On January 17, 2017, the Northern District of California enacted revisions to the Patent Local Rules. The revised rules, which took effect immediately, require earlier disclosure of damages-related discovery and contentions. Below is a summary of the specific changes.
- The parties are required to provide the court with a “non-binding, good faith estimate of the damages range expected for the case along with an explanation of the estimates” at the Initial Case Management Conference. If the parties are unable to do so, they must explain their reasons, and identify what information is needed to do so. See Patent L.R. 2-1(b)(5).
- In their initial infringement contentions, patentees are required to disclose additional documents and details regarding infringement and damages. More specifically, patentees must identify: (a) where and how each limitation of each asserted claim is found within each Accused Instrumentality; (b) each instrumentality, including instrumentalities of licensees, that practices the claimed invention; (c) the time of first infringement; (d) the start of claimed damages period; (e) the end of claimed damages period; (f) all license agreements that they contend are “comparable to a license that would result from a hypothetical reasonable royalty negotiation”; (g) all licenses and agreements transferring any interest in any patent-in-suit; (h) documents reflecting F/RAND commitments; and (i) all agreements that may be used to support their damages case. See Patent L.R. 3-1 and 3-2.
- Accused infringers are required to produce additional documents and details within 45 days of receiving the patentee’s Infringement Contentions. More specifically, Accused Infringers must produce: (a) all license agreements that they contend are “comparable to a license that would result from a hypothetical reasonable royalty negotiation”; (b) documents sufficient to show the “sales, revenue, and profits for accused instrumentalities” identified in the Infringement Contentions for the time periods specified; and (c) all agreements that may be used to support their responsive damages case. See Patent L.R. 3-4.
- Under new Patent L.R. 3-8, Patentees are required to serve “Damages Contentions” within 50 days after receiving Accused Infringer’s Invalidity Contentions. The Damages Contentions must include disclosure of all “theories of recovery, factual support for those theories, and computations of damages within each category.” The Accused Infringer then must provide Responsive Damages Contentions 30 days later, which must include “the party’s affirmative position on each issue.” For both sets of Damages Contentions, in the event a party contends it is unable to provide a fulsome response to the disclosures required, “it shall identify the information it requires.”
The new rules are available on the N.D. Cal. website here.
A redlined set of rules showing the changes are also available on the N.D. Cal. website here.