District Of Massachusetts Adds Certainty To Local Patent Rules

Effective June 1, the local rule for patent cases in the US District Court for the District of Massachusetts, Local Rule 16.6, has been amended. The amendments replace the former rule entirely and apply to all cases for which a scheduling order has not yet been issued as of the date of adoption. The amendments constitute a significant overhaul to the District of Massachusetts patent rules, first adopted nearly 10 years ago.

Attempting to respond to some practitioners' complaints about more rigid rules, the prior version of Rule 16.6 offered flexibility and served more as a guideline for scheduling and procedures in patent infringement cases, i.e., suggesting items that the court and parties should consider and offering a scheduling template. This flexibility, however, resulted in lack of certainty, which also proved problematic at times. The new Local Rule 16.6, after vetting among a variety of shareholders in the Massachusetts patent bar, now aims to provide greater clarity and efficiency in patent infringement cases by laying out specific details regarding patent proceedings, including scheduling procedures, disclosures, claim construction proceedings, and reliance on advice of counsel.

Below are key changes in the new rule:

Scheduling Procedures - Under the new rule, the court must schedule a trial within 24 months of the initial scheduling conference and schedule a claim construction (or Markman) hearing within nine months of the same. The new rule also introduces deadlines for fact discovery, expert discovery, and protective orders.

Additional Automatic Disclosures - In addition to the automatic disclosures required by Rule 26.2(a), the new rule provides details on what should be included in each parties' preliminary disclosures, (i.e., for the patentee: infringement charts, prosecution history, ownership evidence, and documents sufficient to identify all real parties in interest as to the patentee and asserted patent(s) and for the accused infringer: technical documents, samples of the accused products, source code, non-infringement claim charts, invalidity claim charts on anticipation and obviousness, other grounds for invalidity and evidence supporting the same, and documents...