Make Sure You Follow the Patent Local Rules!

by Audrey A. Millemann
The IP Law Blog

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.

Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow the courts that have a lot of patent infringement cases to more efficiently manage those cases. Patent local rules are also helpful to the parties and their counsel, as they provide a standard structure and some certainty to the litigation process.

Patent local rules usually include due dates for the plaintiff to disclose its infringement contentions and the defendant to disclose its invalidity contentions; whether a Markman hearing needs to be held, and if so, what terms need to be construed, the due date for the parties to propose claim terms and to exchange claim constructions, and the date of the Markman hearing; and whether the court or the parties will have technical experts testifying at the Markman hearing. The Northern District of California has long had patent local rules that address all of these issues and more. In most courts, the patent local rules provide that the parties may modify the rules with approval of the district court judge.

If a party fails to follow the patent local rules, the rules may provide that the district court may sanction the party, including by striking the contentions, or, in more serious cases, striking claims. That is exactly what happened in Xiaohua Huang v. MediaTek USA, Inc., 2020 U.S. App. LEXIS 17482. It’s hard to believe that such a case would make it all the way to the Federal Circuit, but it did.

In MediaTek, a patent owner in pro per filed a suit in the Northern District of California for patent infringement against defendant MediaTek. The patents-in-suit were two patents for memory technology used in semiconductor chips. The patent owner served infringement contentions before the case management conference was held. At the case management conference, MediaTek told the court that the contentions were premature and improper. The court informed the patent owner that he would have to follow the patent local rules or risk the case being dismissed.

Twice more, the patent owner served the same infringement contentions on the defendant, despite MediaTek offering to allow the patent owner time to amend. After the third set of deficient infringement contentions, MediaTek moved to strike the contentions as not compliant with the patent local rules and to dismiss the action with prejudice.

The district court granted MediaTek’s motion, but provided the patent owner leave to amend the infringement contentions, and again warned the patent owner that non-complaint contentions would likely result in a dismissal of the case with prejudice. The patent owner served a fourth set of infringement contentions, containing the same defects as the prior sets. The district court again found the contentions insufficient, and, this time, dismissed the case with prejudice.

On appeal, the Federal Circuit Court of Appeals affirmed the district court’s decision. The court explained that the patent owner’s infringement contentions were defective because thr claim chart did not tie the claim limitations to the features of the accused products, but instead tied the claim limitations to the drawings in the patent itself. The patent owner also failed to set forth the contentions with the required specification. Thus, the contentions were not proper and did not comply with the patent local rules.

The court explained that it “gives broad deference” to the district court’s patent local rules whose purpose was to help the district court manage its cases. The court held that the district court had not abused its discretion in striking the infringement contentions after the patent owner had repeatedly failed to correct the deficiencies in the contentions. The appellate court further held that the district court had not abused its discretion in dismissing the case.