Proposed Local Patent Rule Having Effect

Last year, a distinguished group of intellectual property law trial lawyers from Virginia proposed a Model Patent Practice Local Rule (Proposed Patent Rule) as an addition to the Local Rules of Practice for the United States District Court for the Eastern District of Virginia (Eastern District). The Proposed Patent Rule was crafted to uniquely take advantage of the speed of the Eastern Districts rocket docket while allowing meaningful time for a reasoned Markman decision and expert reports before trial. The Proposed Patent Rule has received favorable comments from bar members and has been well received by the bench. The Proposed Patent Rule has the following primary components:

• Early disclosure of infringement contentions followed by disclosure of non-infringement invalidity contentions;
• Early consideration of claim construction so that claim construction may be completed prior to the issuance of expert reports. In addition, the issuance of a claim construction early in the case allows the parties to explore resolution of the case at an early stage;
• Early filing of dispositive motions (approximately ten weeks before trial) to allow the Court greater time to consider such motions because of the highly technical and complex nature of most patent cases;
• A suggested timetable of approximately eight (8) months between the Rule 16(b) Scheduling Conference and trial to balance the EDVAs rapid docket procedures with the complexities of a patent case.

In the end, although the Judges of the Eastern District decided not to adopt the Proposed Patent Rule per se, many of the Districts judges have adopted the proposed procedures in varying degrees to more effectively manage the complexities of a patent case on a compressed docket. Earlier Court intervention in fashioning disclosure dates and comprehensive Markman procedures varying by Judge are showing up in all divisions of the Court. As a result, it is important to consult trial practitioners with experience before the specific judge in each particular division to understand their procedures and how they can best help your case. Stephen E. Noona, who is the head of Kaufman & Canoles Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group and who has been counsel in over sixty (60) patent cases in the Eastern District, has appeared before the judges in all four divisions on patent matters. He was a member of the Committee who coauthored the Proposed Patent Rule and an Executive Summary. —Stephen E. Noona