The District of Massachusetts is amending Local Rule 16.6, which governs patent proceedings in this district. The previous iteration of the rule provided that the parties would consider some patent-specific events in preparing the joint statement proposing as schedule, but imposed no particular time frame for these events. The amended rule changes this, laying out specific time frames (although courts remain free to modify these deadlines as the particular case requires). Under the new rule, a Markman hearing should be scheduled within 9 months of the scheduling conference, and fact and expert discovery are to close no later than the later of 15 months after the scheduling conference or 60 days after a claim construction ruling (fact discovery) or 18 months after the scheduling conference or 90 days after a claim construction ruling (expert discovery). Trial is to occur within 24 months of the scheduling conference. Should the court conduct a post-Markman status conference, the parties must meet and confer at least 14 days prior to discuss the impact of the claim construction ruling, whether any issues can be narrowed, whether any changes to the schedule will be proposed, and whether the parties can agree to mediate, with a joint statement to be filed no less than 7 days prior to the conference.
Some additional automatic disclosures have also been added. Within 21 days after the initial scheduling conference, the patentee must provide infringement claim charts that identify the accused products and the claims infringed and identify on an element-by-element basis where and how each element is found in the accused product or method, as well as identifying structure for any means-plus-function limitations, identifying claims to be asserted literally or under the doctrine of equivalents, and whether direct, contributory or induced infringement are being asserted. At the same time, the patentee must produce documents concerning conception and reduction to practice, documents evidencing ownership of the patents, and documents establishing the real party in interest. Twenty-one days later, the accused infringer must produce documents showing the composition, construction and performance of all accused products or methods, produce or permit inspection of samples of the accused items, provide non-infringement and invalidity claim charts and identify all non-art-based grounds for invalidity, and provide documents sufficient to establish the real party in interest. These requirements may be amended only by leave of court upon a showing of good cause.
A schedule with a procedure laid out for the steps leading up to the Markman hearing is provided. Among other things, this schedule contemplates a maximum of ten claim terms for construction, which can be expanded with leave of court upon a showing of good cause. Additionally, a period of 28 days following entry of a claim construction ruling is established for the disclosure of opinions of counsel on which any party wishes to rely. A default protective order is added, allowing the designation of documents as confidential and limiting their viewing to outside counsel.
The new rule becomes effective tomorrow, June 1st, and will apply in all cases in which a scheduling order has not yet been entered as of that date, including declaratory judgment actions. The full text can be found here, and should be consulted carefully by those appearing in a case that involves disputes over the infringement, validity, or enforceability of a U.S. patent.
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