone claims construction hearing and shall not issue an order construing claims.” Dashwire, Inc. v. Synchronoss Technologies, Inc., Case No. 11-cv-257-bbc, page 1 (W.D. Wis. July 28, 2011).
While some litigants may not give much thought to local patent rules until after a case has been filed, that would be a mistake in the District of New Hampshire. 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.