District of Colorado Announces Local Patent Rule Pilot Program | Practical Law

District of Colorado Announces Local Patent Rule Pilot Program | Practical Law

The US District Court for the District of Colorado approved a pilot program implementing proposed local patent rules, including a model scheduling order for patent cases.

District of Colorado Announces Local Patent Rule Pilot Program

Practical Law Legal Update 8-564-0579 (Approx. 3 pages)

District of Colorado Announces Local Patent Rule Pilot Program

by Practical Law Intellectual Property & Technology
Published on 07 Apr 2014 • USA (National/Federal)
The US District Court for the District of Colorado approved a pilot program implementing proposed local patent rules, including a model scheduling order for patent cases.
On April 2, 2014, the US District Court for the District of Colorado approved a pilot program implementing proposed local patent rules open to public notice and comment. The pilot program will last no longer than one year from the date the court formally approves the rules and may be extended for one six-month period.
Under the proposed rules, the party claiming infringement will be required to serve or produce:
  • Infringement Contentions.
  • A Claim Chart for each Accused Instrumentality containing:
    • identification of each asserted claim;
    • identification of the specific location of the structures that perform the claimed function for claims governed by 35 U.S.C. § 112(f);
    • a statement of whether each limitation of each asserted claim is present in the Accused Instrumentality literally or under the doctrine of equivalents; and
    • a description of the role of each party for allegations of direct infringement based on acts of multiple parties.
  • Documents concerning:
    • prior sale, use or invention;
    • conception and reduction to practice;
    • the prosecution history; and
    • patent ownership.
The accused infringer will be required to serve or produce:
  • Invalidity contentions.
  • A claim chart identifying:
    • each allegedly invalid claim;
    • each item of prior art that anticipates or renders the claim obvious; and
    • any other grounds of invalidity.
  • Each identified prior art item that is not in the file history.
The proposed rules also include provisions regarding:
  • Confidentiality designation and the entry of a Protective Order.
  • Responses to Infringement and Invalidity Contentions.
  • Production of opinions of counsel in defense to a willful or inducement of infringement claim.
  • The submission of a joint claim chart and claim construction briefing.
  • Final Infringement and Invalidity Contentions and Amendments of Final Contentions.
Finally, the proposed rules include a scheduling order that includes presumptive deadlines for patent disclosures.
Comments are due to the clerk’s office by May 4, 2014.