Western District of New York Proposes Local Patent Rules | Practical Law

Western District of New York Proposes Local Patent Rules | Practical Law

On November 8, 2013, the US District Court for the Western District of New York proposed Local Patent Rules to take effect January 1, 2014.

Western District of New York Proposes Local Patent Rules

Practical Law Legal Update 0-548-7265 (Approx. 3 pages)

Western District of New York Proposes Local Patent Rules

by Practical Law Intellectual Property & Technology
Published on 11 Nov 2013 • USA (National/Federal)
On November 8, 2013, the US District Court for the Western District of New York proposed Local Patent Rules to take effect January 1, 2014.
On November 8, 2013 the US District Court for the Western District of New York issued a notice of proposed enactment of Local Patent Rules. The rules will take effect January 1, 2014 and apply to cases alleging patent infringement, invalidity or unenforceability, including declaratory judgment actions.
Under the proposed rules, the party claiming infringement will be required to serve:
  • A Disclosure of Asserted Claims and Infringement Contentions.
  • Responses to Invalidity Contentions.
  • Final Infringement Contentions (21 weeks after serving its Disclosure of Asserted Claims and Infringement Contentions).
  • Final Responses to Invalidity Contentions.
The accused infringer will be required to serve:
  • A Disclosure of Non-Infringement and Invalidity Contentions.
  • Final Invalidity Contentions (at the same time the Final Infringement Contentions of the party claiming infringement are due).
  • Final Non-Infringement Contentions.
The rules will also guide the initial case management conference, including a presumption that the court will issue the Model Order Regarding E-Discovery appended to the rules. In addition, the rules will require the parties to produce documents concerning the asserted patent and accused product, submit a joint claim construction statement to the court, and make other disclosures typical in jurisdictions with local patent rules.
Finally, the rules include an automatic mediation schedule that requires the parties to hold a second and third mediation in addition to the initial mediation provided for in the court's Local Rule of Civil Procedure 16(a). These mediations will take place after the parties' exchange of proposed claim constructions and again after the court's claim construction ruling.
Comments are due to the clerk’s office by December 12, 2013.