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February 21, 2008

Northern District of California Modifies Local Patent Rules

The local patent rules for the Northern District of California have always been viewed both by those in our district as well as other patent lawyers and judges as the leading edge for thoughtful and efficient management of patent litigation. These modifications are the result of several years of experience with the local rules and responding to perceived need to fine tune the rules. These changes are an endorsement of the rules, their concepts and not in any way criticism of those rules after experience.

Two modifications are important in the management of patent cases but in the bigger picture are actually fine tuning. The first change is that parties must identify in their joint claim construction statement the 10 most significant claim elements that will be the subject of dispute and require construction. This will promote good management and efficiency in handling the suit. In too many cases, out of an abundance of caution, the parties would identify a great many terms for construction which had several negative implications. First, as a result of identifying dozens of terms, the parties would brief and the courts would rule on construction of elements that were not critical or necessary to the litigation. This was unnecessarily expensive and deprived the court and the parties of the opportunity to focus on the few terms that were actually important to the litigation. In the event that this process identifies additional terms that require construction, the court can address those additional terms as appropriate.

The second modification relates to one of the goals of the local rules which is early identification of the issues in dispute. The rules have been modified to eliminate the two step process of "preliminary" contentions followed by later disclosure of "final" contentions. The new approach is the parties will identify their contentions which will be deemed to be their final contentions unless the court grants leave to amend their contentions upon a showing of good cause. This change furthers the interest of identification of issues and positions of the parties upon which the court and the other party can rely in preparing for discovery and trial.

While there are other changes, one more worth noting is the requirement in Rule 3-7 that all attorney client information upon which a party plans to rely at trial be identified after the claim construction ruling. This will provide more certainty on issues such as contentions relating to indirect infringement where intent is an issue.

John Cooper, Partner

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