On May 24, 2018, the U.S. District Court for the District of Massachusetts amended Local Rule 16.6 - Patent Proceedings (the “Rule”). The Rule applies to all cases for which a scheduling order has yet to be issued as of June 1, 2018. The Rule replaces former Local Rule 16.6 in its entirety, and while the Rule largely tracks the proposed changes announced on December 11, 2017 (see our IP Update on the proposed rule here), the Rule includes certain revisions to the proposed rule made after the public comment period. The amendments are expected to speed up patent litigation in this district and provide greater certainty regarding the scheduling of significant events that are unique to patent cases.
The Rule requires that the court hold a claim construction hearing within nine months of the initial scheduling conference (ISC) under L.R. 16.1 and 16.3, and schedule trial within 24 months of the ISC. The Rule also requires that fact discovery close 15 months after the ISC, or 60 days after the court’s claim construction ruling, whichever is later. Expert discovery closes 18 months after the ISC, or 90 days after the close of fact discovery, whichever is later.
The Rule requires “automatic patent-related disclosures” of both patentee/plaintiff and the accused infringer. Within 21 days of the ISC, the patentee is required to produce “preliminary patent-related disclosures,” including infringement claim charts, the prosecution history for the asserted patent(s), evidence of conception and reduction to practice, evidence of ownership, and documents sufficient to establish the identity of the real parties in interest (as defined in the rule). In response to public comments on the proposed rule, the Rule adds the requirements that the infringement claim charts disclose which subsections of 35 U.S.C. § 271 apply, whether any alleged infringement is based on the acts of multiple parties, and the role of each such party in the infringement.
After participating in a required meet-and-confer concerning the patentee’s preliminary patent-related disclosures, and within 21 days of the meet-and-confer, accused infringers are required to produce core technical documents relating to the accused products, samples of the accused product, source code (if relevant), noninfringement claim charts, invalidity claim charts, and prior art, as well as documents sufficient to establish the identity of real parties in interest (as defined in the rule).
Although some public comments suggested that the court allow parties to amend patent disclosures without leave of court throughout the fact discovery period, the Rule did not incorporate this suggestion and instead provides that the preliminary patent-related disclosures “may be amended and supplemented only by leave of court upon a timely showing of good cause.” Notably, the final Rule deletes the language in the proposed rule which stated that “good cause” shall be “construed liberally.” Among the examples provided in the Rule of circumstances that may support a finding of good cause is a claim construction by the court that is different from a claim construction proposed by the party seeking amendment when leave is sought within 28 days of the court’s claim construction ruling.
The Rule also sets forth a schedule for claim construction briefing, including simultaneous exchange of opening and responsive briefs, and provides that the parties may jointly present the court with no more than 10 claim terms unless good cause is shown to increase the number of claim terms for construction. The Rule requires that any party seeking to rely on expert testimony in support of claim construction must include an expert declaration with its opening brief. The offering party must also make the expert available for deposition no later than 21 days before the due date for responsive briefs. No further expert testimony will be permitted unless requested by the court or for good cause shown.
Finally, any party relying on advice of counsel as part of a patent-related claim or defense must disclose either a written opinion or oral advice within 28 days of the court’s claim construction ruling. In response to public comments, the 28-day period specified in the rule was shortened from the originally-proposed 45-day period in order to give parties additional time before the close of fact discovery to conduct discovery related to the opinion.
To see a comparison of the District of Massachusetts patent rules with the Eastern District of Texas and Northern District of California, please click here.
The Rule in its entirety is available here.
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