Following a trend sweeping over the federal court system, the United States District Courts for the Eastern and Southern Districts of New York become the latest courts to adopt their own version of local patent rules this month. The Eastern and Southern Districts of New York jointly announced the adoption of their own patent rules on December 18, 2012. The Court announcement (.pdf) states that interested parties may submit their comments to the proposed rules by January 11, 2013. The new rules become effective upon approval by the Second Circuit Judicial Council.
The proposed local patent rules (.pdf) are much less detailed than local patent rules adopted by other courts. For example, the Eastern and Southern Districts of New York only require the following for infringement contentions, “… a party claiming patent infringement must serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions,’ which identifies for each opposing party, each claim of each patent-in-suit that is allegedly infringed and each product or process of each opposing party of which the party claiming infringement is aware that allegedly infringes each identified claim.” (L.P.R. 6) This minimal disclosure stands in stark contrast to other courts such as the Northern District of California which require much more detail for infringement contentions. Specifically, the Northern District of California require that ”a party claiming patent infringement shall serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.’ Separately for each opposing party, the ‘Disclosure of Asserted Claims and Infringement Contentions’ shall contain the following information:
- Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. §271 asserted;
- Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
- A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function.
- For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.
- Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;
- For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and
- If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.
- If a party claiming patent infringement alleges willful infringement, the basis for such allegation.”
(N.D.Cal. L.P.R. 3-1)
Key Takeaway: While the District Courts for the Eastern and Southern Districts of New York have adopted new local patent rules, practitioners in those districts should not expect to receive detailed infringement or invalidity contentions disclosed in response to those new local patent rules.