Patent Litigation Pilot Program Begins in the Northern District
By Greg Carr
Patent cases filed in, or transferred to, the Dallas Division of the Northern District of Texas beginning September 1, 2011, and at least through August 2012, will be randomly assigned to one of three “Patent Judges”: Godbey, Kinkeade and Lynn. This program is part of a 10-year Patent Pilot Program mandated by Congress and implemented by Special Order No. 3-287, signed by Chief Judge Fitzwater. The Program is designed to enhance expertise in patent cases among interested U.S. District Court Judges.
The Northern District qualified for the Program by being among the 15 district courts with the largest number of patent cases filed in 2010. All three Patent Judges have ample experience with patent cases and requested participation in the Program. The only other district court in Texas selected for the Program is the Eastern District, already famous as a desired venue for patent cases.
Keep in mind, not all patent cases in the Northern District will necessarily receive the attention of the Patent Judges. Every judge has seven days from being assigned a patent case to decline it and request the case be reassigned to the Patent Judges, one of whom will be randomly assigned the case.
All Dallas Division judges have advised they currently intend to refer patent cases to the Patent Judges through August 2012, but each may choose to retain such cases later. Judges Means and McBryde of the Fort Worth Division presently do not intend to refer any patent cases to the Patent Judges, while Judge O’Connor of the Wichita Falls Division plans to do so.
The referral practice of each district judge should be considered at the time of filing a patent case. At this time, only a small percentage of patent cases are filed outside the Dallas and Fort Worth Divisions.
In complex patent litigation, different judges often address seemingly similar issues disparately depending on the court’s judicial philosophy, case management requirements, practice and the like. During a Dallas Bar Association panel discussion on July 26, 2011, Patent Judges Godbey, Kinkeade and Lynn expressed a desire for more uniformity and predictability in their assigned patent cases.
To this end, the following guidance was also provided by the Northern District Patent Judges:
Case Management Conferences (CMCs): In view of fairly specific local rules applying to patent cases in the Dallas Division (Misc. Order No. 62), CMCs will not typically be required in patent cases.
Conference Requirements: Unlike the Eastern District of Texas, the Northern District has no special conference requirement that must be met before filing a discovery motion. Parties must, however, follow pre-motion conference requirements, which call for more than leaving a phone message for opposing counsel.
Local Patent Rules: In many respects, the local rules of the Dallas Division for patent cases are similar to local rules of the Northern District of California and Eastern District of Texas. While the Patent Judges may consider how such courts interpret rules covering similar issues and circumstances, the Patent Judges are not bound to follow those interpretations.
Markman Hearings: The court will admitlive testimony on a case-by-case basis in Markman hearings, where the parties seek to persuade the court of the proper meaning to be given patent terminology (akin to judicial contract construction).
Scheduling: Patent case trial settings will be firmly followed. Criminal cases, which must take precedence, will be coordinated and reassigned amongst the Patent Judges, to avoid delay of patent cases. Schedules in patent cases, such as time to trial and trial length, will be set with input from counsel. Proposals from counsel to streamline the case, such as early Markman hearings, mediation and motions for summary judgment, will be welcomed.
Stays for Patent Office Proceedings: If a patent-in-suit is being reexamined by the Patent and Trademark Office to determine whether it was validly issued, the Patent Judges are likely to grant a stay of the patent case for the first reexamination. However, such stays will be much less likely for subsequent reexaminations.
Technical Advisors: Technical advisors may be appointed to privately advise the court about technology, particularly when the meaning of patent terms is construed by the court. Technical advisors will be used on a case-by-case basis and, in any event, more frequently than special masters.
Transfers from Other Districts: Whether the Dallas Division will be assigned all patent cases transferred to the Northern District is unknown.
Like a technologist, the Federal Judicial Center will evaluate the Program empirically: by comparing the reversal rate of Program Patent Judges to that of other judges in patent cases.
Greg Carr, a partner at Carr LLP, is an intellectual property lawyer who handles patent litigation, licensing and procurement. He can be reached at email@example.com.