The History, Content, Application and Influence of the Northern District of California's Patent Local Rules

I. INTRODUCTION On December 1, 2000, the United States District Court for the Northern District of California adopted pioneering and innovative Patent Local Rules. (1) The idea of having separate Patent Local Rules first surfaced in 1994. Chief Judge Thelton Henderson appointed advisory committees to study and make recommendations on revisions to the existing local rules so that they would be aligned with amendments which had been made to the national rules. (2) Due in large part to the growth of the electronics industry in the Silicon Valley, a relatively large number of patent infringement cases were pending in the District. (3) Many of these cases involved complexities unique to patent cases. (4) Judge Henderson appointed District Judge Ronald Whyte to Chair an advisory committee to determine whether the District should adopt a set of local rules specifically addressing patent cases. The advisory committee determined that separate patent local rules would be extremely helpful and recommended a set of rules. The Court approved the rules and published them for public comment. With relatively few changes, the rules were adopted and became effective on January 1, 2001.5 In the years following their adoption, other districts have determined to adopt patent local rules, many of which utilized the original Northern District Patent Local Rules as a template. (6) The Northern District's Patent Local Rules, and others patterned after them, have been enforced in district court cases and have been cited approvingly by the Federal Circuit. (7) Part II describes the civil justice reform environment which gave rise to the Patent Local Rules, including a United States Supreme Court decision on patent infringement proceedings, which was issued while the Rules were under development. Part III details the procedures required by the original patent local rules and how they are affected by a 2008 amendment. Part IV discusses the Federal Circuit's endorsement of the Northern District's patent local rules, as well as the influence the rules have had on other district courts. This part also describes the adoption of patent local rules in other jurisdictions that are substantially similar to those of the Northern District. As discussed in Part V, the Northern District's Patent Local Rules have taken on national significance. Part V discusses whether the wide-spread use and benefit of the Northern District's Patent Local Rules demonstrate the need for formal adoption of Federal Rules of Patent Procedures for United States District Courts. Tables are provided at the end of this article which compare key provisions of the Northern District's original rules with patent local rules from five other district courts. II. THE SOCIAL AND LEGAL MANDATES THAT TRIGGERED THE ADOPTION OF PATENT LOCAL RULES IN THE NORTHERN DISTRICT OF CALIFORNIA A. Local Rules in the Northern District (1977-1990) As discussed in detail in Section III, the Northern District Patent Local Rules regulate the procedure to be followed in patent infringement cases from the time that a complaint is filed up to a claim construction hearing before the court. The Rules may be summarized as containing three elements: (1) cooperation--parties are required to confer to develop a case schedule and to make joint submissions; (2) disclosure--parties are required to make timely disclosures of their legal contentions and provide supporting documentation; and (3) judicial management--the assigned judge becomes involved in the case early and may actively supervise the process leading up to the claim construction hearing. (8) As the following discussion indicates, these three elements of the Patent Local Rules are a consequence of civil litigation reform developments within the Northern District itself, and nation-wide reform mandates which accompanied the development of the Patent Local Rules. Prior to the adoption of its innovative Patent Local Rules, the Northern District of California had earned a reputation among practitioners and scholars for innovative programs and procedures which were built on these same three elements. …