A copy of the new Patent Rules can be found here. These new Patent Rules replace the prior version of Local Rule 16.6 and aim to streamline patent cases by providing consistency and expediency.
Goulston & Storrs IP Litigation attorney Andrew T. O’Connor had the honor of being selected to the Committee formed in late 2016 that was tasked with drafting the new Patent Rules. “While we were originally asked by the judiciary to amend the existing patent rules, we unanimously agreed that an entire replacement of the existing rules would be required if we wanted to achieve the goal of making D. Mass. a more consistent and efficient patent litigation forum,” says Andrew. “It was an honor to work with such a talented group of patent litigators and the judiciary.”
After a public comment period that began in December 2017, Andrew and the rest of the Committee analyzed all of the public comments from a broad range of private companies, law firms and intellectual property organizations. According to Andrew, “the public comments we received from around the country were insightful, productive, and reflected our goal to streamline patent litigation.” Andrew recently led a panel discussion before the Massachusetts Bar Association to discuss the upcoming rules, which were met with optimism and approval by members of the bar. The panel consisted of the Honorable Richard G. Stearns of D. Mass. and other members of the Committee.
The final Patent Rules will go into effect on June 1, 2018 and will apply to future patent cases and pending patent cases for which a scheduling order has yet to issue as of the date of adoption.
Key Takeaways
Expediency: The Court shall set the close of fact discovery the later of 15 months after the initial scheduling conference or 60 days after entry of the Court’s claim construction ruling (also known as Markman ruling). A trial date shall be set within 24 months of the Initial Scheduling Conference. This is a significant departure from the average time to trial in D. Mass. patent cases of at least 3-4 years.
Default Protective Order: At the outset of the case, a default protective order will automatically be put in place, which limits the disclosure of confidential information to outside counsel only. Parties are free to propose an alternative, case-specific protective order.
Preliminary Infringement Disclosures: Within 21 days of the initial scheduling conference, the party claiming infringement shall serve an infringement claim, the prosecution histories for each asserted patent, evidence of ownership and licenses, and document sufficient to establish the real party in interest.
Preliminary Non-Infringement Disclosures: Within 21 days of the initial scheduling conference, the party accused of infringement shall disclose technical documents, samples, or source code (as applicable to the case) concerning the accused instrumentalities, as well as a preliminary noninfringement, claim chart, preliminary invalidity claim chart (including claims of unpatentability under 35 USC 101, if any), and corresponding supporting evidence (e.g. prior art references).
Claim Construction Proceedings: Claim construction (or Markman) proceedings have been structured to minimize issues concerning disputed claim terms. The parties are limited to 10 disputed claim terms absent leave of Court.
