Volume 49, Issue 1
Proposed local patent rule will speed up patent Litigation in D. Mass.
By Erik Belt, McCarter & English
Erik Belt
In January 2017, the judges of the United States District Court for the District of Massachusetts assembled a committee of Boston-area patent litigators to advise them on possible revisions to Local Rule 16.6, which governs patent litigation in the District. The judges drew the committee from the various local bar associations and local chapters of national bar associations. In all, ten prominent Boston-area patent litigators sat on the committee. Past BPLA presidents Erik Belt and Monica Grewal represented the BPLA on the committee, and Erik chaired the committee. After researching local patent rules from other districts and scholarship on best practices in patent litigation, the committee decided that a complete overhaul of the existing rule, rather than mere marginal edits, was in order. The committee then met a number of times from January through April 2017 and submitted a first draft of the rule to the judges in April. After receiving feedback from the judges and meeting with the entire bench in September to field questions and comments, and after meeting several more times to perfect the draft rule, the committee finalized the draft rule in late November. The judges approved the draft and, on December 11, 2017, circulated it to the legal community for comment. The comment period, originally scheduled to expire on January 26, 2018, has been extended to February 26, 2018. The two most prominent features of the proposed local rule, which is available here are the requirements that a trial be scheduled for 24 months after the initial scheduling conference and that a Markman claim construction hearing be held nine months after the scheduling conference. These two new rules alone will speed up patent litigation in the District and provide more order and predictability. Essentially, the proposed rule anticipates the most hotly-contested, time-consuming, and expensive patent litigation procedures and tries to simplify them or, at least, make them more orderly and concrete. For example, soon after the initial scheduling conference, the parties begin to exchange preliminary infringement and invalidity contentions. The rule provides not only a time-table for doing so but also prescribed content. The rule also clarifies that the preliminary infringement and invalidity contentions are just that—preliminary—and are not meant to be binding or to prove the case. The standard for the preliminary disclosures is akin to a Rule 11 good faith standard. Further, the rule requires some automatic production of documents that may be relevant to the claims and defenses. This automatic production, it is hoped, will cut down on some of the discovery disputes that frequently occur in patent litigation. The rule also provides for a default protective order to enable the parties to exchange confidential information. This default protective order, however, is temporary until the parties can negotiate and submit for approval a more thorough protective order, if needed.
These automatic disclosures and document production requirements should also make claim construction more productive by providing sufficient information to inform the parties about which claim terms may actually be the most important. The rule also specifies a set procedure for claim construction. First, the parties exchange claim terms and, absent good cause, may present only 10 claims to the court for construction. The rule also sets the parameters of the briefing. Importantly, the rule establishes procedures for the use of expert testimony to support claim construction. If a party elects to use an expert (which is not required), the party must include the expert declaration with its opening brief. The opposing party must then be given a chance to depose the expert before rebuttal briefs are due. Finally, the rule establishes a default practice for the conduct of the Markman hearing itself. For example, the default is that the hearing will proceed by attorney argument only, without live testimony, absent leave of court. The rule also establishes deadlines for fact and expert discovery. Ordinarily, fact discovery will end 15 months after the scheduling conference (that is, six months after the Markman hearing). If, however, the Markman claim construction ruling is delayed, then the rule provides for an extra 60 days of discovery after the ruling. Expert discovery closes 18 months after the scheduling conference or 90 days after the close of fact discovery, whichever is later. Finally, the rule sets a deadline for a party to elect an advice of counsel defense or otherwise to waive attorney-client privilege or work product protection. A party electing to do so must then disclose any relevant opinion of counsel and provide a privilege log. Failure to meet this deadline bars a party from relying on advice of counsel later. To see how the new rule works, here is a sample schedule of some of the key patent litigation events. This schedule assumes that a complaint and answer have been filed and that the initial scheduling conference was held on January 22, 2018. The schedule does not include all of the due dates but just the main ones.