Patent Local Rules

Full Disclosure: The Northern District Amends Its Local Rules to Require Early Damages-Related Disclosures

N.D. Cal. Patent Local Rules

Patent litigants in the Northern District of California will have something new to argue over following the Court’s approval in January of Patent Local Rule amendments that impose damages-related disclosure requirements. The Court also tweaked a few other patent local rules. READ MORE

No Good Cause? No Amendment.

Order Denying Defendant’s Motion for Leave to Supplement Invalidity Contentions, MLC Intellectual Property, LLC v. Micron Tech., Inc., Case No. 14-cv-03657 (Judge Susan Illston)

In the Northern District of California, as with other districts, invalidity contentions are meant to crystalize theories early in litigation and prevent the “shifting sands approach to claim construction.” Once disclosed, those invalidity contentions may only be amended “by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. Defendant Micron failed to demonstrate good cause when it recently sought to amend its January 2015 invalidity contentions to add (1) two well-known textbooks from 1973 and 1990 and (2) two of MLC’s non-asserted, expired patents.  Judge Illston thus denied Micron’s motion in its entirety. READ MORE

No “Last Resort” Striking of Undisclosed Expert Opinion

Order Granting-in-Part Motion to Strike Declaration of Miguel Gomez, VIA Techs., Inc. et al. v. ASUS Computer Int’l, et al., Case No. 14-cv-03586 (Magistrate Judge Paul Grewal)

In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing. READ MORE

Wise People Are Diligent

Johnstech Int. Corp. v. JF Microtechnology SDN BHD, Case No. 14-cv-02864-JD (Judge James Donato)

Buddha said, “To be idle is a short road to death and to be diligent is a way of life; foolish people are idle, wise people are diligent.” This is a lesson Judge James Donato bestowed on the parties in Johnstech Int. Corp. v. JF Microtechnology SDN BHD, when he denied, in part, JF Microtechnology SDN BHD’s (“JFM”) motion to amend its invalidity contentions after the close of fact discovery to correct a clerical error and to add a new prior art reference and invalidity theories. Judge Donato allowed the clerical correction but denied JFM’s remaining amendments as JFM “failed to manifest the required degree of diligence.” READ MORE

Rules Aren’t Really Meant to be Broken

Order Granting and Denying In Part Plaintiffs’ Motion To Strike, Verinata Health, Inc. v. Sequenom, Inc., (Case No. c 12-00865-SI) (Judge Susan Illston)

The adage “Rules are meant to be broken…” is a risky one to test in court, particularly when it comes to the Northern District’s Patent Local Rule disclosures. Courts may exclude infringement and invalidity theories the parties fail to adequately disclose under these rules.


You May Not Need To Reverse Engineer an Accused Product To Make Infringement Contentions, But You Better Explain Functionality

Order Granting-In-Part Defendant’s Motion to Strike Patent Infringement ContentionsTech. Licensing Corp. v. Grass Valley USA, Inc., Case No. 3:12-cv-06060-PSG (Magistrate Judge Paul S. Grewal)

The famed architect Helmut Jahn once observed that “[a] good engineer thinks in reverse and asks himself about the stylistic consequences of the components and systems he proposes.”   These thoughts from one of the United States’ most influential architects seem particularly apt given the recent conclusions reached by Magistrate Judge Paul Grewal in Tech. Licensing Corp. v. Grass Valley USA, Inc, regarding what level of specificity is required to satisfy the Northern District of California’s Patent Local Rules that govern preliminary infringement contentions.