ND Cal. Patent Litigation Rules Revised

The U.S. District Court for the Northern District of California has revised its local patent rules for all cases filed on or after March 1, 2008, with major conceptual changes from the existing rules:

1. Litigants must identify in their joint claim construction statement the 10 most significant claim construction disputes for the efficacious resolution of the case, including those disputes which may be outcome-dispositive.
2. The elimination of the concept of "preliminary" contentions in favor of a single round of contentions which can be modified only for good cause.

Other, more-specific changes include

• The provision governing modification of the patent local rules applicable to a particular case has been bolstered to make clearer that such modifications are encouraged where the circumstances of a particular case warrant. See Proposed Rule 1-3.
• The list of patent local rule topics to be discussed at the initial case management conference has been refined. See Proposed Rule 2-1(a).
• A new requirement that the patentee disclose its theories of direct and indirect infringement with its contentions. See Proposed Rule 3-1(a) and (d).
• A new requirement that the patentee disclose "public use" related information in addition to "on-sale" related information. See Proposed Rule 3-2(a).
• A new requirement that the patentee disclose documents evidencing ownership of the asserted patent rights. See Proposed Rule 3-2(d). This provision is designed to ensure that issues of subject matter jurisdiction are resolved early.
• A revised disclosure of obviousness contentions consistent with recent Supreme Court authority on the subject. See Proposed Rule 3-3(b).
• A new requirement that litigants disclose all attorney-client information on which they plan to rely at trial after the claim construction ruling. See Proposed Rule 3-7. Under current rules, the litigants need only do so for opinions of counsel on the willfulness issue. The strengthening of the scienter requirement for indirect infringement is among the reasons supporting this proposal.
• A new provision that sanctions, pursuant to 28 U.S.C. § 1927, may be appropriate for failure to meet and confer in good faith in the claim construction process. See Proposed Rule 4-7. This underlines to litigants the importance of narrowing their disputes regarding claim construction in good faith.

The District has also published on its website a committee report that provides helpful background on how the new rules were developed and explains the intent behind the changes that have been adopted.