The Northern District judges are seeking public comment on a new set of proposed Local Patent Rules — click here to email Northern District Clerk Michael W. Dobbins with comments and here to download a copy of the proposed Patent Rules. The rules lay out a schedule that mirrors the Northern District of California and Eastern District of Texas patent rules in requiring initial infringement, noninfringement and invalidity contentions. But the proposed Patent Rules have some significant and interesting differences. In particular, the claim construction process, which occurs near the end of fact discovery, provides for an opening brief by the accused infringer, a response brief by the patent holder and a reply brief by the accused infringer. Here is a general outline of the timeline and procedure dictated by the Patent Rules:
- A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
- Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
- Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff’s response to the invalidity contentions;
- Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
- No party can seek a stay pending reexam after serving its final contentions;
- The claim construction process begins two weeks after defendant’s final invalidity contentions are served;
- Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
- Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline.
The Patent Rules are scheduled such that a patent trial should occur within two years of serving the complaint. Assuming that schedule is enforced, it would result in a significant speeding up of, at least, the larger patent cases in the Northern District.