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IP: Considerations When Filing Patent Infringement Claims

What are today's considerations in deciding where to file a patent infringement lawsuit? Obviously, one has to first establish personal jurisdiction. Assuming that can be established anywhere across the country, a number of factors exist in an effort to pick the best venue and obtain the best result. One considers conveniences for the parties, the jury pools, the judges and, in my opinion, one of the most important being the various courts themselves and the systems in which they operate.

In looking at the courts and court systems, one of the first statistics commonly looked at is the time to trial. Do you prefer a "rocket docket," or one that will allow the case to go slowly while hanging over the head of an accused infringer? PricewaterhouseCoopers puts out a Patent Litigation Study every year and, although its 2010 study is not scheduled to come out for several weeks, the 2009 study shows the top five median time-to-trial districts from 1995 to 2008 being (1) the Eastern District of Virginia (median time of 0.88 years), (2) the Western District of Wisconsin (1.01 years), (3) the Southern District of California (1.24 years), (4) the Middle District of Florida (1.71 years) and (5) the District of Maryland (1.75 years). Rounding out the top ten districts include (6) the Eastern District of Texas, (7) the District of Kansas, (8) the District of Delaware, (9) the Southern District of Texas, and (10) the Central District of California.

A significant factor to consider with regard to cost effectiveness and planning in a patent infringement case is whether the particular district has local patent rules and the content of those rules. While the N.D.California and the E.D.Texas were two of the early districts to have these rules, many districts across the country now have them. Such rules can greatly facilitate the handling of a case and provide built-in discovery, schedules and procedures eliminating much controversy between the parties. In several districts, for example, discovery starts automatically based upon the pleadings without waiting for a case management hearing to be set by the court. Some districts also have a set Protective Order for the protection of confidential information that automatically takes effect, thereby further allowing discovery to proceed expeditiously and without controversy over what provisions should be included. Most of the local rules also provide for early and detailed document and written discovery as well as early identification of infringement and invalidity contentions.

Another consideration involves looking at which courts have a lot of patent filings and thus a greater familiarity with the issues involved in patent cases. Under a study recently published by the Intellectual Property Owners Association, the 10 U.S. District Courts having the most patent suits filed in 2009 are (1) the Central District of California, (2) the Eastern District of Texas, (3) the District of Delaware, (4) the Northern District of California, (5) the District of New Jersey, (6) the Northern District of Illinois, (7) the Southern District of New York, (8) the Southern District of California, (9) the District of Massachusetts, and (10) the Eastern District of Virginia. According to a study by LegalMetrics, the districts with the largest number of patent case filings in the first six months of 2010 were (1) the Eastern District of Texas, (2) the Northern District of Illinois, (3) the District of Delaware, (4) the Central District of California and (5) the District of New Jersey.

Certainly another significant statistic is the overall success ranking of the various districts. According to the PricewaterhouseCoopers 2009 study, the top five districts by overall success were (1) the Middle District of Florida, (2) the Eastern District of Texas, (3) the Eastern District of Virginia, (4) the Central District of California, and (5) the District of Delaware. The worst five districts according to this study, starting with the lowest success ranking, were (1) the District of Connecticut, (2) the Eastern District of Michigan, (3) the Southern District of Florida, (4) the Southern District of Texas, and (5) the Eastern District of Pennsylvania. And, the top five districts with the highest median damages awarded were (1) the District of Colorado, (2) the Eastern District of Virginia, (3) the Eastern District of Texas, (4) the District of New Jersey, and (5) the District of Delaware.

Wrapping all of the above together, the preferred court rankings from 1995 to 2008, according to the PricewaterhouseCoopers study, are (1) the Eastern District of Virginia, (2) the Eastern District of Texas, (3) the District of Delaware, (4) the Western District of Wisconsin, and (5) the Central District of California.

As for the future, I see the preference for the Eastern District of Texas declining (the length of time until discovery even begins and until trial has been increasing significantly, and the Appellate Courts have been cracking down on the district's propensity to avoid transfers out of the district), and I see the preference for the Northern District of Illinois growing (although I do confess to a bias for the latter).

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