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Often, that’s helpful to everyone involved, said University of San Francisco adjunct professor of patent law Michael Dergosits.
“(The rules) put people on notice early on in a case what the parties’ respective positions are,” he said. “It helps parties to get a good idea of what’s going on and takes away any real element of surprise or cowboy justice.”
This front-loaded approach to defining the patent at issue � known as claims construction � can also require more hours of research at that point in the case than in districts without such rules, Dergosits said. The approach may also encourage judges to put off summary judgments, which could work against accused infringers who want to resolve a claim quickly.
“The judge might defer summary judgment until they finish the claims construction process,” he said. “I’ve seen instances where early summary judgment motions would be discouraged in some sense by the local rules. � The court could decide that it’s better to wait until the patent’s been interpreted.”
San Diego-based Paul, Hastings, Janofsky & Walker attorney Stephen Korniczky says the rules can benefit the accused infringer in another respect: Because patent owners are forced to detail the alleged infringement, the defendant can research and better defend themselves earlier in the process, he said. Korniczky praised the rules for the most part, but said they may be more appropriate for complicated cases.
“If you’re forced into a set schedule, it’s not necessarily beneficial if your patent case is relatively simple and straightforward,” he said. “If, for example, you have a patent class that should be easy to resolve, the Northern District rules might force you into a schedule that unnecessarily drags out the litigation.”
Thomas Lewry, an attorney with Michigan IP firm Brooks Kushman, says the rules penalize the patent owner because owners are forced to state their arguments without having adequate discovery.
“Moreover, the patent rules make it extremely difficult for the patent owner to modify its infringement position later in the case,” he wrote in a paper.
Lewry calls the district’s patent rules “a good starting point” and recommends several different deadlines and requirements for the process.
The district requests any suggestions for improving the rules be e-mailed to [email protected].
