Local Rule Changes USDC WDWA

As many of you already know, substantial changes to the local rules have been approved and will become effective January 1, 2009. In addition to these changes in local rules, which apply to everyone practicing in the WDWA, the district has adopted Supplemental Patent Rules that apply in all patent cases filed in this district. The purpose of this post is to highlight what I see as the most important changes to the local rules.

GR 2(g). Appearance and Withdrawal of Attorneys

This rule was changed in a number of ways. First, a party that wishes to proceed pro se must make that request by motion, and certify that copies of the motion were provided to all counsel. After the motion, the party must obtain an order of substitution, terminating the attorney and substituting that part pro se.

Second, this rule was changed to state that when an attorney ceases to act as such (either because of death, suspension, or some other reason), the party must find a new lawyer to enter an appearance, or it must make a motion to proceed pro se.

Third, this rule was changed to clarify where there is a change or addition to counsel within the same law firm, an order of substitution is not required. However, when there is a change in law office, such that it effectively terminates the representation of an entire law office, the procedures for changing counsel in GR 4(A) must be followed. **practice tip** withdrawing as attorney inside of 60 days before trial, especially without substitute counsel who can adequately be ready for trial, requires a good reason in this district, so be sure to docket this date.

Finally, this rule clarifies that businesses (except sole proprietors) must be represented by counsel.

CR 3. Commencement of Action

This rule was amended to require that in all actions where jurisdiction is based on 28 U.S.C. 1338 (patents, copyrights, and trademarks), a notice must be sent to the USPTO or copyright office, forms are available on the court's web site.

CR 5. Serving and Filing Pleadings and Other Papers

This is perhaps the most disruptive change to the local rules. Our old way of filing documents under seal was actually in violation of Ninth Circuit law. You may have found this out the hard way when your proposed protective order was rejected or your motion to seal certain documents was denied. This started happening in some cases about two years ago. The changes to how we seal documents are finally official, and here is a brief run down.

Rule 5(g) entitled "Sealing of Court Records" has been changed (under subdivision (2)) to include a "strong presumption of public access to the court's files." This presumption is apparently stronger for dispositive motions because overcoming it in this context requires a "compelling showing that the public's right to access is outweighed by the interests of the public and the parties in protecting the court's files from public view."

What qualifies as an adequate showing under Local Rule 5(g)(2) in order to seal documents necessary to support a dispositive motion is a question that can only be answered on a case by case basis. But generally, litigants will be successful in sealing documents that are clearly proprietary in nature or documents that could provide a competitive advantage to others if made public (think trade secrets, non-public financial information, etc.). Further, private information of an individual, like an address, name, and any other fact that might permit identity theft, is appropriately sealed.

With regard to non-dispositive motions, only a showing of "good cause" is required in order to seal documents. How this differs from the "compelling" showing necessary for dispositive motions is a bit of mystery--it is less, but I'm not sure exactly what would qualify for sealing here but not in the dispositive motion context.

Subdivision (3) of the rule has been amended to set forth specific requirements for obtaining an order sealing documents. The rule states here that only in "rare circumstances" will the court allow an entire memorandum to be filed under seal. The motion, stipulation, or declaration to seal certain documents should not "ordinarily" be filed under seal. If possible, parties "should" redact documents rather than file the entire document under seal. If the entire document is filed under seal, an explanation why redaction was not feasible should be included with the motion.

Subdivision (4) of the rule requires a clear and specific description of the categories of documents to be sealed, and an affidavit or declaration stating reasons for overcoming the strong presumption favoring public access.

Subdivision(5) of the rule states that a motion to seal may be filed before or contemporaneously with another filing that relies on the documents to be sealed, BUT if the court subsequently denies the motion to seal, the documents will be unsealed unless the party relying on the document, after notifying opposing counsel, files a notice to withdraw the documents within 2 days of the court's order denying the motion to seal. (**practice tip** it appears that only the party relying on a document may withdraw it from consideration and avoid public disclosure) Withdrawn documents may not be referred to in pleadings. Parties are encouraged to file motions to seal documents well in advance of any motion relying on them.

**Practice Tip** see changes to Rule 7 below regarding noting motions to seal under Rule 5(g).

(NEW RULE) CR 5.2. Redactions of Filings

Parties shall refrain from including any of the following in any public document, dates of birth, names of minor children, social security numbers, tax I.D. numbers, financial account numbers, passport numbers. In Social Security Appeals Cases, and Immigration Cases, the entire administrative record can be filed under seal.

CR 7. Pleadings allowed; Form and Scheduling of Motions

The most important change here involves motion to seal documents, you can't note these up as stipulated motions anymore, to be considered on the same day as they are filed. Rule 7(d)(2) adds motions to seal under Rule 5(g) to the list of motions that must be noted up for consideration no earlier than seven judicial days after filing.

As for service of motions, the rule has been clarified to say that the electronic filing procedures govern service, and there is not need to obtain agreement to serve documents electronically.

Under Subdivision (e)(3), filing multiple summary judgment motions "to avoid the page limits of this rule" is strongly discouraged and successive motions may be stricken.

**Practice Tip** Many intellectual property cases have facts calling for the filing of multiple summary judgment motions. In a patent case it is not uncommon to see separate motions concerning invalidity, infringement, and damages. Be sure to raise this in the Rule 26(f) conference and consider informing the Court that the parties expect to file separate motions for summary judgment on separate issues, and that the parties believe that this is a case where it makes sense to file multiple dispositive motions. Under the new Supplemental Patent Rules, there is provision in Patent Rule 110 calling for the discussion of any modification to local rule. This is a good place to discuss potentially filing multiple dispositive motions.

Subdivision (g) has been modified to require a "notice of intent to file surreply" as soon after receiving the reply brief. This new procedure eliminates the need to notify chambers and the opposing party of your intent to file a surreply under the rule. Surreplies are still limited to requests to strike material in (or attached to) the reply brief.

The rule was also clarified that Rule 7(g) does not limit a party's ability under the Federal Rules to file motions to strike, including motions under FRCP 12(f) to strike materials in the "pleadings" as defined by FRCP 7(a).

Motions for reconsideration under Rule 7(h) must be filed within ten judicial days after the order to which the motion relates "is filed." This cleared up some ambiguity in the old rule as to whether time to file a motion for reconsideration started to run from the day the order was served, signed, or filed.

CR 10. Form of Pleadings, Motions and other Filings

Citations to the court record must include a docket number.

"All exhibits must be marked to designate testimony or evidence referred to in the parties' filings" Acceptable forms include highlighting, bracketing, underlying, etc. Must be clear, text must remain legible.

If you change address (physical or email) you must notify the Clerk's office within 10 days of the change.

CR 55. Default; Default Judgment

The change to the rule is actually no change to what is already law for obtaining a default judgment, the Court (probably after having so many mistakes) simply thought it necessary to say that in order to obtain a default judgment, one must first move for entry of default under CR 55(a).

CR 72. Magistrate Judges; Pretrial Orders

Objections to a Magistrate's ruling on nondispositive matters must be noted for consideration on the day filed. No response is necessary unless requested.