I posted recently on the history of the local model order focusing claims and a recent order illustrating its application. There is a new order out on a similar request to limit prior art references that’s worth reviewing.
A number of years ago, the judges in the EDTX came up with a model order limiting the number of claims and prior art references as a case goes along. I wanted to go over how that form came about, how it is used, and a recent example where the court resolved disputes over it.
More and more recent patent cases involve patents a party declares are essential to practice a standard. As was recently the situation in a case in Tyler, sometimes a party asks a jury to determine whether a party holding standard-essential patents complied with its obligations in its negotiations. In this case, the plaintiff asked the Court to declare that it had not breached its obligation to offer a license on FRAND, i.e. fair, reasonable and nondiscriminatory, terms. In other words, was its offer FRAND?
These findings and conclusions resolve the nonjury issues remaining after a recent jury trial in a patent case.
Protective orders are often entered in civil cases to protect confidential information from public disclosure. The more complex the case, the more complex the orders become, with varying levels of protection depending on the type of information, often culminating with near clean-room procedures for source code.
Such procedures usually begin with the provisions in a court’s standing protective order, but are often modified by the parties to reflect particular needs or concerns in a particular case. Only occasionally, as here, do the parties need to refer a dispute over a particular provision for resolution by the court, but when it occurs it’s informative to see what the dispute was and how the Court resolved it.
Seems like just yesterday I was posting on a recent decision by Judge Gilstrap addressing whether a trial should be bifurcated into different proceedings, and why that is or is not a good idea. This case which came out earlier this afternoon addresses the same considerations, but under a different set of facts.
Since their initial adoption by the Northern District of California in the late 1990’s the concept of early, firm contentions – both for infringement and invalidity – has been a characteristic of patent local rules across the country. They represent a deliberate decision by the adopting courts to require parties in patent cases to take positions earlier than would be required under FRCP 26, and to require in most cases an order finding “good cause” to amend those contentions (certain amendments after Markman rulings don’t require an order but do require a certain showing). Judges that adopt such proceedings often claim that without them such complex cases would be unmanageable. Judge Ward, for example, asserted early during his tenure on the bench that patent cases needed such structure to be efficiently managed – and explained that as the reason why he adopted the N.D. Cal.’s patent rules for patent cases filed in his court.
Where a party doesn’t use one of the available mechanisms to amend its contentions, instead purporting to amend via email, interrogatory responses, smoke signals, or what have you – the outcome may be suboptimal, as this case shows. The case also shows that delay in moving to amend can have serious consequences.
The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often. And a request that issues be sequenced at trial is even rarer. This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.
Equitable defenses typically don’t get a lot of attention in patent cases. In this case the parties declined to present any evidence on the equitable defenses orally, instead submitting on the papers, but of course submitting additional briefing postverdict as well. Accordingly, the defendant’s equitable defenses of patent misuse and limitation of damages based on FRAND principles were resolved postverdict in the attached findings of fact and conclusions of law.
This case deals with the situation of a supplier intervening in a patent case brought against a retailer selling its products and subsequently seeking severance due to misjoinder under 35 USC Section 299, and transfer due to improper venue.