Legal Alert: New Local Patent Rule in District of Massachusetts

Effective today, June 1, 2018, the District of Massachusetts has adopted a new Local Patent Rule 16.6. The new rule is the result of a multi-year process and is a comprehensive revision of the rule. It will apply to all patent cases in the district for which a scheduling order has not yet been entered.

The new rule provides a fixed and relatively short timeline for patent cases. Trial is to begin within 24 months of the scheduling conference. The claim construction hearing is to take place within 9 months of the scheduling conference. Fact discovery should close 15 months from the scheduling conference, and expert discovery should close 3 months after fact discovery.

The rule also contains a substantial framework for automatic disclosures. The patentee must make its automatic disclosures no later than 21 days after the scheduling conference. It must produce infringement claim charts, the file history of the asserted patents, and other background information. The parties must then hold a conference to discuss the patentee's disclosures, then no more than 21 days later the accused infringer must make its automatic disclosures. The accused infringer's automatic disclosures include technical documents, samples of the accused products, non-infringement charts, invalidity charts, and other information.

Massachusetts is a national hub for the life sciences and high-tech industries. In the past, there have been several notable patent cases in the district, but it typically is not among the busiest in the country for patent litigation despite the substantial number of companies located here. That may now change. The Supreme Court recently narrowed the scope of the patent venue statute in its TC Heartland LLC v. Kraft Foods Company, 137 S. Ct. 1514 (2017) decision. Venue in patent cases is now only proper in (1) the defendant's state of incorporation, or (2) a state where the defendant has committed acts of infringement and has a regular and established place of business. With the narrowing of choices for patent venue, we expect that the predictability that should accompany the new rule will contribute to Massachusetts becoming an increasingly popular choice of venue for patent cases in the upcoming years.

An initial draft of the new patent rule was published for public comment in December 2017. Several attorneys from Fish & Richardson participated in comment and discussion process.

The new local rule is available on the District of Massachusetts website. The public notice of the rule is available at the link below.

Public Notice Amendments to Local Rules of the United States District Court

Schedule under the new District of Massachusetts Local Patent Rule 16.6:

Click the image to enlarge.