Northern District of California enacted its patent rules in January 2001. The district is now ready to reevaluate those rules and has asked for public comments and concerns. Ed Reines, who is on the N.D. Patent Local Rules Committee has asked whether Patently-O readers have some input on potential improvements to the rules:
The committee knows that the patent community has a variety of views on patent local rules. Because a healthy debate and full ventilation of issues is likely to lead the best outcome, the committee seeks broad input on potential changes to the patent local rules.
The Northern District of California patent rules have served as a set of model for a number of districts contemplating their own patent specific local rules. In addition, many district judges across the country require litigants to follow some form of the rules. Comments should be e-mailed to patentlocalrulescommittee@gmail.com and submitted by December 15, 2006.
My initial comments: (1) We need to revisit claim construction proposals and get the court involved with the technology a bit earlier. As we have seen in several CAFC cases, the claim construction process requires a very good understanding of both the invention and the accused infringing device. The CAFC has also now clarified the roles of various types of evidence used in claim construction. Claim construction proposals should include clear tables showing how the various levels of evidence support the proposed claim construction. (2) In addition, the court should set-up rules to ensure that there is an early understanding of whether the plaintiff has a chance at obtaining injunctive relief. This will help guide settlement.
This small inventors view of judicial changes to patent law and procedures is not formulated with consideration to the myriad of procedures utilized by legal practitioners whether involved in prosecution or enforcement procedures or the litigation industry as a whole. The inventor’s perspective centers on the “real” world effects of legislative, procedural and judicial flip-flopping.
If there is one issue that needs re-addressing by CAFC and SCOTUS it is the right to “exclude” and the mechanism of redress which was or is (depending on your perspective) available to our citizenry.
Court rulings simply cannot continue to be made in the vacuum of procedure without due consideration of the market effect of these same decisions. Market realities discount with severity any value determination of patents where the right to exclude is questionable or challengable. Absence any charge of criminality (which does not exist – infringement not theft) the capital market investments will always be gauged by the ROI for the participants. There is simply no value for a piece of property where fundamental ownership is in question. Indeed, without exclusivity it is by default non-exclusive and therefore determinable only by judicial mechanisms of redress. Mechanisms that now without fee contingent law practices are simply unavailable to over 90% of the American population (extrapolated from Census Bureau average earned income and disposable income statistics). Venture and developmental capital see this as a high-risk exposure, which from my experiences they certainly should!
The reality for the financial industry is they determine the invention’s investment value without any consideration for or to the inventor(s) or legal patent holders. Investment capitalists establish value, because of questionable ownership, upon the “commercialization” capabilities of the entity who wishes to bring the invention to the marketplace. While I will not say never, I will say that in the great majority of circumstances this will not involve the inventor(s) themselves. Why would a market driven ROI industry squander investment resources where an entire infrastructure – sales, marketing, servicing, administration, facilities, staff etc. will have to be assembled and built – never mind that should be the inventors choice. The time frame measured in years to reach a break even point is enough of a disincentive alone to send the dollars, sterling, franc and gold bearers heading for the hills in a wide open gallop. It strikes me that the judiciary has been more than hoodwinked in recent times into applying economic rulings in place of inventors rights driven by a financial marketplace that was not nor could have even been contemplated by the founding fathers. And I highly wonder about the financial sophistication of all involved considering that both of these New World industries proper operations were established under the same Article and Section of the Constitution in a commoners language. The “Exclusion Provision” is the foundation block of the Right!
Maybe California could begin to lead the way in protecting innovation by doing a very novel thing – allowing inventors/patent holders the right or minimally the opportunity to create and practice for a twenty year period of time from filing a patent their own creation – 17 years from issuance would be fair considering present pendancy.
Ed Pool
(Inventor yea well maybe – the jury hasn’t been seated on that one yet.)
I’d vote for a uniform set of patent rules for ALL district courts, as long as they’re NOT the rules of the Northern District of Georgia. Maybe if we get the proposed test of designated patent judges in selected districts they could all agree on a set of rules.
My wish list:
1. Mandatory summary judgment Markman rulings for immediate appeal (see above)
2. Mandatory bifurcated damages discovery and trial (no damages discovery until liability proven)
3. Mandatory oral hearings before Markman decisions.
Improvement of the Northern District’s Patent Rules seems a worthy effort. However, adoption of a similar set of rules by all of California’s District Courts is in my view more needed.
For example, uncertain patent procedures in the Central District waste judicial and party resources. Disputes between the parties is but one place where this waste can be seen.
While improving its own Patent Rules, the Northern District might also help its sister courts by making and documenting the case for Patent Rules.
The problems that Paul F. Morgan and Jeremy Pitcock identify above are just manifestations of the general chicken-or-egg problem that heightened pleading requirements create — too loose and almost any defendant is going to have to go through discovery; too strict and almost no plaintiff will have the facts needed to make it to discovery.
What we need is pleading requirements that make sense in view of what information is actually available — to plaintiffs — at the pleadings stage. As Jeremy already pointed out, product numbers make little sense when you’re talking about method claims. And even when they’re system claims, only the defendant really knows how they’re all related.
Perhaps this suggestion is naive, but why not require plaintiffs to (1) explain what information they’ve gathered pre-filing, (2) generally aver infringement as to those claims or elements for which they require discovery, and (3) have an expedited mini-discovery as to only the elements or claims for which plaintiff has had to aver infringement? This splits the baby by avoiding the costs of full-blown discovery where plaintiffs are simply wrong in their inferences, and permits plaintiffs a chance to set up a target with the most accurate information where they are right.
I agree that complaints should require that at least one infringing product be identified with specificity, but it is often difficult to know all the different model numbers and how they differ without discovery. I realize I may be outside the majority on this point, but I think there should be some provision in the Patent Local Rules for infringement-related discovery before the plaintiff is required to produce the preliminary infringement charts. The level of detail required recently by the Courts in the preliminary charts is often difficult to provide without some discovery, particularly for method claims where reverse engineering is impossible. Some discovery would likely eliminate or at least greatly lessen the now common attempts to strike the preliminary infringement charts because they are not sufficiently detailed, which results in wasteful satellite litigation early in the case.
Personally, I would like to see a universal requirement for all D.C.’s that any infringement COMPLAINT must specifically identify the products [at least one] then believed by the patent owner to be infringed. The present practice of allowing a vague initial charge of infringement of ? [until some considerably later date set by the judge and/or local rule] is unfair and time-wasting to defendants with hundreds of products.
Why does the Court need to see the accused embodiment, before it construes the asserted claim, even though claim construction must be unaffected by the nature of the infringement? Why, to know which words of the claim are the decisive ones. Procedural economy. If the court is not allowed to see the infringement, it has to spend an eternity construing everything, and will still not construe the decisive point in enough detail to settle the infringement issue when the accused embodiment is revealed.
The English courts latched on to this donkeys’years ago. Could it be that the CAFC is acquainted with English caselaw?
I will second the point made by Alan McDonald above. Having a rapid appeal to the CAFC could save millions of dollars, and save court time by avoiding two trails.
On a somewhat unrelated issue, I am extremely puzzled by the CAFC’s desire to know anything about an accused product or method during claim construction. IF claim construction really is a matter of law, and everything needed for claim construction is in the PTO record, what difference can an accused method make to claim construction? To me, it seems like an accused product or method brings issues of fact, which would take claim construction outside a pure issue of law if the accused product is needed for claim construction.
The rules should follow a practice that some district court judges have advocated on the lecture circuit.
Each party’s Markman brief should include a motion for summary judgment. The court, if possible, grants summary judgment to one party as part of the Markman order, allowing for an immediate appeal to the CAFC.
That way, there will not be a need for two trials, one before the CAFC reverses the district court claim construction and one after.
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