Doom Hammer II – Those NDCAL Patent Rules.

Perhaps the CAFC read my 10/24 blawg post, which complained that they gave an unprecedential burial to their affirmance of a summary judgment based on the preclusive effect of the Local Patent Rules in the N.D. California.  To redress my complaint, another CAFC panel issued O2 Micro Int’l Ltd. V. Monolithic Power Sys., Inc., which gives precedential weight to a summary judgment ruling, which refused to consider “supplemental” expert opinions presented after the deadlines in those Local Rules.  It too holds that interpretation of Local Patent Rules is governed by Federal Circuit principles, not those of the regional 9th Circuit.

These cases may embolden district judges to be tough on late-offered expert opinions, be those titled “supplemental” or “revised” or “rebuttal” etc.  How often in patent cases does one side hand-deliver such a report to its opponent’s hotel ‘war-room’ just nights before the expert testifies?  One side always has the argument that the late report is barred by the Case Management Order or the rules, but how often is it wholly precluded?  The belief was that judges prefer to let it in, instead of barring it and seeing that become ground for a successful appeal.  This O2 Micro case, as well as the unreported SafeClick case, give firmer ground to believe that preclusion of late reports will be upheld by the CAFC.

I did feel some “objective” regret, viz. unrelated to these specific cases, because in both the patentee loses on infringement, and loses the argument that late-disclosed facts warranted revision to its infringement theories.  It is not uncommon for a patentee to be denied full access to the accused infringing product or process, or at least delayed until at or near the time for serving its infringement contentions and claim chart.  The accused will set up obstacles about confidentiality, may refuse to produce “all” models and limit production only to embodiments that the patentee can identify in its request for production.  The defendant often is not deposed until after that delayed production about the potentially infringing items.  Und so weiter.

The strategic concerns for the patentee are that committing to one theory of claims interpretation and infringement too soon is likely to provoke a later wholesale revision of those theories; waiting up to the CMO deadlines before committing leaves the patentee’s discovery unfocused and may enable the infringer to establish its “theme” of the case first; and further waiting, until after full disclosure about the accused infringement, may result in preclusion of a later-developed theory.

One thought is to ask that the CMO not preclude revision of the infringement contentions made “thirty days after the Markman” ruling, which should cause no prejudice, and even to ask for a right to amend “ten days after the opponent’s Rule 30(b)(6)” deponent testifies about the accused infringement.