Transcript United States District Court for the District of New Jersey

United States District Court for the
District of New Jersey
Local Patent Rules
Same But Different?
Arnold B. Calmann
Saiber LLC
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
2
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
3
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
4
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
5
Background
(cont’d)
• Purpose of Patent Rules Committee
– Determine need
– Evaluate rules of other Districts
– Create “standard protocol”
6
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”
7
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
8
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 HatchWaxman cases
– “Oversee and evaluate” – Committee continues to
serve in evaluating the Rules
– Effective Date – January 1, 2009
9
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 1.1-1.2 – Title, scope and construction
10
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
11
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).
12
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.”
13
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.
14
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
15
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)
16
Overview
Rule 3.1
(cont’d)
(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)
17
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).
18
Overview
Rule 3.2
(cont’d)
(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).
19
Overview
Rule 3.2
(cont’d)
(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.
20
Overview
(cont’d)
Rule 3.3 - 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).
21
Overview
Rule 3.3
(cont’d)
(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).
22
Overview
(cont’d)
Section 3.4 - 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.
23
Overview
(cont’d)
Rule 3.5 - Disclosure Requirements in Declaratory
Judgment Actions
– Where D.J. Action asserts patent invalidity, Rules 3.1 - 3.2
“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).
24
Overview
(cont’d)
Rule 3.6 - Disclosure Requirements in HatchWaxman 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 3.1 - 3.5.
• At or before initial Scheduling Conference, defendant
shall produce the entire ANDA or NDA. Rule 3.6(a).
25
Overview
Rule 3.6
(cont’d)
(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).
26
Overview
Rule 3.6
(cont’d)
(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)
27
Overview
Rule 3.6
(cont’d)
(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).
28
Overview
(cont’d)
Rule 3.7 - 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:
29
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.”
30
Overview
Rule 3.7
–
(cont’d)
(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.”
31
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).
32
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
33
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.
34
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).
35
Overview
Rule 4.2
(cont’d)
(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.”
36
Overview
Rule 4.2
(cont’d)
(cont’d)
c) Parties must meet and confer to narrow issues
and prepare Joint Statement.
37
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;
38
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”).
39
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.
40
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.
41
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.”
42
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.
43
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
44
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
45