A number of federal district courts have specialized rules to move patent cases quickly. Those efforts must strike a balance between the need for speed and the importance of allowing parties fully and fairly to litigate their claims. That tension shows up in the battle over when such courts should permit parties to amend their infringement contentions in their pleadings. Lawyers on both sides of the docket should be prepared to argue underlying policy considerations when a dispute arises over amending infringement claims.

Federal Rule of Civil Procedure 8(a) requires that pleadings put the adverse party on fair notice of a claim. Only a handful of types of claims require particularized pleadings; Rule 9 identifies such claims, which do not include patent infringement suits.

Federal courts with expertise in patent cases, such as the Eastern District of Texas and the Northern District of California, have supplemented this notice-pleading standard with a regime of disclosures in an effort to move patent cases quickly and efficiently. U.S. District Judge Ron Clark of the Eastern District of Texas, relying on earlier cases, reiterated in 2007's Computer Acceleration Corp. v. Microsoft Corp. that local patent rules imposing early disclosure obligations exist to further the goal of full, timely discovery and to provide all parties with adequate notice and information to litigate their cases.

Courts that have adopted rules imposing early disclosure of infringement and invalidity contentions have become magnets for patent litigation. An example of this is the Eastern District of Texas, which has been a significant venue for patent cases since the early 1990s but which did not become a leading national forum for patent suits until the district adopted a comprehensive set of patent rules in the late 1990s.

A key ingredient of the local patent rules in Texas and California is a requirement that, early in the case, a plaintiff must serve on each party a comprehensive set of disclosures setting out the details of the plaintiff's position on infringement. Among other things, under Northern District of California and Eastern District of Texas Patent Local Rule 3-1(the two courts share the same local rule numbers in this section of their local rules) these disclosures must contain: 1. each claim of each patent at issue that each opposing party allegedly is infringing and, separately for each claim, each accused product or other instrumentality of each opposing party of which the party is aware; 2. a chart identifying specifically where each element of each asserted claim is found within each product; and 3. whether each element of each asserted claim is alleged to be literally infringed or infringed under the doctrine of equivalents.

A patent is literally infringed if the accused product is exactly what the claims describe. Even if a claim is not literally infringed, courts still can find infringement if the accused product and the patented product are substantially equivalent to each other.Patent Rule 3-2 in the Northern District of California and the Eastern District of Texas requires detailed document disclosures, ensuring that a blueprint for the case is in place from the start. This is far from the simple notice pleading requirement of Federal Rule of Civil Procedure Rule 8. These requirements set the stage for the rocket docket — a court with an accelerated timetable and strict deadlines for patent cases, resulting in speedy resolution.

Requiring early, detailed disclosures prevents a plaintiff from filing a case and simply conducting discovery to determine facts upon which to establish infringement. The level of detail required can be a challenge for plaintiffs lawyers when they cannot obtain the accused infringing product or important components of the product easily or inexpensively. Also, defendants rarely want to produce confidential information and documents until the plaintiff has identified the scope of the battlefield by serving detailed infringement contentions.

Good Cause

Another aspect of the patent fast track is requiring defendants to serve invalidity contentions — claims the patent is not valid — early in the case. This requires front-loading significant prior art searches. Generally, prior art constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claim of originality. An inventor cannot claim as his or her invention things that already are publicly known. Arguments over the sufficiency of the infringement claims and invalidity contentions often continue throughout the case. Defendants seek to limit the case to only the contentions and products identified in the initial contentions, while plaintiffs seek to expand the scope to include claims and products uncovered throughout the discovery period.

This is the natural tension between the owner of intellectual property and those excluded by a patent. A patent holder wants the court to construe the patent as broadly as possible — but not to reach into the prior art and thus risk being invalidated. Conversely, two legitimate defensive strategies are to try to construe the patent so narrowly that the accused product does not infringe the patent or so broadly that the patent reaches prior art and is invalid. The court must balance these interests, guided by the actual language and file history of the patent, because the law seeks to promote invention and ingenuity in our economy.

Plaintiffs must show good cause before courts with specialized patent rules allow them to amend or supplement their infringement contentions. Exactly what constitutes good cause has been fluid in the Eastern District of Texas and the Northern District of California as courts struggle to strike the proper balance between the interest of plaintiffs and defendants in patent cases. In 2006, Judge Maxine M. Chesney of the Northern District of California wrote in Nova Measuring Instruments Ltd. v. Nanometrics Inc. , "The patent local rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they are disclosed." However, as the Federal U.S. Circuit Court of Appeals indicated in 2006's O2 Micro Intern Ltd. v. Monolithic Power Systems Inc., refusing to allow any amendment to the contentions based on new information developed in discovery could be contrary to the spirit, if not the letter, of the federal rules.

Local rules must harmonize with and not run afoul of the federal rules. They will do so if they require good cause for an amendment and require a party to demonstrate diligence. The due-diligence inquiry is fact-specific. It focuses on the plaintiff's actions to obtain the information in time to include it in the initial contentions and what the plaintiff did to timely amend its infringement contentions once it uncovered the information. This is often the focus of the dispute regarding a plaintiff's attempt to amend the infringement contentions.

The infringement contentions significantly impact the pretrial schedule, scope of discovery, claim construction and scope of expert inquiry. If the infringement contentions change, litigation costs and delays increase. Courts cannot maintain a fast track to trial unless they hold parties to their infringement and invalidity contentions, striking a balance through the good-cause standard between policy considerations of reducing expense and delay and the notice-pleading requirement of Federal Rule of Civil Procedure Rule 8.