New Mass. Patent Rules A Boon After TS Tech

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1 Portfolio Media. Inc. 648 Broadway, Suite 200 New York, NY Phone: Fax: New Mass. Patent Rules A Boon After TS Tech Law360, New York (February 05, 2009) -- With transfer out of the Eastern District of Texas now a realistic possibility, and with Texas juries increasingly willing to invalidate patents, Massachusetts new local patent rules are a draw for patent infringement plaintiffs and defendants alike. Under the Federal Circuit s recent decision in In re TS Tech USA Corp.,[1] many patent cases that until recently would have proceeded in the Eastern District of Texas by far the most popular court for patent infringement plaintiffs will be litigated in other jurisdictions. At the same time, judges and juries in the Eastern District of Texas are showing increased willingness to invalidate patent claims.[2] As a result, it is likely that more patent infringement cases will be litigated in other federal district courts. The U.S. District Court for the District of Massachusetts is poised to meet this potential increase in patent infringement litigation with a brand new local rule specific to patent cases, Local Rule The judges of the District of Massachusetts adopted the rule in November after consultation with a task force of the Boston Patent Law Association. Because the new rule focuses on creating a tighter case management schedule while still allowing for flexibility, both plaintiffs and defendants can look forward to more predictable procedures and the speedier resolution of patent cases in Massachusetts. This is good news for litigants in the court that gave rise to State Street Bank,[3] Festo[4] and Amgen v. Hoechst Marion Roussel Inc. & Transkaryotic Therapies Inc.,[5] among other leading patent cases. Flexibility is the hallmark of the District of Massachusetts new Local Rule Rather than fix deadlines for each stage of the litigation, the rule sets out a presumptive sample scheduling order with suggested deadlines. At the time of the initial scheduling conference and order, parties to a patent infringement matter

2 are now required to submit a joint statement that includes a proposed schedule for infringement and invalidity contentions and claim construction.[6] The court then determines whether to adopt the sample scheduling order provided in the rule, or whether some variation in sequence or timing will lead to a more efficient resolution of the case at hand.[7] By requiring consideration of these issues at the outset of each case, the Massachusetts rule actively engages the court and the parties in determining an appropriate sequence and schedule on a case-by-case basis, acknowledging that one size does not fit all patent cases. This distinguishes Massachusetts rule from the local patent rules in courts such as the Northern District of California, where fixed deadlines have typically been applied with only rare modification. After years of experience with fixed time frames, the Northern District of California has also recognized the benefit of more flexibility, and last year amended its local patent rules to make clearer that... modifications are encouraged where the circumstances of a particular case warrant. [8] The suggested timeline in the District of Massachusetts will take a case from complaint, through fact discovery, and to a Markman hearing in the space of one year. Notwithstanding the flexibility in the Massachusetts rule, Judge Richard G. Stearns, who participated in drafting the new rule, expects 95 percent of patent cases in the District of Massachusetts will follow the suggested timeline.[9] Initial Scheduling Conference and Order In the joint statement submitted in advance of the initial scheduling conference, the parties to a patent infringement case are now required to address and the court will incorporate into the scheduling order the timing for disclosing initial infringement and invalidity positions; the process for identifying the claim terms in dispute, exchanging proposed claim constructions and briefing claim construction; and the procedure for the Markman hearing.[10] The joint statement must also address the timing and format of a technology tutorial for the court, if needed, as well as procedures for e-discovery and the protection of confidential business information.[11] Litigants are also required to identify any dispositive issues that might lead to early resolution of the litigation.

3 Judges in the District of Massachusetts have previously demonstrated their willingness to phase cases in creative ways in order to resolve narrow issues that have the potential to resolve a complex case in a short period of time. In the In re Columbia Patent Litigation multidistrict litigation, for example, Chief Judge Marc L. Wolf agreed to address the issue of non-statutory double patenting before other defenses,[12] which ultimately led to the resolution of the case after a short period of discovery narrowly limited to the double patenting defense. Preliminary Disclosure Of Contentions Under the presumptive scheduling order, a plaintiff patentee will be required to disclose preliminary infringement contentions within 30 days of the initial scheduling conference.[13] The disclosure must designate each patent claim allegedly infringed, the product or method that allegedly infringes, and whether the infringement is alleged to be literal or pursuant to the doctrine of equivalents. Documents supporting the patentee s contentions must be produced or identified along with the preliminary infringement contentions, an aspect of the rule that was heartily endorsed by the local judges. If the patentee is a declaratory judgment defendant, the presumptive deadline for initial infringement disclosures is extended to 90 days after the scheduling conference. Within 60 days of the patentee s disclosure, the accused infringer must disclose preliminary invalidity and non-infringement contentions.[14] This disclosure must include an element-by-element response on infringement, identification of each piece of prior art alleged to anticipate or render obvious the asserted claim(s), and the basis for any indefiniteness, best mode, enablement or written description defenses. With the new rules, the court will become more directly involved in proposed amendments to infringement and invalidity contentions: the presumptive scheduling order freezes contentions 30 days before the Markman hearing, permits amendment within 30 days after the Markman decision only if necessary, and otherwise forbids amendment without leave of court for good cause shown. [15] Claim Construction The sample order provides for a mutual exchange of claim terms for which claim construction may

4 be required, with a view toward paring down the number of claim terms about which there is a material dispute. The presumptive time frame for this exchange is 120 days after the completion of preliminary infringement and invalidity disclosures.[16] It is here that the District of Massachusetts diverges most from the schedule in jurisdictions such as the Northern District of California and the Eastern District of Texas, where a similar exchange is required shortly after the exchange of preliminary contentions.[17] The Massachusetts rule contemplates that the parties can more reliably identify material claim construction disputes after the completion of some fact discovery. If in any particular case it appears that this additional time is not required, the template order may be easily revised to provide for an earlier exchange. Within 20 days following the identification of disputed claim terms, the parties are to make a mutual exchange of preliminary claim construction briefs and, 10 days later, reply briefs. Within 15 days of the reply brief exchange, the parties must jointly prepare and file a claim construction and prehearing statement identifying the terms that remain in dispute, and addressing procedural issues such as the amount of time needed for the hearing and the plan for any tutorials. [18] One of the more innovative provisions in Massachusetts sample scheduling order is the provision that the parties joint claim construction statement identify a limited number of claim terms to be construed by the court and prioritize the terms in order of importance. (The Northern District Court of California only recently added a similar provision that requires the parties to prioritize the claim terms in dispute and identify the 10 most significant disputes.) The sample order suggests that no more than 10 terms in each patent be submitted for the court s construction.[19] With this the judges hope to avoid squandering resources to construe claims that make no material difference to the outcome of the litigation, recognizing that when pressed many parties will voluntarily acknowledge that some of the claim terms do not require construction. In the end, however, the court will need to construe for the jury each patent claim whose scope is in dispute. [20] If the fact discovery period closes before the court rules on claim construction, the court may grant additional time for discovery but, under the sample scheduling order, the additional discovery shall be limited to issues of infringement, invalidity or unenforceability dependent on the claim

5 construction. [21] If expert discovery has been substantially conducted by that point, the Court may grant supplemental expert discovery subject to the same limitations.[22] Outlook The new rule puts the District of Massachusetts among a handful of federal district courts to have enacted procedural rules specific to patent cases. It reflects an interest among the judges of the District of Massachusetts in encouraging patent litigation by providing more consistent and expeditious treatment, and should provide encouragement to parties seeking predictable and streamlined, yet flexible, patent litigation procedures. --By Sarah Cooleybeck, Foley Hoag LLP Sarah Cooleybeck is a partner with Foley Hoag in the firm's Boston office. The opinions expressed are those of the author and do not necessarily reflect the views of Portfolio Media, publisher of Law360. [1] 2008 WL (Fed. Cir., Dec. 29, 2008) (Misc. Dkt. 888). [2] Shannon Henson, Eastern Texas Could Cease To Be IP Fast Track, IP Law 360, Dec. 30, [3] State Street Bank & Trust Company v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998). [4] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). [5] 457 F.3d 1293 (Fed. Cir. 2006). [6] L.R. 16.6(A). The initial scheduling conference and order are governed by Fed. R. Civ. P. 16(b) and Local Rule [7] L.R. 16.6(B). [8] Patent Local Rules Advisory Subcommittee Report, U.S. District Court, Northern District of California, III.B at 3 (January 2008). [9] Julia Reischel, New local rule boosts state s patent litigation appeal, Massachusetts Lawyers Weekly, Nov. 24, 2008.

6 [10] L.R. 16.6(A); L.R [11] L.R. 16.6(A). [12] See, e.g., In re Columbia University Patent Litigation, 330 F.Supp.2d 18, (D. Mass. 2004). [13] L.R App.(A). [14] Id. [15] L.R App.(A)(1), (D)(1). [16] L.R App. (B)(1). [17] N.D. Cal. Patent L.R. 4-1(a); E.D. Tex. P.R. 4-1(a). [18] L.R App.(B). [19] L.R App.(B)(4)(c). [20] See, e.g., O2 Micro v. Beyond Innovation, 521 F.3d 1351 (Fed. Cir. 2008). [21] L.R App.(D)(2). [22] L.R App. (E)(2). All Content , Portfolio Media, Inc.