• Dallas Federal Court Authorizes Use of Patent Local Rules
  • April 17, 2007 | Author: John Martin Jackson
  • Law Firm: Jackson Walker L.L.P. - Dallas Office
  • On April 2, 2007, the U.S. District Court for the Northern District of Texas announced that the Dallas division will be using patent local rules to govern civil lawsuits “that allege infringement of a utility patent in a complaint, counterclaim, cross-claim, or third party claim.”  These rules will apply to all patent cases in the Dallas division “[u]nless otherwise directed by the presiding judge in an individual case.”  (See Miscellaneous Order No. 62, dated April 2, 2007.)


    The Dallas Patent Rules, which were created by the Northern District of Texas Patent Rules Task Force, were patterned after the Patent Rules used with great success in the Eastern District of Texas.  Many attorneys who litigate patent cases prefer to file those cases in jurisdictions that utilize patent rules because the rules provide a framework that allows patent cases to proceed with minimal intervention from the Court.  Indeed, the popularity of the Eastern District’s patent rules with the attorneys in the Northern District led some judges in the Dallas division to use the Eastern District’s Patent Rules or some variation of those rules to govern patent cases filed in their courts for the past year or so. 


    Although the Northern District’s patent rules are similar to the patent rules used in the Eastern District of Texas, there are some notable differences.  First, under Patent Rule 2-2, the default Protective Order set forth in Appendix A to the Patent Rules will be entered to ensure that the parties do not wait to exchange documents until the details of a stipulated protective order are resolved.  This provision was based on a similar default order used by the U.S. District Court for the Western District of Pennsylvania.  Notably, however, under the Northern District’s default Protective Order, documents designated “Confidential Attorney Eyes Only” may not be shown to in house counsel. 


    The Northern District Patent Rules also differ from those of the Eastern District in that, under the Northern District’s Patent Rule 2-5, “discovery is not limited to the preliminary infringement contentions.”  Instead, the general principles governing discovery under the Federal Rules of Civil Procedure will be applied.  While the application of Patent Rule 2-5 will arguably allow plaintiffs in patent cases to obtain broader discovery in the Northern District than they could in the Eastern District, it also means that plaintiffs will be forced to provide more detailed infringement contentions rather than providing very broad initial contentions and then attempting to amend those contentions after obtaining additional discovery later in the case. 


    Due to the entry of Miscellaneous Order No. 62, there is now a second option for attorneys who want to file patent cases in Texas, but prefer to file lawsuits in jurisdictions with patent rules.  In the coming months, it will be interesting to see whether the adoption of patent rules results in more patent cases being filed in the Northern District and whether any judges in the Dallas division decide to opt out of the Patent Rules.