Federal Practice, Intellectual Property, Litigation, NC Courts, Patents

Federal District Courts Continue to Use Local Patent Rules

            In our last post, we discussed proposed amendments to the Federal Rules of Civil Procedure recently published for comment by the Judicial Conference Advisory Committee.  Two years ago, I sat on a similar advisory committee for the U.S. District Court for the Western District of North Carolina with the mission to devise a set of local patent rules to enhance the Rules of Civil Procedure and guide parties through the unique aspects of patent litigation in our District.  Since 2001, Federal District Courts around the country have continued to establish local patent rules.  Local patent rules in some Districts, like the Eastern and Southern Districts of New York, have become effective just this year.  The Northern District of New York articulated the goals underlying the establishment of local patent rules well: “In recognition of the complexities and uniqueness of issues associated with management of patent infringement litigation, and to ensure just, efficient, and economical handling of such cases….These rules are calculated to provide a standard structure for addressing the issues which typically arise in such cases, and to foster predictability and facilitate planning for the litigants and the Court.”  We highlight below the key aspects of the Western District of North Carolina Local Patent Rules. Links to access additional District Court Patent Rules also are provided below.

Western District of North Carolina Local Patent Rules

The Western District of North Carolina Patent Rules became effective March 31, 2011 and apply to any cases filed or transferred to the District that “allege infringement of a utility patent (“patent”) in a complaint, counterclaim, cross-claim, or third-party claim, or which seek a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable.”  The Rules do not apply to cases that involve only design patents.   The Rules were enacted with an eye towards “fairly and reasonably schedul[ing] the exchange of contentions in order to provide early disclosure.”  Accordingly, they require the exchange of detailed information regarding claims and infringement contentions, as well as a defendant’s invalidity contentions.  The Rules also require collaboration between the parties to resolve any claim construction disputes before the initiation of a hearing.  The key provisions in the Rules provide for the following:

  • P.R. 2.1 requires that the parties address in the Initial Attorneys’ Conference and Certificate of Initial Attorneys’ Conference issues specific to patent litigation, including the claims construction hearing process and discovery.
  • P.R. 2.2 provides for parties to protect confidential documents prior to issuance of a protective order.
  • P.R. 3.1 requires that within 30 days after issuance of a Scheduling Order, a party claiming patent infringement serve an initial disclosure, referred to as a Disclosure of Asserted Claims and Infringement Contentions, which provides “[e]ach claim of each patent in suit that is allegedly infringed by each opposing party” and additional specific information regarding the claims and “each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware.”
  • P.R. 3.2 requires that the Rule 3.1 initial disclosures include documents:
    • “sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention prior to the date of application for the patent in suit.”
    • “All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, that were created on or before the date of application for the patent in suit or the priority date identified pursuant to P.R. 3.1(E), whichever is earlier.”
    • “A copy of the file history for each patent in suit.”
  • P.R. 3.3 requires that within 90 days after issuance of a Scheduling Order each party opposing a claim of patent infringement serve its “Invalidity Contentions,” which must contain the identity of and additional information regarding “each item of prior art that allegedly anticipates each asserted claim or renders it obvious,” as well as additional statutory grounds for invalidity.
  • P.R. 3.4 requires documents to be produced with the Invalidity Contentions that are “sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant,” as well as a “copy of each item of prior art identified pursuant to P.R. 3.3(A) that does not appear in the file history of the patent(s) at issue.”
  • P.R. 3.6 establishes that each party’s “Infringement Contentions” and “Invalidity Contentions” are that party’s final contentions, with the limited exceptions for amendments and supplementation as provided by the rule.  The Rules explain:

    The Rule allowing amendments and supplementation to infringement and invalidity contentions is intended to allow enough flexibility for legitimate changes that will not cause undue prejudice while, at the same time, prohibiting gamesmanship, bad faith, or dilatory motives. Accordingly, these Patent Rules encourage the parties to devote sufficient time and attention to their initial contentions and deter parties from deferring the disclosure, development, or investigation of theories or contentions.

  • P.R. 3.7 provides procedures for discovery of counsel opinions in cases where a party is relying on an opinion of counsel as a defense to a claim of willful infringement.
  • P.R. 4.1 – 4.6 set forth procedures for claim construction proceedings, which include: (1) the parties’ exchange of proposed terms and claim elements for construction; (2) the parties’ exchange of preliminary claim constructions and identification of extrinsic evidence supporting their proposed claim construction; (3) the filing of a Joint Claim Construction and Prehearing Statement stating the constructions on which the parties agree, the proposed construction of those terms on which the parties disagree, the need for a claim construction hearing, etc.; (4) discovery regarding claims construction; (5) briefing on claim construction; and (6) the filing of a joint Motion for Claim Construction Hearing suggesting a time and date for such Hearing if the parties believe a hearing is necessary.

The following resources provide a summary of the deadlines and procedures set forth in the Western District of North Carolina Local Patent Rules: Utility Patent Certificate of Initial Attorney’s Conference; Utility Patent Claim Construction Scheduling Order; Utility Patent Pretrial Order and Case Management Plan; Timeline for Progress of a Utility Patent Case.

Access Additional District Court Local Patent Rules

More than twenty other District Courts have enacted Local Patent Rules, beginning with the Northern District of California in 2001.

Northern District of California  District of Minnesota  Eastern District of North Carolina  Eastern District of Texas
Southern District of California  Eastern District of Missouri  Middle District of North Carolina  Northern District of Texas 
Northern District of Georgia  District of New Hampshire Western District of North Carolina  Southern District of Texas 
District of Idaho  District of New Jersey  Northern District of Ohio  Eastern District of   Washington 
Northern District of Illinois  Eastern District of New York  Southern District of   Ohio  Western District of Washington 
Northern District of Indiana  Northern District of New York  Western District of   Pennsylvania   
District of Massachusetts Southern District of New York Western District of   Tennessee  


Tony Lathrop

About Tony Lathrop

Tony Lathrop brings experience and a high level of analytical ability, professional credibility and creativity to handling litigation matters. He rigorously represents his clients' interests in a diverse range of claims and actions. A certified mediator, Mr. Lathrop has extensive experience representing business clients in mediation. His service to the legal profession in North Carolina has allowed him to develop relationships across the state that benefit the firm's clients.


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