On January 1, 2009, New Jersey’s new Local Patent Rules (L. Civ. 9.3) (“the Rules”) became effective for all patent cases filed in, or transferred to, the District Court for the District of New Jersey. Although modeled after the local patent rules of the Northern District of California, New Jersey’s Rules emphasize the principal role of Magistrate Judges with respect to most pre-trial activities, and add provisions applicable only in Hatch-Waxman cases. The Rules provide discretion to accelerate or modify the schedule set forth in the Rules for less complex cases where the technology is relatively simple or there is little dispute as to the structure, function or operation of the accused item.
In keeping with the goal of streamlining patent litigation, the Rules set up a disclosure timetable similar to that in jurisdictions considered to have “rocket dockets,” with one notable difference reflecting specific issues relating to the pharmaceutical industry. For example, the defendant in an action brought under the Hatch-Waxman Act must produce a copy of its entire Abbreviated New Drug Application (ANDA) or 505(b)(2) application at or before the initial scheduling conference. The defendant also must provide the written basis for its “Invalidity Contentions” and “Non-Infringement Contentions” for any patents referenced in its Paragraph IV Certification within 14 days after the scheduling conference. The “Invalidity Contentions” must be accompanied by documents sufficient to show the operation, composition or structure of the accused product, and a copy or sample of prior art that is not in the file history of the patent(s) at issue. The “Non-Infringement Contentions” must be accompanied by a chart identifying each claim limitation at issue, as well as anything that the defendant intends to rely upon in its defense.
Within 45 days after receiving the “Non-Infringement Contentions,” the plaintiff (i.e., the patentee or patent holder) in an action brought under the Hatch-Waxman Act must serve a “Disclosure of Asserted Claims and Infringement Contentions” (the “Disclosure”) for all patents referenced in the defendant’s Paragraph IV Certification, and produce any documents showing: (1) disclosure to any third party, or any offer to sell or public use of the claimed invention prior to the date of the patent application; (2) the conception, reduction to practice, design, and development of each claim before the patent application date; (3) each file history in the patentee’s possession; (4) that the party asserting patent infringement is the actual owner of the patent; and (5) the operation of any product the patentee relies upon as an embodiment of the claims.
In non-Hatch-Waxman Act cases, the discovery obligations are reversed, i.e., the patentee must serve its “Disclosure” within 14 days after the initial scheduling conference. This disclosure includes (1) each patent claim that is allegedly infringed; (2) identification of each accused product; (3) a chart identifying where each claimlimitation is found in the accused product; (4) description of any acts of alleged indirect infringement; (5) whether each claim limitation is infringed literally or under the doctrine of equivalents; (6) the priority date to which each asserted claim is entitled; (7) the identity of any product relied upon by the patentee as an embodiment of any claim; and (8) the basis for any alleged willful infringement. The Disclosure must be accompanied by the same types of documents that the plaintiff in an action brought under the Hatch-Waxman Act must produce in connection with its Disclosure.
Within 45 days after the “Disclosure” is served, each accused infringer must serve “Invalidity Contentions.” These contentions include the identity of invalidating prior art, an explanation of how the prior art invalidates, a chart correlating prior art to claim limitations, and disclosure of any invalidity grounds under §101 or §112 (i.e., indefiniteness, enablement or written description). The “Invalidity Contentions” must be accompanied by the same types of documents that the defendant in an action brought under the Hatch-Waxman Act is required to produce in connection with its invalidity contentions.
In all patent cases, the parties are required to exchange lists of claim terms for construction by the court 14 days after “Invalidity Contentions” are served or 45 days after serving the “Disclosure” in actions where validity is not an issue. After conferring to narrow the number of claim terms in dispute, the parties must submit a Joint Claim Construction and Prehearing Statement (the “Joint Statement”) to the court summarizing those issues remaining in dispute within 30 days after exchanging preliminary claim constructions. All discovery relating to claim construction must be completed 30 days after that filing, and the parties must simultaneously serve and file their opening Markman briefs within 45 days of filing the Joint Statement.