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Northern District of California and District of New Jersey Local Patent Rule Changes
Practical Law Legal Update w-005-8401 (Approx. 4 pages)
Northern District of California and District of New Jersey Local Patent Rule Changes
by Practical Law Intellectual Property & Technology
| Published on 06 Feb 2017 • USA (National/Federal) |
This update summarizes recent changes to the local patent rules in the US District Courts for the Northern District of California and the District of New Jersey.
Two popular venues for patent litigation, the US District Courts for the Northern District of California and the District of New Jersey, recently revised their local patent rules.
On January 17, 2017, the Northern District of California revised its local patent rules. Significant changes include:
- The Case Management Statement filed by the parties under FRCP 26(f) and N.D. Cal. Civil L.R. 16-9 must now include a non-binding, good-faith estimate of the expected damages range and an explanation for the estimates. If a party cannot provide this information, it must:
- explain why it cannot;
- identify what specific information is needed before it can provide the estimate; and
- state the time by which it should be able to provide the estimate.
- In the infringement contentions, the patent owner must:
- identify the point of first infringement and the start and end of the claimed damages;
- produce all agreements, including licenses, transferring an interest in any asserted patent;
- produce all agreements that the patent owner contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation with the accused infringer;
- produce all other agreements that may be used to support the patent owner's damages case; and
- produce all documents concerning a F/RAND licensing commitment for any asserted patent.
- In the invalidity contentions, the accused infringer must produce:
- all agreements that the accused infringer contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation with the patent owner;
- documents sufficient to show the sales, revenue, cost, and profits for each accused product for any period of alleged infringement; and
- all agreements that may be used to support the accused infringer's damages case.
- 50 days after the invalidity contentions, the patent owner must identify:
- each category of damages it seeks for the alleged infringement;
- factual support for each damages theory; and
- damages computations for each theory.
- 30 days after the patent owner's damages contentions, the accused infringer must:
- identify how and why it disagrees with the patent owner's damages contentions; and
- provide the party's affirmative position on each damages issue.
On February 1, 2017, the District of New Jersey revised its local patent rules. Significant changes include:
- The parties' FRCP 26(f) Discovery Plan must address:
- the availability and timing of production of invention records (including inventor laboratory notebooks and analytical test results), Abbreviated New Drug Application (ANDA) product research and development documents, and ANDA product samples;
- the date of conception and reduction to practice for each asserted patent;
- each inventor's availability for a deposition;
- the availability of foreign witnesses for deposition and foreign documents;
- whether there is a 30-month stay, and if so, when it ends;
- a date for substantial completion of each party's document production and a method for determining compliance; and
- any other issues or matters that a party believes are time sensitive.
- The parties' invalidity and validity contentions concerning 35 U.S.C. § 101, indefiniteness, enablement, and written description must include a detailed explanation of the bases for the asserted invalidity theory.
- The accused infringer's invalidity and non-infringement contentions in litigation under the Hatch-Waxman Act are now due 30 days after the initial scheduling conference.
- The parties' proposed claim constructions must include constructions for each term for which the party asserts a "plain and ordinary" meaning.