California is known for setting trends, so it’s no wonder that its federal courts started one of the hottest trends in IP litigation: Local Patent Rules. Since the Northern District of California adopted the first Local Patent Rules in 2001, at least a dozen federal district courts followed suit, adopting their own patent rules. Indeed, even Apple’s iTunes has gotten into the trend – several districts’ local patent rules are available as an iPhone App. On March 31, 2011, the Western District of North Carolina (“WDNC”) became the latest district court to join in and adopt local patent rules. Like other local patent rules, such as those used by the Eastern District of North Carolina, the WDNC’s rules help streamline the patent litigation process and focus on issues such as special initial disclosure requirements and the Markman hearing process.
Under the WDNC’s local patent rules, parties are required to produce detailed initial disclosures in addition to those required by Rule 26 of the Federal Rules of Civil Procedure. A party claiming infringement must serve upon the opposing party the claims allegedly infringed, each product the party claims infringes those claims, a claim chart showing where each infringing element may be found in the Accused Device, identification of whether infringement is literal or under the doctrine of equivalents, the priority date for the patent, and the products owned by the party bringing the claim that practice the invention. P.R. 3.1. The party must also produce the prosecution file history for the patent, copies of documents showing disclosure of the invention prior to the priority date, and documents demonstrating the conception, development, and reduction to practice of the invention. P.R. 3.2. A party claiming a patent is invalid must identify all § 102 and § 103 art, provide an invalidity chart, and articulate the grounds for invalidity due to §§ 101, 102, 103, and/or § 112. P.R. 3.3. The party claiming invalidity must also produce documents sufficient to disclose the elements/functionality of the Accused Device complained of by the patentee and copies of any § 102 or § 103 art not found in the prosecution file history. P.R. 3.4. Additional rules exist to address related issues, such as protecting confidentiality (P.R. 2.2), declaratory judgment actions (P.R. 3.5), and reliance upon advice of counsel (P.R. 3.7).
The rules also streamline the Markman process. Under the new local patent rules, parties are required to exchange a list of claim terms to be construed by the Court and, later, their proposed constructions for those terms. P.R. 4.1-4.2. The rules also require the parties to work together to prepare a joint claim construction statement for the court, identifying, inter alia, those terms to which the parties agree regarding construction, those terms that need to be construed by the court, and logistics for a claim construction hearing. P.R. 4.3. The parties then conduct limited discovery on claim construction, prepare their briefs, and participate in the Markman hearing. P.R. 4.4-4.6.
It is likely the WDNC’s patent rules will make patent litigation in the district more efficient. The rules require more disclosures, engage the parties in working together to identify areas of dispute, and cut back on discovery disputes. As a result, the parties and the Court should be able to effectively address the infringement and invalidity issues in the case. Hopefully the trend will be here to stay.