Northern California Offers a Friendly Venue for Patent Defenders

When possible, patent defendants should consider transferring their cases to the US District Court for the Northern District of California because the court’s expertise, rules, and procedures offer a balanced approach.

The Northern District of California saw patent filings soar in the aftermath of TC Heartland v. Kraft Foods Grp. Brands, the Supreme Court’s 2017 decision altering patent venues.

Since then, patent filings have plummeted, from a high of 330 in 2018 to just 113 in 2024. So far this year, only 24 patent cases have been filed in California’s Northern District through March 2025. That’s down 20% from the same period last year.

The drop in patent filings may be due in part to forum shopping elsewhere, but there may be advantages to having the San Francisco-based court hear your patent dispute.

• The bench is stacked with former Big Law and government litigators who are familiar with complex litigation.
• Judges there view early dispositive motion practice favorably by frequently granting Alice motions that challenge the validity of a patent claim. The court also may grant motions to stay a case pending inter partes review before the US Patent and Trademark Office.
• The local rules require patent damages contentions, which provide an early case value assessment and help frame discovery disputes.

Experienced Bench

Seven new judges have been appointed to the Northern District of California bench since 2022. Several new and existing judges hail from Big Law firms and have personal experience arguing from the podium, hashing out discovery disputes in complex litigations for large companies.

That experience could enable the court to understand and resolve disputes over discovery efficiently because experienced litigators readily understand the key issues and endeavor to limit otherwise unwieldy discovery accordingly.

Motions to Stay

Research shows that Northern District of California judges tend to view early dispositive motions, such as Alice motions, favorably. In an Alice motion, the accused infringer moves to dismiss the complaint for failure to state a claim because the patent is invalid for being directed to subject matter that’s ineligible for patenting.

That is a key defense in most software cases, but several courts often deny such motions as premature because the patent claims haven’t been construed yet. But in 2024, the Northern District of California courts granted Alice motions more than 70% of the time. And in 2023, all Alice motions decided that year were granted. So far this year, the court has an 80% grant rate.

Courts have broad discretion to grant Alice motions without conducting a claim construction hearing, according to the US Court of Appeals for the Federal Circuit in its UTTO Inc. v. Metrotech Corp ruling last year. While remanding the case to district court for further claim construction proceedings, the UTTO panel concluded that there “is no procedural error in the mere fact that a court has construed claims without conducting a separate Markman claim-construction set of proceedings.”

The Northern District of California not only grants motions to stay pending inter partes review often, but it also grants them before institution. Some district courts refuse to grant a stay motion before the Patent Trial and Appeals Board institutes review, viewing the idea that a stay will simplify the case as overly speculative—so the court case proceeds.

In contrast, Northern District of California judges tend to grant pre-institution stays, especially when inter partes review petitions are filed early in the case. In 2024, judges there granted 80% of stay motions, and 14 of the 20 granted stay motions were pre-institution stays. This year, all stay motions have been granted to date.

Local Rules

The Northern District of California’s local rules also may benefit patent defendants. Under Patent Local Rules 3-8 through 3-10, patentees must serve damages contentions within 50 days of receiving the defendant’s invalidity contentions.

The damages contentions must contain each category of damages the plaintiff seeks, and a good-faith explanation of the theory for each. The defendant must respond to the contentions within 30 days and, within 60 days of the responsive contentions being served, the parties must meet to disclose their good-faith estimate of damages.

Like infringement and invalidity contentions, the parties are bound to their damages contentions and can only amend them with leave from the court. These rules force parties to make early assessments regarding the case’s value, which informs defendants of their potential exposure and helps frame disputes over discovery.

For at least these reasons, when sued elsewhere—such as Texas, Illinois, or Delaware—patent defendants may consider transferring their cases to California’s Northern District as part of their overall legal strategy.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Bijal V. Vakil is a partner at Skadden in Palo Alto, Calif. focused on intellectual property disputes, complex technology transactions, and cross-border deals.

Christopher B. McKinley is an associate at Skadden in Palo Alto, Calif. focused on all aspects of patent law.

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