New England Biz Law Update
Massachusetts can now be added to the list of venues in the country that are most attractive to patent litigators, thanks to a new rule adopted by the U.S. District Court.
Patent lawyers, who typically have a choice of jurisdictions in which to bring their cases, say that the state is following and improving upon the example set by the Northern District of California — a long sought-after patent litigation venue — by instituting time standards and procedural guidelines.
“This shows that filing in Massachusetts can be a very smart choice because the judges are interested in patent cases and do wish to impose restraints on the case that make it more efficient,” said John L. Strand, a patent litigation associate at Wolf Greenfield in Boston.
Lee Carl Bromberg, of Bromberg & Sunstein in Boston, spearheaded the effort to adopt the new rule while serving as president of the Boston Patent Law Association in 2007.
“Some [Massachusetts] judges were doing something like this already, but it really depended upon when you filed your case and which judge you got,” he said. “We said to the court, ‘We think it would help if there was more uniformity and if there’s a suggested timeline.’”
The changes, which take the form of Local Rule 16.1(A), suggest that the parties address issues of timing and procedures for disclosing initial infringement and invalidity positions, for holding claim construction “Markman” hearings, and for conducting technology tutorials in their joint statements to the court at the outset of litigation.
“It’s expected that it will get you to trial sooner,” said Martin J. O’Donnell of Cesari & McKenna in Boston, a member of the BPLA task force that proposed the new rule. “It shouldn’t affect the substantive outcome [of the case], but it will affect the timing.”
The task force’s mission was aided by the enthusiasm and cooperation of several judges, including U.S. District Court Judge Richard G. Stearns, who have taken an active interest in patent cases and, in some instances, already established their own unofficial guidelines.
“It’s hard to predict the practices of each judge,” Stearns said, “and lawyers like nothing more than predictability. This was meant to give some uniformity of expectations.”
No ‘handcuffs’
In crafting the new patent rule, the task force and the judges sought out the most successful practices employed by other jurisdictions. While California’s rules are the most “muscular,” according to Bromberg, the Eastern District of Texas, the Eastern District of Wisconsin, the Northern District of Georgia and the legendary “rocket docket” of Virginia also have specific standards that have shortened the average length of a patent case from multiple years to months, he said.
Massachusetts has historically been a patent law hot spot, Bromberg added, so establishing time standards was a logical step to take.
“We have always had a lot of patent cases in Massachusetts because we have a really large court, and we’re a technology center and have been for a long time,” he said. “But other courts had advanced their position as a place to take patent cases.”
A unique feature of Massachusetts’ version of the rule is that while it offers a specific, detailed timeline for patent cases to follow, it is not binding.
“We framed it in the form of suggested rules for two reasons,” Bromberg said. “One of them was that we do have a tradition in this jurisdiction of each judge controlling [his] own docket. Out in California, in my experience, they have much heavier local rules. Everybody must do things in a certain way. And that’s not the culture around here. We didn’t want to say, ‘Everybody, put on these handcuffs,’ in effect. The other was that these cases are very variable. You can have a case on a single patent on a light bulb switch, or a case involving three to four patents related to molecular biology. Obviously, you need flexibility to change those.”
Strand added that the rule simply suggests parties consider certain dates and when particular events are to occur but “doesn’t actually force the parties to adopt certain dates, which is a little different from the Texas and California rules.”
A sample scheduling order is included in the rule that, Stearns said, its designers expect 95 percent of cases to follow.
The patentee-plaintiff is expected to disclose the substance of his case within 30 days, and the accused infringer is to respond within 90 days. Also included is a detailed schedule regarding the Markman hearing, sample charts and even specific suggestions for page length and typeface of briefs.
“It’s quick,” Stearns said. “The idea is that’s where the efficiency comes in. I think there is some feeling that the court is sometimes too lenient in the way it schedules.”
‘Fair balance’
The newly adopted rule is the result of nearly a year of discussion between the BPLA’s task force and the court’s judges.
One of the most hotly debated subjects concerned the early disclosure of the alleged infringement “in terms of a specific reference to a claim limitation,” Stearns said. “Then, to balance off the plaintiff’s obligation, there’s an obligation on the accused infringer to identify prior art invalidity contentions that they’re going to make. Now, that level of disclosure was not disputed, but there was real debate about how quickly that had to be done.”
Also at issue, Bromberg said, was the time element involved in patent cases.
“Ideally, as a litigant, particularly if you’re the defendant, you want all the time in the world. If you’re the plaintiff, you want to move as fast as you can, because you think your rights are being infringed. To try to come up with a fair balance was basically the issue,” he said.
The matter of whether to restrict the number of claims that lawyers can ask a judge to interpret also sparked debate.
“The temptation I quickly discovered is that when this claims construction duty was assigned to the court, you would find that lawyers would designate for construction every term of the patent,” Stearns said. “In a recent patent case I wrote, one of the terms that I was actually asked to construe was what a bed was.”
The new rule suggests that attorneys limit the number of claims they ask the court to interpret to 10, Stearns said. “The idea is to caution lawyers that we don’t want these rabbit-like multiplications of claim construction requests.”
Since the rule became official on Nov. 5, 2008, Stearns said, litigants who have come before him seem pleased.
“They’re happy with it,” he said. “It looks familiar in the sense that if you leave lawyers to put together a proposed scheduling order, they’ll come up with something pretty much like this on their own.”
As a result, he said, patent filings in Massachusetts may already be on the rise.
“Patent filings are up substantially as of the last few months,” he noted. “Now they are running back where they used to be, when we were one of the busier courts in the country.”
