Volume 49, Issue 3
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federal-circuit
New District Of Massachusetts Local Rules
Tiffany Jiang
The District of Massachusetts has a new Local Rule 16.6 governing patent litigations which went into effect on June 1st, 2018. The rule applies to all newly-filed patent cases and patent cases in which a scheduling order has not yet been entered. The new rules were drafted by an ad hoc committee appointed by the District of Massachusetts bench in early 2017 and was composed of patent litigators and federal judges. The committee solicited comments from both the public and the local patent bar during the drafting process. Significant changes to Local Rule 16.6 are summarized below and include some notable changes, such as clarified deadlines for interim deadlines for the period between pretrial disclosures and trial as well as an expedited timeline to trial.
Under the new rules, compulsory pretrial disclosures are due earlier than before. Within 21 days of the scheduling conference and unless the court orders otherwise, a patentee must provide infringement claim charts, prosecution histories of asserted patents, evidence of conception/reduction to practice (e.g., lab notebooks), evidence of ownership, and documents establishing the identities of all real parties in interest. L.R. 16.6(d)(1). Within 63 days of the scheduling conference and unless the parties agree otherwise, the accused infringer must provide technical documents, samples of the accused product (“or products that perform or were produced by the accused methods”), noninfringement and invalidity claim charts (which, for obviousness, must include allegations of specific prior art combinations and reasons to combine the references), grounds of invalidity under §101 and § 112, documents supporting any asserted invalidity defense, and documents establishing the identities of real parties in interest. L.R. 16.6(d)(4). Under the previous rules, patentees’ preliminary disclosures were due within 30 days of the scheduling conference; accused infringers’ preliminary invalidity and non-infringement disclosures were due within 90 days of the scheduling conference.
Preliminary patent-related disclosures under new Local Rule 16.6(d)(1) and (d)(4) may be amended or supplemented only by leave of court upon a timely showing of good cause. L.R. 16.6(d)(5). The rule provides a non-exhaustive list of examples that support a finding of good cause, such as a claim construction by the court that varies from that proposed by the disclosing party or discovery of material prior art that was not located despite diligent efforts. Id. This provides a heightened standard for obtaining leave to amend relative to the previous rules.
The claim construction process also occurs much earlier under new Local Rule 16.6. No later than 21 days after completion of the compulsory patent-related disclosures (i.e., within 84 days of the scheduling conference), the claim construction process must begin. See L.R. 16.6(e)(1). Previously, claim construction need not begin until as late as 210 days after the scheduling conference. New Local Rule 16.6 also sets the deadline for a Markman Hearing at nine months after the scheduling conference. L.R. 16.6(c)(2). Under the prior version of the rule, no such deadline was imposed.
The timeline for completing fact / expert discovery and commencing trial is also standardized under the new Local Rule 16.6. Fact discovery must conclude within 15 months after the scheduling conference or 60 days after the court makes a ruling on claim construction, whichever is later. L.R. 16.6(c)(4). Expert discovery must conclude 18 months after the scheduling conference or 90 days after fact discovery closes, whichever is later. L.R. 16.6(c)(5). Trial by bench or jury must be held within 24 months of the scheduling conference. L.R. 16.6(c)(1).
New Local Rule 16.6 provides an accelerated and more predictable schedule of events for patent litigations in the District of Massachusetts. The amendments were made to reflect similar rules from patent heavy districts such as the Northern District of California and the Eastern District of Texas. An uptick in patent litigation filings in the District of Massachusetts is widely anticipated as a result of the amendments.
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Tiffany Jang is an intellectual property associate in the Boston office of Haug Partners LLP. The author thanks Haug Partners associate Joshua Barlow for his assistance in preparing this article. All errors are mine.
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