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July 27, 2012

Northern District of New York Adopts Local Patent Rules

Following in the footsteps of the U.S. District Court for the Northern District of California and many other district courts across the country, the U.S. District Court for the Northern District of New York1 recently enacted "Local Rules of Procedure for Patent Cases." Effective January 1, 2012, the Local Patent Rules "apply to all civil actions filed in or transferred to [the Northern District of New York] which allege infringement of a patent in a complaint, counterclaim, cross-claim or third-party claim, or which seek a declaratory judgment that a patent is not infringed, is invalid or is unenforceable."

Enacted "[i]n recognition of the complexities and uniqueness of issues associated with management of patent infringement litigation" and "to ensure just, efficient, and economical handling of such cases," the Local Patent Rules "are calculated to provide a standard structure for addressing the issues which typically arise in such cases, and to foster predictability and facilitate planning for the litigants and the Court."

The Local Patent Rules are comprised of four main categories of rules:

1. General Provisions – Rule 2;
2. Patent Disclosures – Rule 3;
3. Claim Construction Proceedings – Rule 4; and
4. Post Claim Construction Procedures – Rule 5.

As suggested by its title, "General Provisions" is a catch-all of sorts. It contains rules concerning the initial scheduling conference conducted pursuant to Rule 16 of the Federal Rules of Civil Procedure, which modify the scope to address issues unique to a patent infringement case. Rules concerning confidentiality, exchange of expert materials, and the relationship of the Local Patent Rules to the Federal Rules of Civil Procedure are also set forth in this section.

"Patent Disclosures" concerns the mandatory disclosure of asserted claims, infringement contentions, and non-infringement, invalidity, and unenforceability contentions, as well as the applicable deadlines of the disclosures. As is common with other district courts, the Local Patent Rules also require the contemporaneous disclosure of certain documents, and limit the ability of a party to amend its disclosures to instances where leave is sought timely and with good cause.

The procedure for construction of disputed claim terms is set forth in "Claim Construction Proceedings." Beginning with the parties' exchange of proposed claim terms for construction, the procedure requires a subsequent exchange of preliminary claim constructions and extrinsic evidence, followed by the filing of a Joint Claim Construction and Prehearing Statement. Absent prior leave of court upon a showing of good cause, no more than ten claim terms may be presented for construction. Thereafter, the parties contemporaneously file their respective opening and responsive claim construction submissions (i.e., briefs and any supporting evidence), and a Markman hearing is conducted by the Court, if necessary.

"Post Claim Construction Procedures" addresses exactly what is suggested by its title. It concerns the timing and scope of disclosures concerning reliance upon advice of counsel, as well as opening and responsive expert reports. The deadlines for the completion of discovery and for the filing of dispositive
motions are also provided.

As intended, it is anticipated that the enactment of the Local Patent Rules will lead to the "just, efficient, and economical" administration of patent infringement cases in the Northern District of New York. Initial experience with cases subject to the Local Practice Rules has been overwhelmingly positive, which supports this conclusion.


1 The Northern District of New York encompasses 32 counties in Upstate New York, including the cities of Albany, Binghamton, Syracuse, and Utica.


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