On June 7, 2011, the Administrative Office of the U.S. Courts announced that the Southern District of New York would be among the courts selected to participate in a 10-year Patent Pilot Program. Now that the Pilot Program has been in effect for over a year, it seems appropriate to take stock and assess whether the goals of the Program are being realized and whether the Pilot Program is affecting the nature of patent litigation in the S.D.N.Y.1

While it is still too soon to tell conclusively, the answer to both question appears to be yes. Patent cases filed in the Southern District of New York are slowly being concentrated among the judges who volunteered to participate in the Pilot Program. Participating judges seem open to using many of the case management tools and procedural devices that are commonplace in the most active patent districts, such as the District of Delaware and the Northern District of California. Those developments, coupled with recent changes in the patent law governing venue and joinder, suggest that the S.D.N.Y. may see a rise in the number of filings as patentees find it a speedier and more predictable forum.

Patent Pilot Program Generally

Since Nov. 26, 2011, patent cases filed in the S.D.N.Y. have been initially assigned in the same manner as other civil cases—by random assignment to a district judge, regardless of whether that judge has been designated as a patent pilot participant. Non-participating judges then have 30 days to decide whether to accept the case; if the non-participating judge declines, the case is randomly assigned to one of the 10 judges participating in the Pilot Program. The participating judges in the S.D.N.Y. are U.S. District Judges P. Kevin Castel, Denise L. Cote, Katherine B. Forrest, Thomas P. Griesa, John G. Koeltl, Colleen McMahon, Jed S. Rakoff, Shira A. Scheindlin, Laura Taylor Swain and Robert W. Sweet.2

While Congress’s principal goal in establishing the Pilot Program was to enhance expertise in patent cases among district court judges, the implementing statute also called for the Administrative Office of the U.S. Courts and the Federal Judicial Center to analyze and report certain statistics (e.g., time to disposition and reversal rate) for cases decided by judges participating in the Pilot Program as compared to those decided by non-participating judges.3 In theory, as the experience of participating judges increases, it should take less time to construe claims and to understand and resolve infringement and validity issues, improving the time-to-resolution. Concentrating patent cases among a handful of judges should also lead to greater predictability and litigation efficiencies, as litigants are able to identify the predispositions of participating judges and avoid incurring the costs associated with unnecessary motion practice.4

Patent Pilot Program in Practice

The reassignment of patent cases to participating judges is critical to the success of the Pilot Program, given its objective of enhancing patent expertise among those judges. The early data suggests, however, that nonparticipating judges continue to be interested in hearing patent cases. Consequently, reassignment under the Pilot Program has not been as routine as one might expect.

At the time of writing this article, 143 patent cases had been filed in the S.D.N.Y. since the Pilot Program commenced in November 2011. Only 14 of those cases were transferred under the Pilot Program from a nonparticipating judge to a participating judge. In 68 cases, the non-participating judge to whom the case was initially assigned took the case rather than declining it.5 That result is somewhat surprising because it means that nonparticipating judges are continuing to hear nearly 50 percent of patent cases recently filed in the S.D.N.Y. Even accounting for “related” cases, which a nonparticipating judge might feel obligated to accept notwithstanding the option of reassignment, approximately 31 percent of newly-filed patent cases were retained by nonparticipating judges.

Although the Pilot Program has only resulted in 14 reassignments—less than 10 percent of all patent filings—there is good reason to believe that the concentration of patent cases among participating judges will increase over time. As the number of pending patent cases on nonparticipating judges’ dockets decreases, so too will the number of newly-filed cases that those judges feel obliged to accept as related. Until then, the reassignment of 10 percent of patent cases filed in the S.D.N.Y. at least means that participating judges will be gaining some additional expertise in patent law and practice, as Congress intended.

Adoption of Patent Rules and Practices

Unlike many active patent districts, the S.D.N.Y. has resisted the national trend toward local rules specifically tailored to patent cases.6 In other districts, local patent rules require the parties to exchange infringement and invalidity contentions shortly after the action is commenced.7 They may also limit the extent to which the parties’ contentions can be modified without demonstrating good cause to the court.8 Some districts have even limited the number of patent claim terms the court will construe after a Markman hearing.9 Statistical and anecdotal evidence suggest that local patent rules increase predictability and efficiency by, for example, standardizing the procedures for claim construction, providing for more predictable case schedules that help in-house attorneys and outside counsel develop and manage their budgets, and regulating expert discovery and the exchange of infringement and invalidity contentions, which avoids gamesmanship and motion practice on all of those issues.10

The lack of district-wide patent local rules has not deterred participating judges from incorporating similar provisions into their case management and scheduling orders. Some judges have adopted their own individual practices with respect to patent cases;11 others tend to expressly incorporate by reference the patent local rules of other districts;12 others still have been adopting certain patent-specific provisions on a case-by-case basis.13 What is clear, however, is that several common features of the patent local rules in other districts, such as a preset schedule for claim construction proceedings and early exchange of infringement and invalidity contentions, are increasingly permeating patent practice in the S.D.N.Y.

Conclusion

Patent cases have historically represented less than two percent of all civil cases filed in the S.D.N.Y. each year.14 By way of comparison, 15 percent of all civil cases filed each year in the Eastern District of Texas are patent cases.15 That disparity is likely to decrease as recent changes in the law of venue and joinder have made it more challenging for patentees to shop for their forum and bring suit in historically “patent-friendly” forums, such as the Eastern District of Texas. In recent years, the Federal Circuit has heightened its scrutiny of district court decisions denying motions to transfer venue, finding in several cases an abuse of discretion and granting writs of mandamus directing transfer to the requested forum.16 The effect of the Federal Circuit’s recent transfer decisions is enhanced by the America Invents Act, which restricts the ability of a plaintiff to join multiple defendants in the same suit “solely on allegations that they have infringed a patent or patents in suit.” 35 U.S.C. §299. That provision will often require patentees to file separate suits against each defendant, which renders it more likely that those defendants will be able to transfer their individual cases to alternative venues, such as the S.D.N.Y.

By several metrics, such as patentee win rate, the S.D.N.Y. should already be a favored forum for litigating patent cases.17 As patent rules proliferate in the S.D.N.Y. and the Pilot Program continues to result in the transfer of patent cases to a core group of highly experienced judges, the resulting improvements in predictability, efficiency, and time to disposition should improve the likelihood that the S.D.N.Y. is seen as a favored forum for bringing patent litigation.

Robert Gunther is a partner, and Omar Khan is a senior associate, in the litigation/controversy department of Wilmer Cutler Pickering Hale and Dorr in New York. Associate Aurelia Hepburn-Briscoe assisted in the preparation of this article.

Endnotes:

1. See Marla R. Butler & Mathew J. Yang, “Patent Pilot Program, Ready for Takeoff In New York,” NYLJ, Dec. 12, 2011.

2. See Patent Cases Pilot Program, Pub. L. No. 111-349, 124 Stat. 3674; District Courts Selected for Patent Pilot Program, Admin. Office of the U.S. Courts (June 7, 2011), http://www.uscourts.gov/News/TheThirdBranch/11-06-01/District_Courts_Selected_for_Patent_Pilot_Program.aspx.

3. The first such report is due midway through the Program in 2016.

4. See generally Butler & Yang, supra note 1.

5. The remaining 75 cases were randomly assigned to a participating judge in the first instance.

6. After this article was submitted for publication, the S.D.N.Y. issued a draft set of local patent rules for public comment, with the comment period to close on January 11. Those patent local rules, once approved by the Second Circuit Judicial Council, will further promote consistency and certainty in how patent cases are managed in the S.D.N.Y.

7. See N.D. Cal. Patent L.R. 3-1; E.D. Tex. P.R. 3-1.

8. See N.D. Cal. Patent L.R. 3-6; E.D. Tex. P.R. 3-6.

9. See N.D. Ill. L.P.R. §4.1(b); N.D. Cal. Patent L.R. 4-1(b).

10. See Arthur Gollwitzer III, “Local Patent Rules—Certainty and Efficiency or a Crazy Quilt of Substantive Law?,” 13 ENGAGE 94, 94 (2012).

11. See, e.g., Attachment B, Individual Rules of Practice in Civil Cases, Judge Katherine B. Forrest (Nov. 13, 2012).

12. See, e.g., Pre-trial Scheduling Order at 6, Williamson v. Verizon, No. 58:11-cv-04948 (S.D.N.Y. Nov. 3, 2011); Pre-trial Scheduling Order at 6, Worldwide Home Prods. v. Time, No. 24:11-cv-03633 (S.D.N.Y. Sept. 9, 2011).

13. See, e.g., Scheduling Order at 4-7, Virtual Solutions v. Microsoft, No. 25:12-cv-01118 (S.D.N.Y. May 14, 2012); Order at 1, Commercial Recovery v. Bilateral Credit, No. 21:12-cv-05287 (S.D.N.Y. Sept 25, 2012); Civil Case Management Plan at 1-4, Tomita Techs. USA v. Nintendo, No. 20:11-cv-04256 (S.D.N.Y. Aug. 16, 2011).

14. To determine this trend, the authors searched publicly available court records in PACER, applying subject matter and date restrictions as appropriate.

15. See id. Given the absolute number of patent cases filed in the S.D.N.Y. annually, which is more a measure of the size of the district and the overall level of activity in the district, the S.D.N.Y. places fifth among the most active patent districts in the country. See Mark A. Lemley, “Where to File Your Patent Case,” 38 AIPLA Q.J. 1, 6 (2010).

16. See, e.g., In re Biosearch Techs., 452 Fed. Appx. 986 (Fed. Cir. 2011); In re Link_A_Media Devices, 662 F.3d 1221 (Fed. Cir. 2011).

17. Lemley, supra note 14, at 8-9.