In 2012, those 26 districts accounted for slightly over 50 percent of the total patent-infringement cases filed nationally. Of the top five districts for patent filings, Delaware and the Central District of California remain without local patent rules. It should be noted, however, that these districts, as well as other districts such as the Southern District of Indiana, do have individual judges who have specific procedures regarding patent cases. If the districts where individual judges have patent procedures are included, over 75 percent of the patent cases filed last year were filed in districts that, as of today, have some type of patent procedures or local rules in place.
The stated purpose of local patent rules is typically to improve judicial efficiency and provide structure to complex patent cases. For instance, the Northern District of Illinois states in the preamble to its local patent rules that the rules are intended to "provide a standard structure for patent cases that will permit greater predictability and planning for the Court and the litigants . . . to eliminate the need for litigants and judges to address separately in each case procedural issues that tend to recur."
Similar Basic Requirements and Some Differences
Each of 26 districts that have adopted local patent rules (this article will focus only on district-wide rules and not any individual judge's procedures) use their own approach, with some similarities and some differences among them. It is common, however, to have local patent rules that deal with multiple issues, such as claim construction procedures, expert reports, document production, and deadlines for all of these issues.
Most local rules contain requirements for claim construction briefing. The main difference between districts is whether claim construction briefing proceeds concurrently or consecutively between the parties. For instance, the Northern District of Illinois uses consecutive briefing pursuant to Rule 4.2:
(a) Within thirty-five (35) days after the exchange of terms set forth in LPR 4.1, the parties opposing infringement shall file their Opening Claim Construction Brief, which may not exceed twenty-five (25) pages absent prior leave of court. The brief shall identify any intrinsic evidence with citation to the Joint Appendix under LPR 4.2(b) and shall separately identify any extrinsic evidence the party contends supports its proposed claim construction. If a party offers the testimony of a witness to support its claim construction, it must include with its brief a sworn declaration by the witness setting forth the substance of the witness' proposed testimony, and promptly make the witness available for deposition concerning the proposed testimony.
(b) On the date for filing the Opening Claim Construction Brief, the parties shall file a Joint Appendix containing the patent(s) in dispute and the prosecution history for each patent. The prosecution history must be paginated, and all parties must cite to the Joint Appendix when referencing the materials it contains. Any party may file a separate appendix to its claim construction brief containing other supporting materials.
(c) Within twenty-eight (28) days after filing of the Opening Claim Construction brief, the parties claiming infringement shall file their Responsive Claim Construction Brief, which may not exceed twenty-five (25) pages absent prior leave of Court. The brief shall identify any intrinsic evidence with citation to the Joint Appendix under LPR 4.2(b) and shall separately identify any extrinsic evidence the party contends supports its proposed claim construction. If a party offers the testimony of a witness to support its claim construction, it must include with its brief a sworn declaration by the witness setting forth the substance of the witness's proposed testimony and promptly make the witness available for deposition concerning the proposed testimony, in which case the date for the filing of a Reply Claim Construction brief shall be extended by seven (7) calendar days. The brief shall also describe all objections to any extrinsic evidence identified in the Opening Claim Construction Brief.
(d) Within fourteen (14) days after filing of the Responsive Claim Construction Brief, the parties opposing infringement shall file their Reply Claim Construction Brief, which may not exceed fifteen (15) pages absent prior leave of Court. The brief shall describe all objections to any extrinsic evidence identified in the Opening Claim Construction Brief.
(e) The presence of multiple alleged infringers with different products or processes shall, in an appropriate case, constitute good cause for allowing additional pages in the Opening, Responsive, or Reply Claim Construction Briefs or for allowing separate briefing as to different alleged infringers.
(f) Within seven (7) days after filing of the Reply Claim Construction Brief, the parties shall file (1) a joint claim construction chart that sets forth each claim term and phrase addressed in the claim construction briefs; each party's proposed construction, and (2) a joint status report containing the parties' proposals for the nature and form of the claim construction hearing pursuant to LPR 4.3.
In contrast, the Southern District of California requires concurrent briefing pursuant to Rule 4.4:
(a) Not later than fourteen (14) days after close of claim construction discovery, the parties will simultaneously file and serve opening briefs and any evidence supporting their claim construction.
(b) Not later than fourteen (14) days after service of the opening briefs, the parties will simultaneously file and serve briefs responsive to the opposing party's opening brief and any evidence directly rebutting the supporting evidence contained in the opposing party's opening brief.
(c) Absent leave of Court, the provisions of Civ. L. R. 7.1.h for length of briefs for supporting and reply memoranda shall apply to the length of opening and responsive claim construction briefs.
Although most local rules are similar in regard to claim construction requirements, one aspect not found in all local rules is whether the parties are limited in the number of claim terms disputed. Many districts require the parties to meet and confer in an attempt to limit the number of claim terms disputed, but other districts have taken the next step of proactively limiting the number of disputed terms allowed. For instance, the Northern District of New York's Rule 4.4(b) limits the parties to 10 disputed terms:
No more than ten (10) patent terms or phrases may be presented to the Court for construction, absent prior leave of Court upon a showing of good cause. The assertion of multiple non-related patents shall, in an appropriate case, constitute good cause. If the parties are unable to agree upon which ten (10) terms are to be presented to the Court for construction, then five (5) shall be allocated to all plaintiffs, jointly, and five (5) to all defendants.
This approach prevents litigants from disputing a large number of terms that would cause the claim construction process to be unreasonably long. This approach would help achieve the stated purpose of streamlining litigation and promoting efficiency.
Most local patent rules also contain requirements for infringement contentions. One example is the Western District of Tennessee's Rule 3.1:
Within seven (7) days after the Responsive Pleading is filed, a party claiming patent infringement shall serve on all parties Initial Infringement Contentions containing at least the following information:
(a) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 ("Infringement of Patent") asserted;
(b) Separately for each asserted claim, each Accused Instrumentality that each party claiming infringement contends infringes, including the name or model number if known;
(c) A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the corresponding structure and function and where such structure and function is found in the Accused Instrumentality;
(d) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer(s) that contribute to or that are inducing direct infringement, including a description of the role of each relevant party if direct infringement is based on the joint acts of multiple parties;
(e) Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;
(f) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and
(g) If a party claiming patent infringement alleges willful infringement, the basis for such allegation.
As shown above, the party asserting infringement must provide detailed claim charts, for both indirect and direct infringement, and priority dates for all asserted claims, all of which are standard for infringement contentions. This rule does not require, as many do, that the patentee provide claim charts for any of its own products that it asserts are covered by a patent, but it does require the patentee to provide the basis for any willful infringement allegations at that time, which some other rules do not require, and also requires these contentions earlier in the case than most local rules.
Most districts, including the Western District of Tennessee, also require the patentee to produce any invalidity documents along with the infringement contentions. For example, the Western District of Tennessee's Rule 3.2 requires the following:
With the Infringement Contentions, the party claiming patent infringement shall produce to each opposing party or make available for inspection and copying:
(a) All documents concerning any disclosure, sale or transfer, or offer to sell or transfer of the claimed invention prior to the bar date under 35 U.S.C. § 102(b) and/or the date of invention for the patent in suit;
(b) All documents evidencing the conception and first reduction to practice of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to LPR 3.1(f), whichever is earlier;
(c) A copy of the file history for each patent in suit (or so much thereof as is in the possession of the patentee) and any patent(s) or application(s) to which each patent in suit claims priority; and
(d) All documents evidencing ownership of the patent rights by the party asserting patent infringement.
Nothing in these required disclosures shall be considered an admission that such disclosures are prior art or evidence of prior art under 35 U.S.C. § 102 or § 103.
Although rules may vary with respect to the timing of the disclosures, the basic requirements are similar in all districts.
Another common requirement in local patent rules is for the accused infringer to produce invalidity contentions. One example is the Eastern District of Missouri's Rule 3-4:
Not later than 49 days after service upon it of the Disclosure of Asserted Claims and Preliminary Infringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Invalidity Contentions, which must contain the following information:
(a) The identity of each item of prior art, including patents, printed publications, prior public use, and prior on sale activity, that allegedly anticipate(s) each asserted claim or render(s) it obvious. Each prior art patent shall be identified by its number, country of origin, and date of issuance. Each prior art publication must be identified by its title, date of publication, and where feasible, author and publisher. Prior use under 35 U.S.C. § 102(a) or (b), or on sale activity under 35 U.S.C. § 102(b), shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity which made the use or which made and received the offer, or the person or entity which made the information known or to whom it was made known. Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identity of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);
(b) On a claim-by-claim basis, whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the basis for such allegation, must be identified;
(c) A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function;
(d) Any grounds of invalidity under 35 U.S.C. § 102(c) shall be identified by providing a description of the facts supporting the allegation of abandonment; any grounds of invalidity under 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived; and
(e) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or enablement, written description, or failure to describe the best mode under 35 U.S.C. § 112(1) of any of the asserted claims.
Most local rules contain similar requirements: an invalidity claim chart and clear identification of all prior art asserted to invalidate the patent.
As with infringement contentions, the accused infringer typically must comply with a similar document production rule to produce all invalidity documents, as well as any documents regarding possible infringement of the accused instrumentalities. One example is the Northern District of California's Rule 3-4:
With the "Invalidity Contentions," the party opposing a claim of patent infringement shall produce or make available for inspection and copying:
(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Patent L.R. 3-1(c) chart; and
(b) A copy or sample of the prior art identified pursuant to Patent L.R. 3-3(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon shall be produced.
The producing party shall separately identify by production number which documents correspond to each category.
All of the above requirements are common to most, if not all, of the local patent rules from every district. However, some local rules have other, unique requirements that other districts might wish to adopt. For instance, not all rules require the accused infringer to provide non-infringement contentions in response to a patentee's infringement contentions. One district that imposes such a requirement is the Eastern District of Missouri with Rule 3-3:
Not later than 28 days after service upon it of the Disclosure of Asserted Claims and Preliminary Infringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Counter-Infringement Contentions, indicating which elements from each asserted patent claim that it admits are present in any Accused Instrumentality, and which it contends are absent. As to absent elements, the Alleged Infringer shall set forth in detail the basis for its contention that the element is absent.
Another requirement that some districts may wish to adopt is the requirement that the patentee respond to the invalidity contentions. For instance, the District of New Jersey's Rule 3.4A:
Not later than 14 days after service upon it of the "Invalidity Contentions," each party defending the validity of the patent shall serve on all parties its "Responses to Invalidity Contentions" which shall include the following:
(a) For each item of asserted prior art, the identification of each limitation of each asserted claim that the party believes is absent from the prior art, except for design patents, where the party shall supply an explanation why the prior art does not anticipate the claim;
(b) If obviousness is alleged, an explanation of why the prior art does not render the asserted claim obvious;
(c) The party's responses shall follow the order of the invalidity chart required under L. Pat. R. 3.3(c), and shall set forth the party's agreement or disagreement with each allegation therein and the written basis thereof; and
(d) The production or the making available for inspection and copying of any document or thing that the party intends to rely on in support of its Responses herein.
Some local rules, to prevent the withholding of documents based on confidentiality, have default provisions regarding confidentiality. One such rule is the Eastern District of Missouri's Rule 2-2:
If any document or information produced in Patent Litigation is deemed confidential by the producing party and if the Court has not entered a protective order, the producing party shall mark the document Confidential–Outside Attorneys' Eyes Only and, until such time as the Court enters a protective order, disclosure of the confidential document or information shall be limited to each party's outside attorney(s) of record, the employees of such outside attorney(s), and necessary outside document services, unless the parties agree to the contrary. The person(s) to whom disclosure of a confidential document or information is made under this rule shall keep it confidential and use it only for the purpose of litigating the case.
Other local rules, to avoid delayed motions, address motions to stay the case for patent reexamination, such as the Northern District of Illinois's Rule 3.5:
Absent exceptional circumstances, no party may file a motion to stay the lawsuit pending reexamination in the U.S. Patent Office after the due date for service of the Final Contentions pursuant to LPR 3.2.
Another aspect particular to some local rules is whether they address bifurcation. Most local rules are silent as to whether to allow bifurcation. Some districts have rules disfavoring the practice, as seen in the Northern District of Georgia's Rule 5.1:
There shall be a rebuttable presumption against the bifurcation of damages from liability issues in patent cases for purposes of either discovery or trial.
Other districts encourage, or even mandate, at least some bifurcation. One such district is the Southern District of Ohio, which has rules bifurcating trial and discovery on willful infringement from trial and discovery on infringement and invalidity, such as Rule 107.3:
Discovery of any attorney-client or work product privileged documents, information, or testimony related to willful infringement in a Patent Case by an accused infringer is automatically stayed in the Patent Case until the patent holder has obtained a judgment of patent infringement in the Patent Case against the accused infringer on at least one claim and all other claims of infringement and the accused infringer's legal and equitable defenses have been fully adjudicated.
One final note on the differences between local patent rules is that most apply only after a case is filed. However, some rules, and some courts, have held that pleadings standards may be affected by local patent rules. One such rule is New Hampshire's Rule 2.1:
(a) Special pleading requirements. Any pleading containing patent infringement claims or counterclaims must contain:
(1) 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
(2) at least one illustrative asserted patent claim (per asserted patent) for each accused product or process.
(b) Scope of discovery. Discovery shall not be limited to the products and processes named in the complaint. The party asserting infringement may also engage in discovery into other products with reasonably similar features or other processes with reasonably similar steps.
The Effects of Adopting Local Rules
As shown, all local patent rules contain similar basic requirements, with some unique rules included by different districts. Most local patent rules are aimed at improving efficiency in the judicial process, both for the court and for the litigants involved. However, when comparing the time to trial for patent cases before and after a district adopts local patent rules, some courts become faster, while others slow down (although the available information is not complete for every district).
Likewise, when measuring the time to a contested judgment, no clear pattern emerges.
In addition, the number of patent cases filed in each district, following the adoption of local patent rules, did not appreciably change when compared with the rate of filing patent cases nationally. The data indicate that local patent rules have not had as great of an impact as could have been anticipated, at least as to some outcomes of cases. Local patent rules, however, are likely to provide the type of guidance and scheduling to help resolve discovery and scheduling disputes and provide the most timely information to litigants as possible while a case proceeds. Local patent rules, by providing a more predictable schedule also may help the parties budget correctly for litigation. Although there is some variation among districts, for the most part local patent rules have come close to creating uniform requirements in patent litigation in all districts that have adopted local patent rules. The scheduling may differ and how strictly a court interprets its rules may change, but the basic requirements of local patent rules are similar in most districts. This should allow litigants, no matter where they are in the country, to adapt to each district's local patent rules and to further promote efficiency in all patent cases.
Keywords: litigation, intellectual property, local patent rules, federal district courts, claim construction briefing, infringement, invalidity, bifurcation