District of New Jersey Amends Local Patent Rules
By Young J. Park, Dana Weir & Sabrina Mawani
On February 1, 2017, Chief Judge Simandle issued an Order, effective immediately, amending certain Local Patent Rules for the District of New Jersey, which is one of the main forums for cases arising under the Hatch-Waxman Act. Among the amended rules is Rule 4.2(a), which governs the exchange of preliminary claim constructions and extrinsic evidence. Under Amended Rule 4.2(a), even if “‘plain and ordinary’ meaning is asserted,” parties are still required to propose constructions for such claim terms. Notably, while it is no longer permissible for a party to propose only “plain and ordinary meaning” as the construction for a claim term, the amended rules do not appear to conflict with Federal Circuit precedent allowing parties to argue that a claim term need not be construed at all. See, e.g., Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010).
Another amendment was to Rule 2.1(a), which specifies the discovery topics that parties are required to discuss at the Rule 26(f) conference and include in the Joint Discovery Plan. Parties must now be prepared to confer regarding (1) the availability and timing of production of invention records (including inventor laboratory notebooks and analytical test results), ANDA product research and development documents, and ANDA product samples; (2) the date of conception and the date of reduction to practice for each patent asserted in the action; (3) each inventor’s availability for deposition; (4) availability of foreign witnesses for deposition and foreign documents; (5) whether there is a 30-month stay and if so, when it ends; (6) a date for the substantial completion of document production and a method for determining compliance; and (7) any other issues or matters that a party believes are time sensitive. The practical impact of this change is that parties must now be prepared to discuss with opposing counsel significant discovery topics at the beginning of the litigation.
Amendments were also made to Rules 3.3 and 3.4A to clarify the parties’ required disclosures in the Invalidity Contentions and Responses to Invalidity Contentions. Specifically, for any invalidity defense under 35 U.S.C. §§ 101, 112(1), or 112(b), Rule 3.3(d) was amended to require the party challenging patent validity to provide “a detailed explanation of the bases for the asserted grounds.” Rule 3.4A(d), in parallel, was amended to require any party opposing the asserted grounds of invalidity under Rule 3.3(d) to provide “a detailed explanation of how the asserted claim complies with 35 U.S.C. § 112” in their Responses to Invalidity Contentions. Previous Rule 3.4A(d) is now Rule 3.4A(e).
The other amendments to the Local Patent Rules changed the due dates for certain case deliverables. Under amended Rule 2.2, the discovery confidentiality order is now due 14 days, instead of 30 days, after the Initial Scheduling Conference. For cases arising under the Hatch-Waxman Act, Rules 3.6(d) and (e) were amended to change the deadline for Invalidity and Non-Infringement Contentions to 30 days, instead of 14 days, after the Initial Scheduling Conference.