by Edward Reines
The Northern District Of California posted on Friday substantially revised patent rules that apply to all cases filed on or after March 1, 2008. ND Cal pioneered the first set of patent rules in 2001, as the vision of Judge Ronald M. Whyte, a leading jurist in the patent field. Since then, seven other Districts have followed and promulgated patent rules that are modeled to a greater or lesser extent on those original rules.
ND Cal's new 2008 patent rules feature two significant changes and a number of other updates. First, the new rules require the parties to identify together the claim construction disputes that are most significant to the outcome of the case, including an identification of which may be case dispositive. By default, under the new rules, the number of most significant terms ("MST") to be identified by the parties is ten, but that number can be scaled by the court to suit the needs of each particular case. The purpose of this new rule is to address the concern that parties identify too many terms, including many insignificant terms, for construction. By identifying MSTs, resources can be focused on the most important issues without a court outrightedly capping the number of terms to be construed.
Second, the new rules eliminate the concept of “preliminary” contentions in favor of a single round of contentions which can be modified only for good cause. Many had critiqued the old rules as allowing changes “as of right” in circumstances where such changes are not in fact warranted, while also creating undue barriers to their amendment when the circumstances did warrant modification. For guidance, the new rules set forth recurring circumstances where the good faith standard might be satisfied.
The efficacy of the new rules will, in the end, be judged by the test of time. In any event, the ND Cal judges deserve credit for staying at the forefront of case management innovation in the complex world of patent litigation. The District has published on its website a committee report that provides helpful background on how the new rules were developed and explains the intent behind the changes that have been adopted.
Ed Reines is a partner at the Weil Gotshal firm. He chaired the Northern District’s Local Rules Advisory Committee.