IP Law: Connecticut Now Has Patent Litigation Rules
After substantial study and debate, the District of Connecticut has approved a uniform Standing Order in Patent Cases that became effective October 1, 2013 for those judges who adopt it. Following the work of an ad hoc committee formed by then-Chief Judge Alvin W. Thompson in 2011 and chaired by Judge Vanessa L. Bryant, the court approved a form of order based on local rules adopted in the neighboring Southern District of New York. (Disclosure: The author served as a member of the committee.)
The Standing Order is intended to facilitate case planning and management in patent cases, reduce delays in the resolution of those cases, and improve the efficiency and fairness with which patent cases are handled in Connecticut — all Rule 1 stuff. See Federal Rules of Civil Procedure 1 (seeking "to secure the just, speedy, and inexpensive determination of every action and proceeding").
Under the Standing Order, parties to patent cases must discuss within their initial planning meeting the variety of matters unique to patent cases, particularly those associated with patent claim construction and with infringement, non-infringement, invalidity, and unenforceability contentions. Unless modified by the court in response to the parties' planning report, infringement contentions will be due 42 days after the filing of the report. Invalidity contentions must follow 42 days later. Special provisions apply in the case of a declaratory judgment action in which no infringement allegations have been made.
One issue that arises frequently in patent litigation is the timing of disclosure of opinions of counsel. Accused infringers often assert reliance on opinions of non-infringement or patent invalidity as a defense to claims of willful infringement or inducement of infringement. Although opinion evidence can be quite important to maintaining a successful defense, a party asserting reliance on an opinion of counsel typically must disclose in discovery, in addition to the opinion, at least all other opinions received on the same subject and all communications with the opinion writer concerning the opinion. See e.g., In re Echostar Communs. Corp., 448 F.3d 1294 (Fed. Cir. 2006)(discussing scope of waiver of attorney-client privilege and work-product protection).
Because reliance on the opinion is, of course, irrelevant in the absence of liability (and so, paradoxically, the opinion is most important when incorrect), accused infringers generally seek to delay the deadline for disclosure until liability issues have become relatively clear. Under the Standing Order, the deadline for disclosure is 42 days after entry of a claim construction ruling. This allows the accused infringer an opportunity to consider the implications of that decision, which may be case dispositive. An accused infringer who does elect to assert reliance on an opinion of counsel must simultaneously disclose both the opinion and any other documents as to which attorney-client privilege and work-product protection are thereby waived.
The Standing Order also sets defaults for the claim construction process itself. Although a date for submission of a joint disputed claim terms chart is left open, the format of the chart is spelled out, and relative deadlines for subsequent claim construction events are set. The Standing Order provides for the simultaneous exchange of opening and responsive claim construction briefs at 35 day intervals following the submission of the chart.
Historically, one of the causes for delay in many patent cases has been the absence of a protective order, which can forestall discovery in cases involving confidential technology. This problem has been mitigated in recent years by the individual adoption by many judges in this district of chambers-specific standing protective orders. Because of a lack of uniformity, however, and to ensure adequate initial protection even for highly confidential information, the Standing Order includes its own confidentiality provisions.
Documents and information may be designated as "Confidential," "Highly Confidential — Attorneys' Eyes Only" or "Highly Confidential — Outside Attorneys' Eyes Only," but may not be withheld on the basis of confidentiality in the absence of a court order. If a party is represented only by in-house counsel, the Standing Order permits one in-house counsel to review even the most highly confidential information, but only after a seven-day wait period to allow time for objection. The Standing Order contemplates that the default rules may eventually be replaced by a negotiated protective order, but avoids discovery delays in the meantime.
The Standing Order is a scaled-down version of more comprehensive local patent rules that were proposed by the committee last year and circulated for review among various interested bar associations. That proposal had included patent-case specific forms of 26(f) Report of Parties' Planning Meeting and protective order, among other bells and whistles. The proposal was curtailed in view of concerns that the proposed rules were too regimented or otherwise "too much." One of the virtues of the proposed rules that is not included in the Standing Order was a placeholder for a status conference shortly after the claim construction hearing. That conference had been intended to give the court and the parties an opportunity to take stock of the status of the litigation at that moment and to set a schedule for the balance of the case. Of course, nothing prevents the court from accomplishing the same objectives without a rule requiring it.