District of Massachusetts Adds Certainty to Local Patent Rules

June 01, 2018

Effective June 1, the local rule for patent cases in the US District Court for the District of Massachusetts, Local Rule 16.6, has been amended. The amendments replace the former rule entirely and apply to all cases for which a scheduling order has not yet been issued as of the date of adoption. The amendments constitute a significant overhaul to the District of Massachusetts patent rules, first adopted nearly 10 years ago.

Attempting to respond to some practitioners’ complaints about more rigid rules, the prior version of Rule 16.6 offered flexibility and served more as a guideline for scheduling and procedures in patent infringement cases, i.e., suggesting items that the court and parties should consider and offering a scheduling template. This flexibility, however, resulted in lack of certainty, which also proved problematic at times. The new Local Rule 16.6, after vetting among a variety of shareholders in the Massachusetts patent bar, now aims to provide greater clarity and efficiency in patent infringement cases by laying out specific details regarding patent proceedings, including scheduling procedures, disclosures, claim construction proceedings, and reliance on advice of counsel.

Below are key changes in the new rule:

Scheduling Procedures – Under the new rule, the court must schedule a trial within 24 months of the initial scheduling conference and schedule a claim construction (or Markman) hearing within nine months of the same. The new rule also introduces deadlines for fact discovery, expert discovery, and protective orders.

Additional Automatic Disclosures – In addition to the automatic disclosures required by Rule 26.2(a), the new rule provides details on what should be included in each parties’ preliminary disclosures, (i.e., for the patentee: infringement charts, prosecution history, ownership evidence, and documents sufficient to identify all real parties in interest as to the patentee and asserted patent(s) and for the accused infringer: technical documents, samples of the accused products, source code, non-infringement claim charts, invalidity claim charts on anticipation and obviousness, other grounds for invalidity and evidence supporting the same, and documents sufficient to identify all real parties in interest as to the accused infringer) and provides concrete timeframes for production and meeting (i.e., patentee’s automatic disclosures within 21 days of the initial scheduling conference, a conference concerning patentee’s disclosures within 21 days of the disclosures, and accused infringer’s disclosures within 21 days after the conference concerning patentee’s disclosures).

Amendments to Disclosures and Protective Orders – The new rule states that any amendments to the preliminary disclosures may be made only by leave of court and with a timely showing of good cause. The rule also provides default language for a protective order.

Claim Construction Proceedings – The new rule lists necessary items in a claim construction proceeding, including a joint statement, opening briefs, expert testimony, responsive briefs, and limiting hearings to attorney argument only (absent court approval). For experts, parties must include an expert declaration with their opening brief of any expert they seek to rely on and allow deposition of the expert within 21 days of the responsive due date.

Reliance on counsel as a defense – The new rule also lays out requirements and timing that apply to any party relying on advice of counsel as part of a claim or defense, including producing documentation or oral evidence relating to the opinion, with consent to waive any privilege relating to the opinion, and an accompanying privilege log.

Taken as a whole, these changes should have the intended effect of shortening time to trial and providing greater certainty of the main steps along the way, making the District of Massachusetts an even more attractive venue for patent infringement cases.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the author Joshua M. Dalton in our Boston office, or any of the following lawyers from the Morgan Lewis IP disputes team:

Century City
Olga Berson, Ph.D.
Andrew V. Devkar
Seth M. Gerber

Michael J. Abernathy
Christopher J. Betti, Ph.D.
Jason C. White
Amanda S. Williamson

C. Erik Hawes
David J. Levy
Rick L. Rambo

David W. Marston Jr.

Eric Kraeutler

San Francisco
Carla B. Oakley

Silicon Valley
Dion M. Bregman
Andrew J. Gray IV
Michael J. Lyons
Yalei Sun

Washington, DC
Robert C. Bertin
Eric S. Namrow
Collin W. Park

John V. Gorman