Scheduling. Patent cases in Massachusetts just got a lot faster. The most notable change to L.R. 16.6 is a requirement that the Court sets deadlines for the close of fact discovery, expert discovery, and trial at the scheduling conference. Importantly, the new rules call for trial to occur within 24 months of the scheduling conference. This is a significant change to past practice in the District, where trial was typically not set until later in the case and the average time to trial in patent cases was 37.6 months on average over the last five years, 38.5 months for jury trial, and 26.5 months for bench trial.
Amended Local Patent Rule 16.6 also sets out interim dates for the exchange of preliminary patent-related disclosures and accelerates the schedule for exchanges related to claim construction. Under the old rule, the first claim construction exchanges took place ten months after the scheduling conference. Under the new rule, those exchanges begin less than three months after the scheduling conference. A summary of the schedule contemplated under amended L.R. 16.6 is appended to the end of this alert.
Initial Patent Related Disclosures. Amended Local Rule 16.6 retains the requirement for the sequential exchange of infringement claim charts (by the patentee) and non-infringement and invalidity claim charts (by the accused infringer) early in the case. The amended rule, however, also calls for the production of additional information by both patentees and accused infringers:
- The Court appears sensitive to issues stemming from allegations of joint infringement and indirect infringement. Along with infringement claim charts, patentees must identify “the roles of [any] party in the infringement” “if any alleged infringement is based on the acts of multiple parties.” Patentees must also produce “ownership evidence” as well as “[d]ocuments sufficient to establish the identity of all real parties in interest as to the patentee and the asserted patent(s)." For patentees, the term “real party in interest” refers to persons or entities that own a controlling interest in, or otherwise control, the patentee or the patent(s)-in-suit.
- For accused infringers, in addition to service of both non-infringement invalidity contentions, the amended rule calls for the early production of not only technical documents but also samples and source code (if relevant). The rule also states that accused infringers should produce information concerning real parties in interest or “any person or entity that, alone or in combination, owns a controlling interest in, or otherwise controls, the accused infringer.”
Amendments to Patent Related Disclosures. Under the prior rule and the District’s general practice, the parties were generally allowed to amend infringement, non-infringement, and invalidity contentions through a Markman ruling. Both parties were typically free to amend contentions without leave up to thirty days before the Markman hearing. The rule also allowed amendments within thirty days of the Markman hearing. In practice, amendments were liberally allowed provided they did not result in undue prejudice to the other side.
The amended rules appear to be more restrictive. Under the new rule, amendment of preliminary patent-related disclosures is allowed “only by leave of court upon a timely showing of good cause.” Interestingly, after the public comment period, the Court removed qualifying language that appeared in the draft proposed amended rule that instructed that “good cause” should be “liberally construed.” Nevertheless, the amended rule identifies several “non-exhaustive examples” of good cause, which include: (a) the Court adopting a different claim construction proposed by the party seeking the amendment; (b) discovery of prior art that was not located before service of invalidity contentions; and (c) discovery of non-public information about the asserted infringement that was not discovered or located before service of the infringement claim charts.
On its face, the rule appears more restrictive than past practice, but it is not draconian. Diligence and prejudice remain the hallmarks for evaluating whether any given amendment will be allowed. The amended rule also gives the parties the flexibility to work out a sensible schedule for amendments after the production of technical documents. (See L.R. 16.6(d)(2)) This is consistent with the expectation of the judges that the parties act reasonably and cooperate, particularly when it comes to procedural matters.
Expert testimony in Markman. The amended rule assumes—and therefore builds in time to accommodate—the submission of expert declarations and the taking of expert depositions during claim construction. Litigants in this District will need to exercise restraint but, at a minimum, this Court appears willing to embrace Teva v. Sandoz, at least partially.
Advice of Counsel. The amended rules also add provisions concerning the disclosure of any oral or written opinions of counsel, to take place after the Court’s Markman ruling.
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Last year’s Supreme Court decision in TC Heartland changed the landscape for patent litigation in the United States. Patent lawsuits are increasingly being brought in the jurisdiction where the accused infringer has its principal place of business (or at least a meaningful physical presence). Massachusetts—and Boston in particular—has long prided itself on its thriving “innovation” economy. The Commonwealth is home to many companies on the cutting edge of the life sciences and tech industries. In the last twelve months, 72 patent infringement lawsuits have been filed in Massachusetts. The Court’s new patent rules are likely a welcome change to both patent holders and the companies that must defend themselves from infringement allegations. They are robust and balance the interests of patent holders and alleged infringers alike. The adoption of a schedule through trial will promote certainty and should streamline patent litigation in this Court.
|Amended L.R. 16.6 Schedule of Events in Patent Cases|
|3 weeks after scheduling conference||
Patentee serves preliminary patent-related disclosures, including infringement claim charts
|6 weeks after scheduling conference||
Parties meet and confer about the sufficiency of patentee’s L.R. 16.6(d)(1) disclosures and accused infringer’s compliance with patented-related disclosures
|9 weeks after scheduling conference||
Accused infringer’s patent-related disclosures, including technical document product (including source code and/or samples), non-infringement claim charts, and invalidity claim charts
|12 weeks after scheduling conference||
Simultaneous exchange of claim terms to be construed and proposed constructions
|13 weeks after scheduling conference||
Meet and confer regarding agreed constructions
|14 weeks after scheduling conference||
Prepare and file joint claim construction statement
|17 weeks after scheduling conference||
Parties simultaneously exchange and file opening claim construction briefs
|20 weeks after scheduling conference||
Claim construction expert depositions completed
|23 weeks after scheduling conference||
Parties simultaneously exchange and file responsive claim construction briefs
|2 weeks before claim construction hearing||
Parties may exchange and file tutorials (at the Court’s request)
|9 months after scheduling conference||
Claim construction hearing
|4 weeks after claim construction decision||
Disclosure of reliance on advice of counsel and deadline to amend patent-related contentions based on claim construction decision
L.R. 16.6(d)(5)(A), 16.6(f)
|15 months after scheduling conference (or 60 days after claim construction decision)||
Close of fact discovery
|18 months after scheduling conference (or 90 days after claim construction decision)||Close of expert discovery L.R. 16.6(c)(5)|
|24 months after scheduling conference||Trial L.R. 16.6(c)(1)|