W.D.N.Y. Proposes Local Patent Rules

by Bond Schoeneck & King PLLC

The Western District of New York (W.D.N.Y.) recently announced proposed Local Patent Rules that would apply in all patent cases filed in this district.  A copy of the proposed Local Patent Rules can be found here.  I had the honor and privilege of serving on a sub-committee of local patent practioners that helped put together the W.D.N.Y. patent rules.  The public comment period is open until December 12, 2013, and if enacted, the new rules are intended to go into effect on January 1, 2014.

Brief Overview

The proposed W.D.N.Y. Local Patent Rules are similar to local patent rules adopted by other U.S. District Courts around the country.  (For a great resource on local patent rules, check out http://www.localpatentrules.com/).

The W.D.N.Y. local patent rules would require 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.

The proposed rules also set forth a Claim Construction (Markman) Briefing schedule, with 1) the Opening Markman Brief to be filed by the patentee within 60 days of the filing of the parties’ Joint Claim Construction Statement, 2) a Responsive Markman 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 the proposed local rules can be found at Appendix A.

Model E-Discovery Order

Of particular significance to the proposed W.D.N.Y. Local Patent Rules is the “Model Order Regarding E-Discovery in Patent Cases” (Appendix B) which largely mirrors the Model Order on E-Discovery proposed by Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit.  The highlights to the Model Order are 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 Model 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.

Stay Tuned

We’ll keep you posted on developments regarding the proposed W.D.N.Y. Local Patent Rules.  If enacted, the Western District would join the three other U.S. District Courts in New York (Northern District, Southern District, and Eastern District) that have enacted patent local rules.  The N.D.N.Y. rules can be found here, and the S.D.N.Y. and E.D.N.Y. rules can be found here.


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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