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Local tech companies could benefit from new patent-specific rules

Local technology companies no longer will have to travel far to get their infringement cases resolved, possibly representing a substantial savings in time and expense.

The U.S. District Court of Southern California recently adopted patent-specific local rules, making the San Diego court one of only a handful of jurisdictions catering to patent cases.

The region's abundance of biotechnology and wireless companies begged for the local branch of the federal bench to take a closer look at how it handled patent disputes.

"Since our community has the potential for a great deal of patent litigation and, as more (companies) come into the community, our district needs to be equipped to handle these unique cases in a consistent and efficient manner," said U.S. District Judge Dana Sabraw, who led the committee that developed the local rules.

"The reality is, without local rules, discovery can become unwieldy, very drawn out and expensive."

One of the biggest features of the court's new guidelines is a strict time schedule for trying cases.

The claims' construction hearing has to occur within nine months of the defendants' first appearance. That, in turn, means a trial will likely occur within 12 to 18 months.

"It forces litigants to do discovery in claims construction very quickly," Sabraw said. "I always say justice delayed is justice denied. These rules are wonderful."

Since a long discovery process can become quite costly for companies, the expedited process can mean savings for the companies involved.

There also is a standard worksheet for the claim construction proceedings within San Diego's local patent rules.

The rules also include a joint-claims construction worksheet. Each party has a column in which to list the complete language of the disputed claims. This allows the opposing party to write what it thinks the language of the invention, or the claim, means with supporting evidence from the prosecution hearing.

On the worksheet, the parties also identify the witnesses they'll be using.

"There's a uniform approach, so nobody has to reinvent the wheel," said U.S. District Judge Marilyn Huff, a former chief judge for the Southern District.

"We borrowed heavily from courts that already have a substantial patent practice."

The patent rules contain a standardized protective order as well, which will prevent the secrets of the inventions from being revealed.

San Diego's local patent bar encouraged the federal judges during the development of the rules and even helped craft the guidelines.

David Doyle, a prominent intellectual property attorney in the San Diego office of Morrison & Foerster, is happy to see the local bench's interest in patent law.

"Given the transformation of the economy in San Diego over the last 25 years and the emergence of both the large biotech sector and telecommunications sector, each of which depend heavily on patent protection, there's a need to have the district court understand patent cases and want patent cases important to our economy."

Doyle said the timing of the new rules coincides with the appointment of five new judges two years ago.

Their addition helped federal court lighten its criminal load, enabling the bench to concentrate more on civil cases, including those involving patents.

Most of the new judges, including Sabraw, expressed an interest in trying patent cases, sharing the same thoughts as current judges like Huff and chief judge Irma Gonzalez.

"The patent cases often are very challenging intellectually," Sabraw said. "They can be very difficult as far as the technology.

"The issues that arise are very intellectually challenging and stimulating," Sabraw said, "and oftentimes the law firms involved are the very best, so the level of oral and written advocacy is at height of the profession. These are interesting and significant cases."

Doyle said San Diego companies and their attorneys can gain a home-field advantage by having their patent cases tried locally. If a case goes to a jury, a pool will include people who may know about the biotech company on trial.

And, he added, it never hurts for a judge to know about your client.

"It's always better to operate in a place where you're known then not known," Doyle said. "Second, it's advantageous just from a convenience point of view. It's always easier to litigate in your home community because all documents are here, and you don't have to move around. It's cheaper and much more convenient."

Huff said she likes the rules because they "take a complex area of law and try to simplify it for everybody to the best extent you can. We're really trying to make it a fair playing field for everybody."

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