IP Law Bulletin

Key Takeaways

• Trial times. Under the new rules, the court must schedule a trial within 24 months of the initial scheduling conference. The court has been unpredictable in the past on time-to-trial, with the median time being a little less than three years and some cases taking more than five-and-a-half years to get to trial.
• Markman hearings. A key event in any patent case, Markman hearings allow the parties to set forth their positions as to the meaning of claim terms and the scope of the patent for the judge. Under the old rules, the timing of the Markman hearing was very inconsistent, ranging anywhere from four to 30 months from the initial scheduling conference. Now, Markman hearings will be held within nine months. The advantage of reaching the Markman stage more quickly is that it sets the terms for expert discovery and trial. Obtaining a faster resolution on “What does the patent-in-suit mean?” ostensibly helps everyone and could materially impact the efficacy of early alternative dispute resolution.
• Timing on Markman rulings still a question mark. The new rules do not address when the Markman ruling will be issued. The bench, however, will need to issue a decision in a timely manner or will run the risk of throwing off the timing of the entire case.
• Automated patent disclosures. The new rules provide more details on what needs to be included within the parties’ preliminary contentions (i.e., the automatic patent-related disclosures for infringement and invalidity) and also what needs to be produced with them. These updates bring the District of Massachusetts more in line with other jurisdictions and are not unusual in courts with a heavy patent docket.
• Hot button issue on amending disclosure. Under the proposed rules, if a party wants to amend its preliminary disclosures, it can only do so by leave of court and must make a timely showing of good cause. For example, the patent holder must lay out in its contentions how a device infringes just 21 days after the initial scheduling conference. In other words, these contentions are still preliminary. During the course of discovery, the patentee will receive more information and build its case accordingly. Under the current proposal, in order for a party to supplement its contentions, it will need to move the court. This rule is highly unusual, as parties can typically amend freely up to a certain point in the case, such as fourteen days after a Markman order issues or after fact discovery closes. Here, the proposed rule does not allow for a period of time for a party to make legitimate amendments without going to the court every time, which could slow down the discovery process. It remains to be seen if the bench will pare back the proposed rule and come up with a middle ground that allows legitimate amendments through the claim construction process and discovery period. 
• Crackdown on witnesses. The court has made it clear that Markman hearings will include attorney argument only, unless ordered by the court. Under the old rule, parties could indicate if they wished to call witnesses, including experts. This is another example of the bench streamlining the processes for patent litigation by cutting back extraneous fat.
• Relying on counsel as defense. The new proposed rules include a section related to the advice of counsel defense to willful infringement. This new set of mechanisms spells out what a party needs to disclose and when to disclose it. While typical in other jurisdictions, these disclosure rules are brand new to the District of Massachusetts.

The period for public comment on the proposed local patent rules closed on February 26. The rules are anticipated to go into effect this spring so we will continue to follow these developments closely. You can find the proposed rules on the Court’s website here.