NDTX Adopts 2nd Amended Miscellaneous Order No. 62 (NDTX Local Patent Rules)

Effective October 1, 2019, the Northern District of Texas adopted Second Amended Miscellaneous Order No. 62 a/k/a the Local Patent Rules of the Northern District of Texas.

According to the Order, the Amended Rules “will take effect on October 1, 2019, and will apply to any Dallas division patent case filed on or after that date. It will also apply to any pending Dallas division patent case in which, on the date this Order takes effect, more than 9 days remain before the initial disclosures of asserted claims and preliminary infringement contentions required by paragraph 3-1 is due.”

7 Changes to the NDTX Local Patent Rules

The following is a discussion of the major changes practitioners should consider in handling cases under the modified rules.

1. Modification to the Case Management Conference — Local Patent Rule 2-1(a)

Under new Rule 2-1(a), lead counsel for each party must participate in a conference under Fed. R. Civ. P. 26(f) in person or by telephone. Counsel shall jointly prepare the Case Management Statement and should clearly define the areas of dispute in the statement. The rule slightly modified the matters to be discussed in the Case Management Statement, in addition to the matters explicitly required by Fed. R. Civ. P. 26(f).

2. Changes to Initial Case Management Conference — Local Patent Rules 2-1(b) through 2-1(d)

Rule 2-1(b) sets forth an Initial Case Management Conference after the parties have filed the Case Management Statement. Unless ordered otherwise, lead counsel for each party must attend the Case Management Conference in person and the court has discretion to order additional counsel to appear in person as well. In addition to the matters to be addressed under Fed. R. Civ. P. 26(f) and the Case Management Statement, the new rule lists additional matters to be considered at Case Management Conference, which include:

• Brief overview of the case;

• History of the case, including any rulings issued in any Court, and the current procedural posture of the Case;

• Likelihood and timing of motions to transfer;

• Likelihood and timing of any proceedings before the United States Patent and Trademark Office (USPTO);

• Likelihood and timing of any motions to stay any pending proceedings before the USPTO;

• Early exchange of information to better assess the complexity and value of the case;

• Identity of any related proceedings and any potential coordination and consolidation between them;

• Key motions, disclosures, or document production likely to encourage early case resolution;

• Sufficiency of a party’s preliminary infringement contentions;

• Sufficiency of a party’s preliminary invalidity contentions;

• Reduction in number of asserted claims;

• Reduction in number of prior-art invalidity grounds;

• Number of claim terms to be construed;

• Early and expedited consideration of one or a limited number of claim terms to facilitate early summary-judgment motions;

• Representative products or processes with the goal of streamlining discovery and trial;

• Non-binding estimate of the range of damages to enable presiding judge to evaluate proportionality determinations;

• A schedule for the party defending against a claim of patent infringement to decide whether it will waive attorney-client privilege and produce an opinion of an attorney as part of a defense to a claim for willful infringement;

• Whether there should be a patent prosecution bar in the protective order, and to what extent such a patent prosecution bar should apply to any anticipated parallel USPTO proceedings;

• The need for a technical advisor, and, if so, the selection process and duties of that advisor; and

• Timing and frequency of future case management conferences.

Under Rule 2-1(c), the Court may schedule and hold additional Case Management Conferences as appropriate. At least 7 days prior to any Case Management Conference, under Rule 2-1(d), the parties shall file a Joint Case Management Conference Statement identifying for the Court the issues, if any, the parties believe should be addressed by the Court.

3. Adoption of Model Protective Order and Related Orders — Local Patent Rule 2-1(e)

In Rule 2-1(e), the Northern District of Texas has adopted a Model Protective Order, Model Order Regarding E-Discovery in Patent Cases, and Model Order Focusing Patent Claims and Prior Art. The Protective Order includes a Confidentiality Agreement for Third-Party Vendors and a Confidentiality Agreement for Experts, Consultants, and Employees. If the parties wish to adopt their own protective order, Rule 2-1(e) requires the parties to conspicuously identify the modifications from the model orders.

4. New Patent Discovery Dispute Procedure — Local Patent Rule 2-6

Rule 2.6(a) provides additional conference requirements before filing discovery related motions. Under Rule 2-6(b), a shorter briefing schedule will apply to discovery motions: a response brief is due within 7 days of the discovery motion’s filing and a reply brief is due within 3 business days.

5. Revised Timing for Disclosure of Asserted Claims and Preliminary Infringement Contentions — Local Patent Rule 3-1

Rule 3-1 sets a 7-day deadline before the initial Case Management Conference for a party claiming patent infringement to serve the opposing side with its disclosure of asserted claims and preliminary infringement contentions. Under Rule 3-3(a), a party must specifically identify any asserted claim the party believes to be directed at ineligible subject matter under 35 U.S.C. § 101.

6. New Procedure to Address Amendment to Contentions After Production of Source Code — Local Patent Rule 3-7(a)

The amended NDTX patent rules now address amending amending infringement contentions and invalidity contentions as a result of the production of source code under Rule 3-7(a).

7. Revised Timing for Join Claim Construction and Prehearing Statement — Local Patent Rule 4-3

The Joint Claim Construction and Prehearing Statement is now due no later than 7 days after the service of the parties’ preliminary claim constructions and extrinsic evidence under Rule 4-1. The amended Rule 4-3 alters the requirements for the statement, including explicitly requiring a statement of the proposed order of presentation at the claim construction hearing. Rule 4-3(b) addresses disclosure of experts and the parties’ use of expert testimony.

For a redline comparison of the new NDTX local patent rules to the previous rules as well as more information, read our blog post, Northern District of Texas Adopts Amended Local Patent Rules Effective October 1, 2019.

Additional Resources for Texas Patent Trial Attorneys

If you have a patent case in the Eastern District of Texas or the Northern District of Texas, see our white papers Eastern District Texas Patent Rules: Diagram & Checklist, Southern District of Texas Patent Rules: Checklist, and Texas Patent Rules Northern District: Diagram & Checklist for more detail on Texas Local Patent Rules as well as a diagram of each set of rules and a downloadable checklist. For the local patent rules, see the following pages - Eastern District of Texas Local Patent Rules, Northern District of Texas Local Patent Rules, Western District of Texas, and Southern District of Texas Local Patent Rules.

For more insights on patent infringement litigation, see our Intellectual Property Litigation Overview and our Patent Litigation Local Counsel pages.

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