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Dec
03

The Importance of the Rocket Docket Under the America Invents Act

The America Invents Act (AIA) has elevated the status of the United States District Court for the Eastern District of Virginia (Eastern District).  The Eastern District is a speedy no-nonsense federal court with the well-earned reputation as the “Rocket Docket.”  The United States Patent and Trademark Office (USPTO) is located in Alexandria, Virginia, a short distance from the Alexandria Division of the Eastern District.  In 1999, under the American Inventors Protection Act (AIPA), 35 USC §1(b) provided that the USPTO “shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law.”  Despite this close proximity to the Virginia federal court, prior to the AIA, certain actions were required to be filed in the U.S. District Court for the District of Columbia.  The AIA rectified that anomaly.

The Patent Statute, 35 USC §145, provides for a civil action to obtain a patent in the event that an applicant is dissatisfied with the decision of the Patent Trial and Appeal Board of the USPTO.  That provision formerly provided jurisdiction for such action in the D.C. federal court.  The AIA amended the provision to change the venue of such civil action to the Eastern District, consistent with the venue provision of 35 USC §1(b).

Similarly, the AIA, pursuant to 35 USC §146, provides for a civil action in case of a derivation proceeding in which any party is dissatisfied with the decision of the Patent Trial and Appeal Board.  Such civil action challenging the derivation decision is to be brought in the Eastern District, again in conformance with 35 USC §1(b).

Finally, the Patent Statute provides for the appeal of a patent term adjustment determination under 35 USC §154(b)(4)(A).  The AIA amendment changed the jurisdiction for such appeal from the D.C. federal court to the Eastern District, as contemplated under 35 USC §1(b).

In addition to the Eastern District having jurisdiction over the three appeals of actions before the USPTO, the AIA amended 35 USC §293 to confer jurisdiction of the Eastern District over proceedings affecting patent rights over nonresident patentees who have not designated a representative upon whom service of process or notice of proceedings may be served.  Thus, foreign owners of U.S. patents may unwittingly become subject to jurisdiction of the Rocket Docket in actions such as declaratory judgment actions.

The rapidity of proceedings before the Eastern District is largely the result of the Local Rules of that court.  Because the AIA has now conferred jurisdiction upon the Eastern District for the actions mentioned above, patent applicants and nonresident foreign patent owners need to be cognizant of those Local Rules.  Because the USPTO is located in Alexandria, pursuant to Local Rule 3(C), the Alexandria Division is the proper division for such actions in the Eastern District. The dilatory tactics frequently employed by litigants in other federal courts will not be countenanced by the Eastern District.  This is especially the case for discovery.  Local Rule 26(C) provides that objections must be filed within 15 days of service of discovery requests.  This permits expedited time for motions to compel to be briefed and argued under Local Rules 7(F) and 37 so that prompt responses close to the 30 day response times set forth in the Federal Rules of Civil Procedure can be obtained.

The Eastern District does not currently have patent-specific local rules, nothwithstanding the court’s elevated status in the patent realm.  Nonetheless, patentees and patent applicants need to be aware of the Eastern District and its importance under the AIA.

About the author

Michael White

Michael D. White, JD, is a registered patent attorney and has over 27 years of intellectual property experience with an emphasis in patent litigation, preparation, prosecution, client counseling and opinion work. In addition, he has engaged in trademark litigation and registration, as well as copyright registration. Prior to working in intellectual property law, Mike worked as a research engineer at Oak Ridge National Laboratory and began his legal career as an attorney involved in licensing and regulation of nuclear power plants. As a consequence, Mike’s entire professional career has been directed to complex technologies. Mike focuses his practice in patent preparation and prosecution, patent administrative proceedings, opinion work, client counseling and intellectual property litigation consultation. Prior to joining Symbus, Mike practiced intellectual property law at Blank Rome LLP, a large general practice firm, as well as his own solo practice.