Litigating a Patent Case in New York? Check the Local Patent Rules in Your District

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All four U.S. District Courts in New York — the Northern District (N.D.N.Y.), Southern District (S.D.N.Y.), Eastern District (E.D.N.Y.), and Western District (W.D.N.Y.) — have enacted Local Patent Rules.  S.D.N.Y. and E.D.N.Y. have adopted the same set of Local Patent Rules, which are fairly streamlined.  N.D.N.Y. and W.D.N.Y. have adopted similar sets of Local Patent Rules, which are much more extensive.  Below is a brief summary of the Patent Local Rules in these districts:

Northern District (N.D.N.Y.)

http://www.nynd.uscourts.gov/sites/nynd/files/local_rules/Local_Patent_Rules_0.pdf

The N.D.N.Y. Local Patent Rules were developed by an ad hoc committee impaneled by Magistrate Judge David E. Peebles.  In addition to Judge Peebles, the committee featured local patent practitioners and included George McGuire, Chairman of Bond’s Intellectual Property & Technology group.  The N.D.N.Y. Local Patent Rules took effect on January 1, 2012.

The N.D.N.Y. Local Patent Rules call for a swift progression of the case following its commencement: 1) Infringement Contentions must be served by the patentee within 14 days after the Case Management Conference, and 2) Non-Infringement, Invalidity and Unenforceability Contentions must be served by the accused infringer within 1 month of the Initial Infringement Contentions.

The parties may only present a total of 10 patent terms or phrases to the court for construction.  Exceptions can be made in cases where multiple non-related patents are asserted.  If the parties are unable to agree on 10 terms or phrases for construction, the plaintiff(s) can elect 5 and the defendant(s) can elect 5.

With respect to the claim construction briefing schedule, the N.D.N.Y. Local Patent Rules set forth that 1)  the parties must contemporaneously file and serve their opening Markman briefs 45 days after serving and filing the Joint Claim Construction and Prehearing Statement, and 2) the parties must contemporaneously file and serve Responding Markman Submissions 30 days after the filing of the Opening Markman briefs.

Under the N.D.N.Y. Local Patent Rules, the case is scheduled to be fully briefed for a claim construction hearing within about 10 and a half months after filing the complaint.

A timeline of the various deadlines in N.D.N.Y. can be found at Appendix A of the Local Patent Rules.

Southern District (S.D.N.Y.) and Eastern District (E.D.N.Y.)

http://www.nysd.uscourts.gov/rules/Standing_Order_In_re_Local_Patent_Rules.pdf

https://www.nyed.uscourts.gov/sites/default/files/general-ordes/ADMINORDER2013-02.PDF

The S.D.N.Y. and E.D.N.Y. Local Patent Rules took effect on April 8, 2013.  In contrast to local patent rules adopted by other courts around the country, the S.D.N.Y. and E.D.N.Y. Local Patent Rules are much less detailed (only 3 pages in length), although they contain standard items such as the exchange of infringement and invalidity contentions.  In particular, they require 1) Infringement Contentions to be served by the plaintiff within 45 days of the Scheduling Conference, 2) Invalidity Contentions to be served within 45 days of service of the Infringement Contentions, and 3) a Joint Claim Terms Chart listing the disputed claim terms and phrases to be filed by a date specified by the court.

With respect to claim construction briefing, the S.D.N.Y. and E.D.N.Y. Local Patent Rules set forth that 1) the Opening Brief must be filed by the patent holder within 30 days of the filing of the Joint Claim Terms Chart, 2) a Response to the Opening Brief must be filed by the opposing party within 30 days after service of the opening brief, and 3) a Reply Brief must be filed by the patent holder within 7 days after service of the response.

Western District (W.D.N.Y.)

http://www.nywd.uscourts.gov/sites/default/files/Local%20Patent%20Rules%202014.pdf

The W.D.N.Y. Local Patent Rules were developed by an subcommittee impaneled by Magistrate Judge Jeremiah J. McCarthy.  In addition to Judge McCarthy, the subcommittee featured local patent practitioners and included Jeremy Oczek, a Member in Bond’s Intellectual Property & Technology group.  The W.D.N.Y. Local Patent Rules took effect on January 1, 2014.

The W.D.N.Y. Local Patent Rules require two sets of contentions by each side: 1) Initial Infringement Contentions to be served by the patentee within 14 days after the Case Management Conference, 2) Initial Non-Infringement and Invalidity Contentions to be served by the accused infringer within 60 days of the Initial Infringement Contentions, 3) Final Infringement and Invalidity Contentions to be served 21 weeks after the Initial Infringement Contentions, and 4) Final Non-Infringement Contentions and Final Responses to Invalidity Contentions to be served 28 days after the Final Infringement and Invalidity Contentions.

With respect to the claim construction briefing schedule, the W.D.N.Y. Local Patent Rules require staggered briefing as follows: 1) a Opening Brief to be filed by the patentee within 60 days of the filing of the parties’ Joint Claim Construction Statement, 2) a Responsive Brief to be filed by the accused infringer within 30 days after the Opening Brief, and 3) a Reply Brief to be filed within 15 days after the Responsive Brief, and 4) a Surreply Brief to be filed within 15 days after the Reply Brief.

A timeline of the various deadlines in W.D.N.Y. can be found at Appendix A of the Local Patent Rules.

The W.D.N.Y. Local Patent Rules also inlcude a “Model Order Regarding E-Discovery in Patent Cases” (see Appendix B), which is of major significance.  Highlights to the W.D.N.Y. Model E-Discovery Order include that:  1) email production requests shall only be propounded for specific issues; 2) email production requests shall be phased to occur after initial disclosures of each parties’ contentions; and 3) email production is presumptively limited to 5 search terms and 5 custodians.  The W.D.N.Y. Model E-Discovery Order is intended to help cut down significantly on e-discovery costs in patent litigation and should make the Western District of New York an attractive venue for patent cases.

Topics:  Local Patent Rules, Patent Litigation, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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