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District of Utah Adopts Local Patent Rules
Practical Law Legal Update 2-550-1053 (Approx. 4 pages)
District of Utah Adopts Local Patent Rules
by Practical Law Intellectual Property & Technology
| Published on 27 Nov 2013 • USA (National/Federal) |
On November 26, 2013, the US District Court for the District of Utah adopted Local Patent Rules to take effect on December 1, 2013.
On November 26, 2013 the US District Court for the District of Utah issued an order adopting Local Patent Rules. The rules will take effect on December 1, 2013 and apply to cases alleging patent infringement, non-infringement, invalidity or unenforceability of a utility patent, including declaratory judgment actions.
Under the patent rules, the party claiming infringement must serve:
- A list identifying each accused product.
- Initial disclosures that include:
- documents concerning each disclosure, sale or offer to sell any product covered by the claimed invention that occurred before the patent application's filing date;
- documents regarding the conception, reduction to practice, design and development of the claimed invention, but only if the documents were created before the earlier of the patent application's filing date or the claimed priority date;
- the file history of each patent, including patents related to any priority claim;
- documents concerning the patent's ownership;
- all licenses; and
- the date when damages began to accrue, or if not known, how the date should be determined.
- Initial Infringement Contentions that include:
- an identification of each asserted claim and the applicable theory of infringement under 35 U.S.C. § 271 for each claim;
- an identification of each product that allegedly infringes each claim;
- a chart showing where each element of each asserted claim is found in the accused product;
- a description of the direct infringement resulting from any indirect infringement, including the acts of the indirect infringer that caused the direct infringement;
- the priority date for each asserted claim;
- the support for any claim of willful infringement; and
- an identification of any patent owner or licensee products that use the claimed invention, including whether the products were marked with the patent number.
- Final Infringement Contentions.
The accused infringer is required to serve:
- Initial disclosures that include:
- documents sufficient to show the operation of each accused product;
- a copy or description of each item of prior art relevant to invalidity;
- each accused product; and
- an estimate of the volume and gross revenues for each accused product's sales.
- Initial Non-infringement, Unenforceability and Invalidity Contentions that include:
- a chart responding to each allegation in the infringement charts and describing the reasons for each denial of infringement;
- an identification of each item of prior art that invalidates an asserted claim and whether each item anticipates or renders obvious the claim;
- each combination of references that renders a claim obvious and the reasons to combine the references;
- a chart describing where the elements of each asserted claim are found in each prior art reference;
- a description of invalidity defenses based on indefiniteness, lack of enablement or written description; and
- unenforceability contentions.
- Final Unenforceability and Invalidity Contentions.
- Final Non-Infringement Contentions.
The rules also guide the parties' discovery planning conference under FRCP 26(f) and the initial case management conference with the court. During the discovery planning conference, the parties must discuss the form scheduling order in Appendix A to the Local Patent Rules and present a proposed scheduling order to the court. The patent rules also govern claim construction proceedings and briefing, and require the parties to:
- Exchange proposed terms that require construction and proposed constructions for those terms.
- Identify no more than ten terms to present to the court, but for good cause, the court may allow the parties to present more than ten terms.
- Submit a joint claim construction chart.
The rules also establish presumptive limits on the number of asserted claims and prior art references, which the court may modify based on a showing of good cause. Finally, the rules set a presumptive schedule for:
- Fact discovery.
- Disclosing opinions of counsel.
- The disclosure of experts and expert discovery.
- The filing of dispositive motions.
A summary of the relevant deadlines under the Local Patent Rules is available on the court's website.