Local Patent Rules Becoming More of a Factor in Popular Patent Jurisdictions

The northern district of Illinois has approved a proposal to adopt the published Local Patent Rules and is accepting comments to the rules through 22 May 2009.

This does not take into account certain judicial districts that have enacted only one or two patent-specific local rules, such as, for example, Delaware's local rule that requires a copy of the patent be attached to the complaint. Del. L.R. 3.2 (2007).

The top 12 most popular jurisdictions for patent filings for the fiscal year ending 30 September 2008 are ranked as reflected in the Table I. However, this ranking does not hold true for prior years for all of the districts, but for comparison purposes, the same jurisdictions are maintained. There were, for example, several jurisdictions in fiscal years 2006 and 2007 that would have been ranked above the eastern district of Virginia.

According to the 2007 and 2008 Annual Reports of the Director of the AO, three out of the top four most popular patent filing jurisdictions (the central district of California, New Jersey and Delaware) did not, at least at the time, have local patent rules. Similarly, neither the northern district of Illinois, which was the sixth most popular in 2007 and 2008, nor the eastern district of Virginia, which was the twelfth most popular jurisdiction for patent filings in 2008, had local patent rules enacted. There are, moreover, the notable cases where the districts have enacted local patent rules, but the expected rise in patent litigation did not occur. For example, the western district of Pennsylvania has enacted local patent rules, but had only between 13 and 22 cases filed in any one of fiscal years ending 30 September 2006–2008.

As is well known, these cases arise when an abbreviated new drug application (‘ANDA’) is filed with FDA by a company seeking FDA approval to market and sell a generic drug that has therapeutic equivalence with the drug made in accordance with the Hatch-Waxman Act, specifically 21 U.S.C. § 355(j). When the ANDA is filed, the application must also include a certification with respect to each patent that has been listed by the NDA holder, indicating that the patent has expired, the ANDA applicant will wait until expiration, or that the patent is not infringed of invalid. If this last option is selected, then the applicant must provide the NDA holder and the patent owner notice of its patent certification, including a ‘detailed statement of the legal and factual basis’ for its assertion that the patent is invalid or not infringed. This, in turn, gives the NDA holder the right to file suit against the ANDA holder for patent infringement. Similar provisions apply for applications under 21 U.S.C. § 355(b)(2).

It is important to note that the court, in any particular case, may modify the dates in any particular case. The dates used herein are not associated with any particular case, but only estimated based on following the local patent rules of the two jurisdictions. Further, not all the deadlines imposed by the local rules of each respective jurisdiction are included or discussed and it would be necessary to consult the local rules to address a specific case.

The northern district of California recently amended its local patent rules to eliminate ‘the concept of “preliminary” contentions in favor of a single round of contentions, which can be modified only for good cause.’ (see Patent Local Rules Advisory Subcommittee Report United States District Court Northern District of California, January 2008, p. 2).

Similarly, the local patent rules of both the northern district of Illinois and the northern district of California require the parties limit the number of claim terms to be construed to 10 (see ND CA Patent LR 4-1(a) and 4-3(c); ND IL. LPR 4.1(b)). In both cases, if the parties cannot agree on ten terms, each party is permitted 5 or fewer, so that the number presented to the court does not exceed 10.