Volume 49, Issue 2
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Editor
On December 11, 2017, the U.S. District Court for the District of Massachusetts published proposed revisions to the patent local rule (Local Rule 16.6) for public comment. The public comment1 period closed on February 26, 2018. In response to the request for comments, members of the BPLA Litigation Committee met and discussed the proposed revisions, solicited comments from the BPLA membership, and submitted comments on behalf of the BPLA to the District Court2. The BPLA generally endorsed the proposed revisions to the local patent rules, noting that the revised rules “will further promote the efficient and timely administration of patent matters in the District of Massachusetts.” The BPLA also provided specific comments as to the proposed rules relating to the scheduling procedure, automatic patent-related disclosures, expert testimony for claim construction, and written opinion of counsel, which are discussed in greater detail below.
A. Scheduling Procedure - Proposed Local Rule 16.6(c)
The proposed scheduling procedure requires the Court to schedule a trial within 24 months of the initial scheduling conference, and set forth several interim deadlines relating to discovery and Markman. In particular, the proposed scheduling procedures set a Markman hearing within 9 months of the initial scheduling conference, close of fact discovery within 15 months of the initial scheduling conference (or 60 days after entry of the Court's Markman ruling, whichever is later), and close of expert discovery no later than 18 months of the initial scheduling conference (or 90 days after the close of fact discovery, whicever is later). The BPLA generally welcomed the proposed scheduling procedure. The BPLA, however, suggested including a deadline for the Court to issue a Markman ruling. In particular, the BPLA suggested a deadline of one year after the initial scheduling conference (three months after the Markman hearing) for the Court to issue a Markman ruling. The BPLA commented that a Markman order helps parties narrow issues and can possibly help move the parties towards settlement.
BPLA Comments on D. Mass. Proposed Local Patent Rules
Frank D. Liu, Pepper HamiltonGregory D. Len, Pepper Hamilton
B. Automatic Patent-Related Disclosures - Proposed Local Rule 16.6(d)
The proposed patent local rules also set forth deadlines for the automatic disclosure of infringement contentions, non-infringement contentions, invalidity contentions, and certain documentation. The BPLA generally endorsed these provisions, as they help streamline discovery by mandating early disclosure of contentions and relevant documents. The BPLA also provided additional comments as to particular automatic disclosure provisions.
1 A copy of the proposed revisions to the U.S. District Court for the District of Massachusetts patent local rule can be found online at: http://www.mad.uscourts.gov/general/rules-home.htm.
2 A copy of the BPLA comments submitted to the U.S. District Court for the District of Massachusetts can be found here
(a) Infringement Contentions. The proposed local rules require the patentee to provide infringement claim charts within 21 days of the initial scheduling conference. The infringement claim charts must include (i) an identification of each accused product and method, (ii) an identification of the claims alleged to infringe, (iii) an element-by-element description of how each claim is infringed, (iv) to the extent a patentee contends claim an element is subject to §1126, an identification of the structures or acts in the accused products that perform the claimed function, and (v) an identification of whether each element is met literally or under the doctrine of equivalents. (See L.R. 16.6(d)(A).) In addition to these required disclosures, the BPLA recommended adding the requirement that patentees additionally identify the particular subsection of 35 U.S.C. §271 – e.g., §271(a) (direct infringement), (b) (induced infringement), and (c) (contributory infringement) – applicable to the contentions. Further, the BPLA also recommended in cases of joint infringement, an identification of the role of each jointly infringing party in the infringement. The BPLA commented that requiring these additional disclosures will help narrow and streamline discovery. (b) Accused Infringer's Production of Technical Documents, Source Code, and Samples. While the BPLA generally endorses early disclosure of relevant technical documents, source code, and samples, the BPLA emphasized that the disclosure of source code and samples is not necessary in all cases, and that the parties should be able to tailor discovery accordingly. Further, the BPLA expressed concern about the scope of the required disclosure of technical documents for each accused product. In particular, the BPLA expressed concern that the provision as drafted could be interpreted to require disclosure of technical documents as to portions of the accused products or methods unrelated to the infringement allegations. The BPLA suggested clarifying this provision to limit the required disclosure to the components, elements, or functions of the accused products set forth in the patentee’s infringement contentions. With regards to the required disclosure of source code, the BPLA suggested that the provision should be made clear that the production should not be withheld on the basis that the parties have not agreed to a protective order governing source code discovery. The BPLA suggested adopting an interim source code protective order that would govern in the absence of an agreed upon source code protective order. (c) Amendments to Required Patent Disclosures. The proposed local rules require a party seeking to amend its disclosures to seek leave of the Court for any amendment. The BPLA commented that such a procedure would unnecessarily increase motions practice. The BPLA suggested that the parties should be able to amend their disclosures for good cause without leave of court up until 7 days after the close of fact discovery, and that the receiving party should move to strike any amended disclosures that were untimely or made without good cause.
C. Expert Testimony for Claim Construction - Proposed Local Rule 16.6(e)
The proposed rules require the parties wishing to rely upon expert testimony to support claim construction to include such testimony in a declaration in its opening brief, and to make the expert providing such testimony available for deposition. No other expert testimony is allowed absent good cause. While the BPLA does not endorse reliance on expert testimony to support claim construction, particularly in light of the claim construction framework set forth in Philips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) and its progeny, the BPLA suggested that parties should be given the opportunity to submit rebuttal expert declarations, and the expert providing the rebuttal testimony must be made available for deposition.
D. Written Opinion of Counsel - Proposed Local Rule 16.6(f)
The proposed rules require a party relying upon advice of counsel to disclose any opinions and non-privileged documents related to the opinion within 45 days after the Court’s claim construction ruling. Given that close of fact discovery occurs no later than 60 days, the BPLA suggested that such opinions be disclosed within 30 days of the Court's claim construction ruling, to provide sufficient time for discovery, including, for example, depositions of any relevant witnesses on the disclosed opinion.
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The BPLA Litigation Committee appreciated the opportunity to comment on the proposed revisions to the patent local rules. The BPLA is hopeful that the revised rules provide for more speed and certainty in patent cases filed in the District of Massachusetts.
2018 Ⓒ Boston Patent Law Association
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