New Rules In The Northern District Of California Aim To Encourage Patent Case Settlements.

 
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New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley's backyard. Lawyers litigating cases in the district after the January 17, 2017 change should be wary of the new requirements that set the Northern District of California apart. These changes fall into three main categories.

The first change affects the initial Case Management Conference under Federal Rules of Civil Procedure 26. In the Case Management Statement, parties now must provide non-binding, good-faith estimates of the damages expected in the case, as well as an explanation for the estimates. Patent L.R. 2-1(b)(5). If a party cannot provide this information they must explain why, state what information they would need to do so, and state when the party believes they would be in a position to provide the estimate and explanation.

Second, several changes affect which documents must now be disclosed no later than 14 days after the Case Management Conference. The Disclosure of Asserted Claims and Infringement Contentions must now identify the date of first infringement, the start of claimed damages and the end of claimed damages. Patent L.R. 3-1(h). Accompanying this Disclosure, the party claiming infringement must now also include: (1) any agreements transferring an interest in any of the asserted patents, (2) agreements the party contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation, (3) agreements that otherwise may be used to support the damages case, (4) if the party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents sufficient to show marking of such embodying accused instrumentalities and if it wants to preserve the right to recover lost profits based on such products, sales, revenues, costs and profits of such embodying accused instrumentalities, and (5) documents comprising a F/RAND commitment with respect to the asserted patents. Patent L.R. 3-2(f)-(j). In addition, the parties opposing the claim of patent infringement must now produce with their Invalidity Contentions: (1) agreements that are comparable to a license that would result from a hypothetical reasonable royalty negotiation, (2) documents sufficient to show the sales, revenue, cost, and profits for the accused instrumentalities identified pursuant to Patent L.R. 3-1(b) for any period of alleged infringement, and (3) all agreements that may be used to support...

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