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Local Patent Rules Same But Different? United States District Court for the District of New Jersey Arnold B. Calmann Saiber LLC.

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Presentation on theme: "Local Patent Rules Same But Different? United States District Court for the District of New Jersey Arnold B. Calmann Saiber LLC."— Presentation transcript:

1 Local Patent Rules Same But Different? United States District Court for the District of New Jersey Arnold B. Calmann Saiber LLC

2 2 The Background Story The “Brown Project” –Chief Judge Garrett E. Brown Federal Judicial Center Project –Patent Case Management Judicial Guide Effort to develop “authoritative guide” for Bar and Bench –Prof. Peter S. Menell, Univ. of California, Berkeley School of Law

3 3 Background (cont’d) Federal Judicial Center Project (cont’d) –Advisory Board includes: Chief Judge Garrett E. Brown and Judge Faith S. Hochberg, D.N.J. Judge Loretta A. Preska, S.D.N.Y. Judge Randall R. Rader, Fed. Cir. Judge Gregory M. Sleet, C.J., D. Del. Judge David J. Folsom, E.D. Texas

4 4 Background (cont’d) D.N.J. Lawyers Advisory Committee Formation of “Patent Rules Committee” –Explanatory Notes – IMPORTANT –11 Judges, D.N.J. Judges: Simandle, Chesler, Cooper, Greenaway, Hochberg, Linares, Martini, Sheridan Magistrate Judges –Bongiovanni, Schneider, Shwartz

5 5 Background (cont’d) Formation of “Patent Rules Committee” (cont’d) –8 NJ Attorneys –Prof. Peter Menell –2 “Foreign Attorneys” G. Pappas - Covington & Burling, Washington DC D. Powers – Weil Gotshal, Silicon Valley, CA

6 6 Background (cont’d) Purpose of Patent Rules Committee –Determine need –Evaluate rules of other Districts –Create “standard protocol”

7 7 Background (cont’d) Special Considerations –“Special role” of Magistrate Judges –Power to “customize” discovery and scheduling –Discretion “to accelerate or modify the schedule” –New Rules should be “consistent with current practices of the Court” –Discovery Confidentiality Orders (“DCO”) i.e., protective orders – early entry required (see new form) –Hatch-Waxman cases – need to consider special procedures; “different from the conventional patent cases”

8 8 Background (cont’d) Organization –Chair of the Committee: Judge Jerome B. Simandle –Survey Subcommittee G. Pappas and M. Powers, Co-chairs “The Survey Says” - all states and local rules examined Hatch-Waxman Subcommittee – ABC, Chair –Survey of Attorneys –Bases for differences in D.N.J Rules

9 9 Background (cont’d) Development of New Rules –Analysis of Survey Results –Focus on N.D. of California local patent rules as “template” but important differences in D.N.J. –Committee meetings Major dispute: special procedures in Hatch- Waxman cases –“Oversee and evaluate” – Committee continues to serve in evaluating the Rules –Effective Date – January 1, 2009

10 10 Overview of the D.N.J.’s Local Patent Rules New Local Patent Rules (“L. Pat. R.”) – implemented as Rule 9.3 of the Local Civil Rules Local Patent Rules –Rules – Title, scope and construction

11 11 Overview (cont’d) Local Patent Rules (cont’d) –Rule 1.3 – IMPORTANT Authorizes Court to modify the “obligations and deadlines” based on “circumstances of any particular case” Modifications at initial scheduling conference, by the Court sua sponte, or upon showing of good cause No request for modification in Rules without parties first meeting and conferring

12 12 Overview (cont’d) General Provisions Rule 2.1(a) – Initial Scheduling Conference –Parties to meet and confer upon a plan that includes any proposed modifications of deadlines, scope and timing of claim construction discovery, format of claim construction hearing, how to “educate the Court on the patent(s) at issue,” and the need for any DCO. Rules 2.1(a)(1)-(a)(5).

13 13 Overview ( cont’d) General Provisions (cont’d) Rule 2.2 – Confidentiality –No discovery withheld on confidentiality basis. –Pending entry of DCO, production on “outside counsel’s Attorney’s Eyes Only” basis. –IMPORTANT – Within 30 days of initial Scheduling Conference, parties must submit DCO to Court (with certifications), or without consent, make application; Court will decide issues or enter Court’s form DCO “in whole or in part.”

14 14 Overview (cont’d) General Provisions (cont’d) Rule 2.3 – Relationship to F.R. Civ. P. –Sets forth the following categories of discovery to which a party may object because it is “premature” in light of schedule in Rules; Seeking claim construction position; Comparison of asserted claims and accused product, process, device, etc.; Comparison of asserted claims and prior art; Identification of advice of counsel and related documents –Otherwise asserting discovery is “premature” or conflicts with these Rules is not a defense to discovery requests.

15 15 Overview (cont’d) General Provisions (cont’d) Rule 2.4 – Exchange of Expert Materials –Claim construction experts governed by Rule 4.1 –Upon a “sufficient showing” that expert reports relating to issues other than claim construction “cannot be rendered” until after a Markman ruling, such materials will be deferred until such decision. –In practice, DNJ regularly defers non-claim construction expert reports until Markman ruling (issue routinely resolved at initial Scheduling Conference) –Phased approach

16 16 Overview (cont’d) Patent Disclosures Rule 3.1 – Disclosure of Asserted Claims and Infringement Contentions –14 days after initial Scheduling Conference “a party claiming patent infringement” must serve a Disclosure of Asserted Claims and Infringement Contentions that contains: Each claim of each patent infringed including statutory citations. Rule 3.1(a) For each asserted claim, identify with specificity each “Accused Instrumentality” of opposing party, including name, model number, etc.; for each method or process, identify name, product etc., which results “in the practice of the claimed method or process.” Rule 3.1(b)

17 17 Overview (cont’d) Rule 3.1 (cont’d) –Chart identifying where each limitation of each claim is found within each Accused Instrumentality (that includes identity of structures, materials, etc.). Rule 3.1(c) –Identification of acts of indirect infringement. Rule 3.1(d) –Whether each limitation of each asserted claim is “literally present” or under the doctrine of equivalents. Rule 3.1(e) –Priority date of each claim. Rule 3.1(f) –Identification of party’s own instrumentalities (product, process, method, etc.) that incorporates the claim. Rule3.1(g) –Basis for claim of willful infringement. Rule 3.1(h)

18 18 Overview (cont’d) Rule 3.2 – Document Production Accompanying Disclosure –With the Disclosure required in Rule 3.1, the party claiming infringement must produce: Documents evidencing discussion with or disclosure to a third party, “or sale of or offer to sell, any public use of, the claimed invention” prior to the patent application date. (Such production is not an admission that document evidences prior art). Rule 3.2 (a).

19 19 Overview (cont’d) Rule 3.2 (cont’d) –Documents evidencing “conception, reduction to practice, design and development,” that were created before patent application date. Rule 3.2(b). –File history for each patent. Rule 3.2(c). –Evidence of patent ownership. Rule 3.2(d).

20 20 Overview (cont’d) Rule 3.2 (cont’d) –If instrumentalities are identified under Rule 3.1(g), then produce documents to show operation of instrumentalities that patent claimant relies on as embodying asserted claims. Rule 3.2(e). –Producing party must identify by production number which documents correspond to each category.

21 21 Overview (cont’d) Rule Invalidity Contentions –45 days after service of “Disclosure of Asserted Claims and Infringement Contentions,” party opposing claim of infringement shall serve “Invalidity Contentions” that contain: Prior Art (including details of each publication, offers for sale, circumstances from which it was derived, etc. Rule 3.3(a) Whether prior art anticipates each claim or renders it obvious (and explain how). Rule 3.3(b) Chart identifying where in each item of prior art each limitation is found. Rule 3.3(c).

22 22 Overview (cont’d) Rule 3.3 (cont’d) –Grounds for invalidity under §101, based on indefiniteness under §112(2) or enablement or written description under §112(1) of asserted claims. Rule 3.3(d).

23 23 Overview (cont’d) Section Document Production Accompanying Invalidity Contentions –With Invalidity Contentions, party opposing patent infringement claim must produce: Source code, formulas, specifications, etc., to show “operation, composition, or structure” of Accused Instrumentality. Rule 3.4(a). Copy or sample of prior art identified in rule 3.3(a), which is not found in file history. –If not in English, then must produce English translation of portions relied upon. Rule 3.4(b) Producing party must identify by production number which documents correspond to each category.

24 24 Overview (cont’d) Rule Disclosure Requirements in Declaratory Judgment Actions –Where D.J. Action asserts patent invalidity, Rules “shall not apply unless and until a claim for patent infringement” is asserted. (Emphasis supplied). –If defendant does not assert patent infringement in its Answer or within 10 days after initial Scheduling conference (whichever is later), party seeking a D.J. for invalidity shall serve its Invalidity Contentions under Rule 3.3, and produce under Rule 3.4. Rule 3.5(a) –Rule 3.5 does not apply where request for a D.J. of invalidity is filed in response to the complaint for infringement of same patent, and thus Rule 3.3 shall govern. Rule 3.5(b).

25 25 Overview (cont’d) Rule Disclosure Requirements in Hatch- Waxman Matters –The most contentious issue for Patent Rules Committee. –Reverses traditional obligations of parties. –Imposes substantial burden on generic defendants. Section applies to all patents subject to Para. IV certification in cases under 21 U.S.C. §355; this provision takes precedence over conflicting provisions of Rules At or before initial Scheduling Conference, defendant shall produce the entire ANDA or NDA. Rule 3.6(a).

26 26 Overview (cont’d) Rule 3.6 (cont’d) 14 days after initial Scheduling Conference defendant must produce “Invalidity Contentions” for any patents referenced in Para IV certification that contains all disclosures under Rule 3.3. Rule 3.6(b). With Invalidity Contentions pursuant to Rule 3.6(b), documents referenced in Rule 3.4 must be produced. Rule 3.6(c).

27 27 Overview (cont’d) Rule 3.6 (cont’d) 14 days after initial Scheduling Conference defendants to provide “Non-Infringement Contentions” for patents identified in Para. IV certification, including a claim chart identifying each claim and each claim limitation that is “literally absent” from the ANDA or NDA. Rule 3.6(d)

28 28 Overview (cont’d) Rule 3.6 (cont’d) Non-Infringement Contentions must be accompanied by documents. Rule 3.6(e) 45 days after disclosure of Non-infringement Contentions, plaintiff must provide its Infringement Contentions and provide the Rule 3.1 disclosures. Rule 3.6(f). Plaintiff must produce documents under Rule 3.2 with respect to its Infringement Contentions. Rule 3.6(g).

29 29 Overview (cont’d) Rule Amendment to Contentions –By application and Court Order upon a “showing of good cause” Disclose whether adverse party consents or objects –“Non-exhaustive examples,” that “absent undue prejudice to the adverse party” support good cause:

30 30 Overview (cont’d) Rule 3.7 (cont’d) a)Claim construction that differs from party’s proposed construction; b)Recent discovery of material prior art “despite earlier diligent search; c)Recent discovery of non-public information about Accused Instrumentality that was not discovered despite diligent efforts; d)Disclosure of asserted claim and infringement contention by Hatch-Waxman plaintiff under Rule 3.6(f) that “was not previously presented or reasonably anticipated.”

31 31 Overview (cont’d) Rule 3.7 (cont’d) –IMPORTANT - Duty to supplement discovery under Fed.R.Civ.P. 26(e) “does not excuse the need to obtain leave of Court to amend contentions.”

32 32 Overview (cont’d) Rule 3.8 – Advice of Counsel –Not later than 30 days after entry of Court’s claim construction order, a party relying upon advice of counsel as part of patent-related claim or defense shall: a)Produce any written advice and related documents “for which the attorney-client and work product protection have been waived;” b)Provide written summary of oral advice and related documents c)Serve a privilege log related to documents being withheld on privilege grounds. –Absent compliance with Rule 3.8, party is precluded from relying on advice of counsel (unless agreed by stipulation of the parties or Court order).

33 33 Overview (cont’d) Rule 4 – Claim Construction Proceedings Rule 4.1 Exchange of Proposed Terms for Construction a)14 days after Invalidity Contentions; or 45 days after Infringement Contentions (where validity not in issue); or In all cases in which a D.J. complaint is filed “not based on validity;” or 14 days after the defendant serves an answer that does not assert patent infringement (where Rule 3.1 infringement disclosures do not apply); then

34 34 Overview (cont’d) Rule 4.1 (cont’d) Each party serves a list of claim terms (and identify those governed by 35 U.S.C. § 112(6)). b)Thereafter, meet and confer to narrow client terms in dispute.

35 35 Overview (cont’d) Rule 4.2 – Exchange Preliminary Construction and Extrinsic Evidence a)21 days after exchange of claims term list, simultaneously exchange preliminary proposed construction of terms (for terms governed by 35 U.S.C.§112(6), identify structures, etc. corresponding to that term’s function).

36 36 Overview (cont’d) Rule 4.2 (cont’d) b)At the same time as that exchange, also identify all specifications and prosecution history supporting constructions, designate extrinsic evidence (including dictionary definitions, citations to treatises, prior art, and testimony of witnesses including experts); for extrinsic evidence, identify production number or produce copy if not produced previously; with respect to witnesses, including experts, provide “a description of the substance of that witnesses’ proposed testimony” including a listing of opinions “to be rendered in connection with claim construction.”

37 37 Overview (cont’d) Rule 4.2 (cont’d) c)Parties must meet and confer to narrow issues and prepare Joint Statement.

38 38 Overview (cont’d) Rule 4.3 – Joint Claim Construction and Prehearing Statement 30 days after the exchange of preliminary claim constructions, parties to complete Joint Statement, including: a)Identify terms agreed upon; b)Each party’s proposed construction and identify extrinsic and intrinsic evidence supporting construction;

39 39 Overview (cont’d) Rule 4.3 (cont’d) c)Identify terms “whose construction will be most significant” to resolution of case (identify if case dispositive “or substantially conducive” to settlement); d)Estimated time for Markman hearing; e)Inform whether live witnesses to be called at hearing (and provide summary of testimony and for experts “each opinion to be offered related to claim construction”).

40 40 Overview (cont’d) Rule 4.4 – Completion of Claim Construction Discovery 30 days after filing Joint Statement, parties to complete claim construction discovery including depositions of witnesses “other than experts,” who were identified in preliminary statements or Joint Statement under Rule 4.2 or 4.3 respectively.

41 41 Overview (cont’d) Rule 4.5 – Claim Construction Submissions “New Jersey Style” a)45 days after filing Joint Statement, parties contemporaneously exchange opening Markman briefs and evidence including experts’ certifications/declarations; b)30 days after opening briefs, parties complete discovery from experts who submitted declarations; c)60 days after opening briefs, parties exchange responding Markman briefs and evidence including and experts’ declarations.

42 42 Overview (cont’d) Rule 4.6 – Claim Construction Hearing 2 weeks following submission of responding Markman materials, parties to confer and propose a Claim Construction hearing schedule to Court “to the extent the parties or the Court believe a hearing is necessary.”

43 43 Conclusions 1.“Same but different” - critical differences between DNJ and other local patent rules, including N.D. California; 2.In theory, enhances uniformity in treatment of patent cases; 3.Critical role of Magistrate Judges; 4.Increases importance of initial Scheduling Conference; 5.Accelerates early identification of experts and need for development of expert opinions and positions.

44 44 Conclusions (cont’d) 6.Turns Hatch-Waxman cases upside-down (which will likely cause more motion practice where parties seek relief to amend contentions); 7.Imposes early burden upon Hatch-Waxman generic defendants; 8.“Include it or Lose it.” A party must include everything in its Contentions to protect against preclusion and because there is no guaranteed right to amend or supplement; and

45 45 Conclusions (cont’d) 9.Reduces delay in: Obtaining a Protective Order; Production of ANDA; Initial Document Production because imposes Outside Counsel Attorneys’ Eyes Only procedure


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