October 2019 Update: Texas Patent Rules Northern District: Diagram & Checklist
In patent infringement cases, managing a case per local rules (2nd Amended Miscellaneous Order No. 62) and corresponding time frames are important to a successful resolution. Our Texas Patent Rules Northern District diagram illustrates the information needed for cases filed in Texas' Northern District. For your convenience, a complementary NDTX Patent Rules checklist is also provided. If you have questions, please feel free to contact Darin Klemchuk directly or, visit our patent litigation practice or patent local counsel representation pages for additional information on our patent infringement-related services.
Effective Date of New Northern District of Texas (NDTX) 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.”
Texas Patent Rules Northern District (NDTX): Local Patent Rules Diagram (Download PDF) [click graphic to enlarge]
Texas Patent Rules Northern District
NDTX: Local Patent Rules Summary
Local Patent Rule 2-1(a) — 26(f) Conference
Local Patent Rule 2-1(d) — Joint Case Management Statement is at lease 7 days before each case management conference.
Local Patent Rules 3-1(a), 3-2(a) — Disclosure of asserted claims and Preliminary Infringement Contentions and Document Production per 3-2(a) 7 Days before Initial Case Management Conference.
Local Patent Rule 2-1(b) — Initial Case Management Conference after parties File Case Management Statement (judge will schedule Initial Case Management Conference).
Local Patent Rule 3-3(a) — (Party opposing claim) Preliminary Invalidity Contentions must be served 45 Days after 3-1(a) Disclosures.
Local Patent Rules 3-4(a),(b) — (Party opposing claim) Must produce Source Code and Prior Art (with English translations if foreign) within 45 Days after 3-1(a) Disclosures.
Local Patent Rule 4-1(a) — Each party must exchange a List of claim terms, phrases, etc. that should be construed by Judge, and claim elements that should be governed by 35 USC § 112(f) within 14 Days after service of Preliminary Invalidity Contentions.
Local Patent Rule 3-7(a)(1) — Amended Infringement Contentions for software limitations within 30 Days after receipt of Amended Infringement Contentions.
Local Patent Rule 3-7(a)(2) — Supplemental Invalidity Contentions within 30 Days after receipt of Amended Infringement Contentions.
Local Patent Rule 4-1(b) — Parties must confer “after exchanging this list”.
Local Patent Rule 4-2(a) — Parties must simultaneously exchange preliminary proposed Claim Constructions within 21 Days after exchanging List.
Local Patent Rule 4-2(b) — Preliminary identification of extrinsic evidence within 21 Days after exchanging List.
Local Patent Rule 4-2(c) — Meet & Confer “thereafter.”
Local Patent Rule 4-3(a) — Joint Construction And Prehearing Statement within 7 Days after service of Preliminary Claim Construction.
Local Patent Rule 4-3(b) — Expert Testimony Disclosures within 7 Days after service of Preliminary Claim Construction.
Local Patent Rule 4-4 — Parties must complete all discovery related to Claim Construction within 30 Days after Joint Construction And Prehearing Statement is filed.
Local Patent Rule 4-5(a) — Claim Construction Briefs within 45 Days after Joint construction and prehearing statement is filed.
Local Patent Rule 4-5(b) — Responsive Brief and supporting evidence within 14 Days after Claim Construction Briefs.
Local Patent Rule 4-5(c) — Reply Brief within 7 Days after Response to Claim Construction Brief.
Local Patent Rule 4-6 — Claim Construction Hearing within 2 Weeks after Response brief (subject to convenience of Judge’s calendar).
Local Patent Rule 4-5(d) — Joint Claim Construction Chart within 10 Days after Claim Construction Hearing.
Local Patent Rule 3-6(a) — Final Infringement Contentions (without leave of court) within 30 Days after Claim construction ruling is filed.
Local Patent Rule 3-6(a) — Final invalidity Contentions (without leave of court) within 50 Days after Claim construction ruling is filed.
Checklist of Texas Patent Rules Northern District
Additional Texas Patent Rules Resources
Access the NDTX Local Patent Rules (2nd Amended Miscellaneous Order No. 62) on our website or directly from the Court through this link.
Interested in the EDTX Texas Patent Rules? See our post on Texas Patent Rules Eastern District for a similar diagram and summary of its local rules.
Interested in the SDTX Texas Patent Rules? See our post on Texas Patent Rules Southern District for a similar diagram and summary of its local rules.
Interested in WDTX Texas Local Patent Rules? See our post on Texas Patent Rules Western District.
See our Local Counsel Texas page for additional information about our Local Counsel practice and the admission requirements of federal courts in Texas.
For a redlined copy of the differences between the previous version of the Northern District of Texas Local Patent Rules and the new version that went into effect on October 1, 2019 (2nd Amended Miscellaneous Order No. 62), read Northern District of Texas Adopts Amended Local Patent Rules Effective October 1, 2019. Practitioner tips for the major changes in the new NDTX patent rules are discussed in 7 Changes to the Northern District of Texas (TXND) Local Patent Rules.
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Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.
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