Swallowing the Apple Whole: Improper Patent Use by Local Rule

During patent infringement litigation, the Federal Rules of Civil Procedure (“FRCP”) and the federal district court’s local rules govern the parties’ pretrial discovery and motion practice. The U.S. District Court for the Northern District of California has adopted the most comprehensive local rules to date covering pretrial procedures in the patent litigation context. The Northern District of California Patent Local Rules (“Local Rules”) may come to have a significant impact throughout the federal courts, as it appears that other jurisdictions and commentators are looking to the Local Rules for guidance. For instance, the American Bar Association Section of Intellectual Property Law (“ABA/IPL”) closely examined the Local Rules, found them to have considerable merit, and appeared to use an early version of the rules as a basis for the ABA/IPL 1999 proposed resolutions governing patent claim construction practice and procedure. Federal courts in several other districts have occasionally cited the Local Rules in their opinions and have been willing to use the Local Rules as a guide in developing their own patent infringement litigation procedures. In order to understand how the Local Rules affect the patent litigation process, a short review of patent law is necessary.