September 28, 2020

Volume X, Number 272

September 28, 2020

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New Local Patent Rules May Speed Up Patent Litigation In Massachusetts

Massachusetts is home to one of America’s chief innovation hubs. Yet, historically, the District of Massachusetts has seen relatively few patent cases when compared to other high-tech venues around the country. While there are several reasons that may explain this dearth of patent cases, factors many have pointed to include that a large number of patent cases filed in the district ended up taking 3 or more years to reach trial. Additionally, patent case schedules issued in the district were often criticized as slowly paced and lacking in certainty. And so plaintiffs looking for a quick and certain resolution tended to file their cases elsewhere.

Change appears to be here, however, as effective June 1, 2018, the District of Massachusetts amended its Local Rule 16.6 to provide for mandatory patent rules and scheduling. The prior local rules suggested a schedule for patent proceedings that parties could use in their scheduling orders, but left it up to the parties to agree to certain deadlines in the proposed order. The amended rules, however, require that the assigned judge set a trial date that is within 2 years of the initial scheduling conference (a court hearing that usually takes place within months of the complaint filing), and set certain other patent-specific deadlines on dates calculated from the initial scheduling conference date.

The new Massachusetts patent rules appear to be relatively plaintiff-friendly. While they require that the patent plaintiff provide its infringement contentions within 3 weeks after the initial scheduling conference, they also mandate that the patent defendant provide not only its patent invalidity contentions, but also its non-infringement contentions and a production of its technical documents and source code within a short 9 weeks after the initial scheduling conference. And these deadlines appear to be strict; parties may not amend these initial patent disclosures in the case without a court order and a showing of good cause. We provide some of the highlights of the new patent rules below.

Claim Construction Hearing and Trial Scheduling

The new rules require that trial be scheduled to be held within 2 years of the initial scheduling conference. This requirement is a significant change in a district that was notorious for much longer times to trial.

Although there is no set deadline by which the Court must make its claim construction ruling, under the rules the claim construction hearing must be held within 9 months of the initial scheduling conference. L.R. 16.6(c)(2). The exchange of the parties’ lists of claim terms for claim construction must be made no later than 12 weeks after the initial scheduling conference. L.R. 16.6(e)(1)(A).

Importantly, the parties may jointly present no more than 10 claim terms for construction, absent a showing of good cause. L.R. 16.6(e)(1)(C). Factors supporting good cause include the complexity of the patented technology, the number of asserted claims and patents, the lack of relation among the asserted patents, the number and complexity of invalidity defenses, and the number and diversity of accused products or methods.

Amendments to Preliminary Patent-Related Disclosures

Preliminary patent-related disclosures by the patentee – including infringement claim charts – must be made no later than 3 weeks after the initial scheduling conference. L.R. 16.6(d)(1). In turn, the accused infringer’s preliminary patent-related disclosures – including a production of documents and/or source code describing the accused products, non-infringement claim charts and invalidity contentions – must be made no later than 9 weeks after the initial scheduling conference. L.R. 16.6(d)(4).

These preliminary patent-related disclosures may be amended and supplemented only by leave of court upon a timely showing of good cause. L.R. 16.6(d)(5). Furthermore, according to the rules, “[t]he duty to supplement discovery responses does not excuse the need to obtain leave of court to amend disclosures.”

Fact and Expert Discovery

The close of fact discovery is set within 15 months of the initial scheduling conference, or 60 days after the entry of the Court’s ruling on claim construction, whichever is later. L.R. 16.6(c)(4). The close of expert discovery is set within 18 months of the initial scheduling conference, or 90 days after the close of fact discovery, whichever is later. L.R. 16.6(c)(5).

The amended L.R. 16.6(d)(6) now provides for a default protective order for “documents and information that either party believe are confidential,” including the preliminary patent-related disclosures, until a case-specific protective order is entered. Relatedly, L.R. 16.6(d)(7) permits any party to challenge the confidentiality designation of the required patent-related disclosures.

The following chart sets forth the schedule of events according to the amended L.R. 16.6 for patent proceedings:





Patentee’s preliminary patent-related disclosures


·       infringement claim charts
·       patent prosecution history
·       ownership evidence
·       real parties in interest documentation

3 weeks after initial scheduling conference (“ISC”)




Meet and confer concerning patentee’s preliminary patent-related disclosures

6 weeks after ISC


Accused infringer’s preliminary patent-related disclosures


·       technical documents
·       product samples
·       source code
·       non-infringement claim charts
·       invalidity claim charts on anticipation and obviousness, and disclosure of other grounds of invalidity, including production of evidence supporting invalidity defenses
·       real parties in interest documentation

9 weeks after ISC


Exchange of claim terms and proposed constructions

12 weeks after ISC


Meet and confer on exchanged claim terms

13 weeks after ISC


Joint statement of number of claims and terms to be construed, and joint claim construction chart

14 weeks after ISC


Opening claim construction briefs (parties file simultaneous briefs)

17 weeks after ISC


Claim construction expert depositions

20 weeks after ISC


Responsive claim construction briefs

23 weeks after ISC


Claim construction hearing

9 months after ISC


Disclosure of written opinion or oral advice of counsel

4 weeks after entry of the Court’s claim construction ruling


Fact discovery cut-off

15 months after ISC, or 60 days after entry of the Court’s claim construction ruling, whichever is later


Expert discovery cut-off

18 months after ISC, or 90 days after close of fact discovery, whichever is later



24 months after ISC

The new patent rules set forth a more predictable schedule that is expected to make patent plaintiffs more comfortable in Massachusetts. Moreover, requiring defendants to produce their invalidity contentions within months of the initial scheduling conference, and without the ability to amend such contentions absent a showing of good cause, places the burden on defendants to very quickly get up to speed on the case. Time will tell as we see how the new rules are implemented by the Court, but based on the face of the rules, it appears that Massachusetts is poised to become a faster and more plaintiff-friendly venue for patent litigation. A copy of the amended Local Rule 16.6 is here.

© 2020 Proskauer Rose LLP. National Law Review, Volume VIII, Number 178


About this Author

Safraz W Ishmael, Litigation Attorney, Proskauer Rose Law Firm
Senior Counsel

Safraz Ishmael is a senior counsel in the Litigation Department, and a member of the firm’s Patent Law Group. He focuses his practice on litigating technology-related disputes, with a particular emphasis on complex patent, trade secret, copyright, and trademark litigation. Safraz holds a graduate degree in physics, and undergraduate degrees in physics and computer science.

Kim Lee, Proskauer Law Firm, Intellectual Property Law Attorney

Kimberly Li is an associate in the Litigation Department and a member of the Patent Law Group. Her areas of practice are in litigation and patent law. 


  • University of Pennsylvania Law School, J.D., 2017
  • Massachusetts Institute of Technology, B.S., 2012

Kimberly is admitted to practice in Massachusetts.