June 6, 2018
The U.S. District Court of Massachusetts has new patent rules effective June 1, 2018. Newly amended Local Rule 16.6 applies to all newly filed patent cases and to any patent case where a scheduling order has not been entered. The new rules provide clear timelines for pretrial disclosures and trial, creating a more uniform, predictable, and expedited path for patent cases through trial. These changes should encourage litigants to consider Massachusetts as a patent-capable venue in appropriate cases.
Significant changes implemented by the amended rule:
1. New automatic pretrial disclosure schedule requires patentee to provide infringement claim charts, prosecution histories for the asserted patents, conception/reduction to practice evidence (e.g. lab notebooks), evidence of ownership, and identities of real parties in interest, all within 21 days of the initial schedule conference unless the court orders otherwise; accused infringer must provide technical documents, samples of the accused product, noninfringement/invalidity claim charts (including for obviousness allegations specific prior art combinations and “the reason to combine the references”), other grounds of invalidity under §101 and § 112, supporting documents for the foregoing disclosures, and identities of real parties in interest no later than 63 days from the initial schedule conference unless the parties agree otherwise. L.R. 16.6 (d).
2. Claim construction begins no later than 21 days after completion of the Rule 16.6(d) patent-related disclosures. L.R. 16.6(e)(1). A Markman Hearing must occur within 9 months of the initial scheduling conference. L.R. 16.6(c)(2).
3. Fact discovery must conclude 15 months after the initial scheduling conference or 60 days after the court’s ruling on claim construction, whichever is later. L.R. 16.6(c)(4).
4. Expert discovery must conclude 18 months after the initial scheduling conference or 90 days after the close of fact discovery, whichever is later. L.R. 16.6(c)(5).
5. Trial (bench or jury) must be held no later than 24 months from the initial scheduling conference. L.R. 16.6(c)(1).
6. Although disclosures under Local Rule 16.6(d) are explicitly characterized as “preliminary,” they may be amended or supplemented only by leave of court upon a showing of good cause. Examples of good cause include, e.g., discovery of material prior art that was not located despite diligent efforts. L.R. 16.6(d)(5).
Implications of the new rule:
– Given recent clarification in the law of patent venue that makes the locations of an accused infringer’s “regular and established place of business” an important consideration, there is likely to be an increase in the number of patent-infringement suits being filed in the District.
– The early pretrial disclosure requirements and the relatively high burden for amending those disclosures will require parties to gather evidence, formulate infringement, validity, and claim-construction contentions, and retain experts early in the proceedings—and for plaintiffs, before filing suit.
– Motions to stay pending inter partes review will still be entertained notwithstanding the 24-month trial deadline.