By Charles H. Mottier
Leydig, Voit & Mayer
The rules patent litigators have lived by have changed. Certainly the Federal Rules of Civil Procedure, which apply uniformly in all federal district courts, have changed significantly over the last several years. New provisions pertaining to electronically stored information, the discovery of experts and protection of work product number among the most important recent changes. Separate rules adopted by each district court to implement the Federal Rules of Civil Procedure, known as Local Rules, are also changing. These rules can vary significantly from district to district and should be among the factors considered by a patent owner or an accused infringer when deciding where to bring suit.
For example, many litigators favor bringing suit in those districts that have local patent rules. These rules provide a framework for addressing matters that are unique to patent litigation and are intended to streamline and expedite the resolution of contested issues. Notably, the U.S. District Court for the Northern District of Illinois recently adopted a set of local patent rules, following a limited number of other federal district courts. The Northern District of California and the Eastern District of Texas also handle significant patent litigation and have long had their own patent rules.
A standard, staggered contention process is an aspect of local patent rules, replacing contention interrogatories under the Federal Rules of Civil Procedure, but the timing of contentions regarding infringement, noninfringement, validity and invalidity positions advanced by the parties differs from district to district as does the ability to modify contentions during the course of the litigation. For example, unlike other districts, the rules of the Northern District of Illinois require preliminary contentions at the beginning of the case and final contentions after several months of discovery. This permits litigants to revise their contentions based on discovery, without requiring a litigant to petition the court to amend the contention. In contrast, amending infringement contentions in the Northern District of California and the Eastern District of Texas can be problematic.
Each set of local patent rules also provides a timetable and process for claim construction. Some provide for an earlier start to claim construction activities, while others initiate the process later in the litigation to allow more time for discovery, presumably so that the judge is as fully informed as possible when preparing the claim construction ruling.
The sequence of claim construction briefs is also different district to district. For example, some jurisdictions require the patent owner to begin the claim construction process with the patent owner's proposed construction, while here, in the Northern District of Illinois, the rules call for the presentation of the alleged infringer's claim construction, followed by the patent owner's presentation and then a claim construction response from the alleged infringer. Local rules also often limit the number of terms that can be submitted for construction. In the Northern District of Illinois, the number of terms or phrases is limited to 10.
Another Northern District rule encourages the early filing of requests for patent re-examination. Local Patent Rule 3.5 specifies that absent exceptional circumstances, no party shall file a motion to stay the lawsuit pending re-examination after the due date for service of final contentions.
This rule may discourage the tactical use of re-examination requests by accused infringers to subordinate a district court litigation to a re-examination proceeding in the U.S. Patent and Trademark Office.
Other local rules can directly affect patent litigation. One example is the 10-year patent pilot program that has been recently implemented in 14 district courts, including the Northern District of Illinois. This program names a number of judges in each district as "patent pilot judges." While any judge in a district remains eligible to receive a patent case, a patent case can be transferred to a patent pilot judge. This should result in a number of judges becoming very familiar with the unique legal issues in patent litigation.
Local rules also provide for the timing of motion practice and access to the court for resolution of discovery disputes, scheduling issues and summary judgment motions. Some district courts, like the Northern District of Illinois, permit motions to be brought on two days notice after a conference between counsel. Other districts, like the Central District of California, provide for a much more protracted meet-and-confer process and require the preparation of a comprehensive joint stipulation by the parties before the motion can be presented to the court. The practical effect of these rules regarding motion practice is that disputes may not be resolved for three or four months. This can play havoc with a discovery schedule and the prospect of a long delay to resolve any dispute can lead to short-term tactical advantage for the nonmoving party.
Plaintiffs in patent litigation can often bring their complaints in several districts. Plaintiffs and their attorneys are well advised to consider each court's local rules when making that choice, since those rules can affect the progress of the litigation and the resolution of those issues that typically arise.