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Patent Local Rules and Forums Shopping in Patent Litigation Cases

With the rise of patent litigation in popular venues such as the Eastern District of Texas, Northern and Central District of California, and Districts of New Jersey and Delaware, many courts have enacted patent local rules to simplify the complex process of patent litigation.  There are many different venue options for patent litigation, some with high win rates (Northern District of Texas), low win rates (Northern District of Georgia), high speed districts with high likelihoods of trial (Middle District of Florida, District of Delaware), and some slower speed districts (Eastern District of Wisconsin, Southern District of Ohio).  Without a doubt, the patent local rules now play a factor in forum shopping for litigants.

The majority of patent local rules discuss similar topics.  Most of them address:

  • infringement and invalidity contentions: preliminary disclosure requirements, accompanying document productions, ability to amend, timing thereof
  • Markman and claim construction briefing: timing, procedure, number of terms

Some districts have additional requirements, such as requiring disclosure of opinions of counsel or requiring accused infringers to file non-infringement contentions.  Most of the districts have their own timing requirements, such as for simultaneous exchange or consecutive exchange of briefings.

The majority of the differences are procedural, though some districts have enacted patent local rules that may favor one side.  For example, in the Eastern District of Texas, the rules mandate early disclosure of relevant documents and prior art.  They also limit opportunities to modify infringement and invalidity contentions.  This may place some defendants at a disadvantage to plaintiffs who can prepare and identify documents early on to support their positions.

These are all issues that patent litigants should pay attention to.  As long as the defendant is a corporation, and there is no forum selection clause, a patent suit can be filed anywhere the defendant does sufficient business for personal jurisdiction.  Thus, the question will primarily be focused on not where can the suit be filed, but rather where should the suit be filed.

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