(b) Should the case be consolidated with any other case ... Joint Preliminary Status Report.pdf · Although the parties request a bifurcated trial, the parties agree that discovery

IN THE UNITED STATES COURT OF FEDERAL CLAIMS

CANVS CORPORATION, ))

Plaintiff, ))

v. ) No. 10-540C)

THE UNITED STATES, ) Judge Emily C. Hewitt)

Defendant. )

JOINT PRELIMINARY STATUS REPORT

Pursuant to Appendix A of the Rules of the United States Court of Federal Claims

("RCFC"), plaintiff CANVS Corporation and defendant the United States hereby submit this

Joint Preliminary Status Report.

An early meeting of counsel was held on February 23, 2011, followed by subsequent

conversations, and the parties arrived at the following positions under RCFC Appendix A ¶ 4:

(a) Does the court have jurisdiction over the action?

Yes. The parties agree that this court has jurisdiction pursuant to 28 U.S.C. § 1498(a) as

to the alleged manufacture or use by or for the United States of any inventions claimed in U.S.

Patent No. 6,911,652 ("the '652 patent"), entitled "Low Light Imaging Device."

(b) Should the case be consolidated with any other case and, if so, why?

No. The parties are not aware of any case that should be consolidated with this case.

(c) Should trial of liability and damages be bifurcated and, if so, why?

The parties agree that the liability and damages phases of this lawsuit should be

bifurcated for trial. An independent consideration of liability would increase judicial economy,

because the damages issue may not require adjudication depending on the outcome of the

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Case 1:10-cv-00540-ECH Document 11 Filed 03/04/11 Page 1 of 8

liability phase. Additionally, bifurcation would expedite the action and serve the convenience of

the parties, potentially saving both the time and expense required to fully develop a damages

position for trial. Although the parties request a bifurcated trial, the parties agree that discovery

prior to the liability trial may include requests related to damages discovery.

(d) Should further proceedings in the case be deferred pending consideration ofanother case before this court or any other tribunal and, if so, why?

No. The parties are not aware of any related cases in this court or any other tribunal.

(e) In cases other than tax refund actions, will a remand or suspension be soughtand, if so, why and for how long?

No. The parties do not expect to seek a remand or suspension of this matter.

(f) Will additional parties be joined? If so, the parties shall provide a statementdescribing such parties, their relationship to the case, the efforts to effect joinder,and the schedule proposed to effect joinder.

No. At present, the parties do not anticipate joining any additional parties; however,

plaintiff anticipates taking discovery from nonparties that could seek to intervene as the facts

surrounding the case are developed.

(g) Does either party intend to file a motion pursuant to RCFC 12(b), 12(c), or 56and, if so, what is the schedule for the intended filing?

Based on the current pleadings, neither party intends to file a motion pursuant to RCFC

12(b) or 12(c). While no decision has been made, each party is considering filing at least one

motion pursuant to RCFC 56 after the court construes the claims of the patent-in-suit as a matter

of law. The parties suggest that the court should schedule a status conference after the issuance

of any claim construction order to discuss each party's intentions related to dispositive motions

and further proceedings.

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(h) What are the relevant factual and legal issues?

The parties believe that the factual and legal issues will be further clarified after the

Court construes the claims of the patent-in-suit as a matter of law. Presently, the relevant issues

include:

1. Whether or not each asserted claim of the '652 patent is invalid under 35

U.S.C. §§ 102, 103, 112 and/or 132.

2. Whether the accused night vision systems used or manufactured by or for

defendant are covered by or infringe any asserted claim of the '652 patent

under 28 U.S.C. § 1498(a).

3. Whether any use by defendant of plaintiff's claimed invention was

licensed by plaintiff, impliedly or otherwise.

4. Whether defendant has a license and/or other right to use inventions

claimed in the '652 patent based on plaintiff's contracts with defendant

and/or defendant's support of plaintiff's development activities.

5. Assuming arguendo that defendant is found to be liable pursuant to 28

U.S.C. § 1498(a), the quantum of reasonable and entire compensation due.

The parties agree that the quantum of reasonable and entire compensation

will be based upon a determination of a reasonable royalty.

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(i) What is the likelihood of settlement? Is alternative dispute resolutioncontemplated?

The parties discussed settlement in general terms at the early meeting of counsel, and

have agreed to continue to discuss settlement during discovery as a clearer picture of the facts

emerges. However, settlement is not likely until after the Court construes the claims of the

patent-in-suit as a matter of law. The parties do not consider alternative dispute resolution to be

useful at this time due to the numerous unresolved legal and factual issues, including the legal

construction of the patent claims and the validity of the patent-in-suit. The parties agree to

revisit the possibility of settlement and alternative dispute resolution following claim

construction.

(j) Do the parties anticipate proceeding to trial? Does either party, or do the partiesjointly, request expedited trial scheduling and, if so, why? A request forexpedited trial scheduling is generally appropriate when the parties anticipatethat discovery, if any, can be completed within a 90-day period, the case may betried within 3 days, no dispositive motion is anticipated, and a bench ruling issought. The requested place of trial shall be stated. Before such a request ismade, the parties shall confer specifically on this subject.

The parties expect this case to proceed until at least after the time that the Court

construes the claims of the patent-in-suit as a matter of law Further, the parties presently

anticipate proceeding to trial as to all issues with the proviso that certain discrete issues could

possibly be determined by summary judgment. The parties are not requesting an expedited trial

schedule. The parties request that the trial be held at the U.S. Court of Federal Claims

Courthouse in Washington, D.C.

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(k) Are there special issues regarding electronic case management needs?

No. The parties do not expect any special issues to arise regarding electronic case

management.

(l) Is there other information of which the court should be aware at this time?

No. The parties are not aware of any other information the court should be apprised of.

Pursuant to RCFC Appendix A ¶ 5, the parties propose the following plan for discovery

and patent claim construction. This plan incorporates elements of Judge Damich's pro forma

Special Procedures Order for Cases Under 28 U.S.C. § 1498(a) ("Damich Order," attached as

Exhibit A) and the Local Rules of Practice for Patent Cases before the United States District

Court for the Northern District of California ("Patent L.R.," attached as Exhibit B).

Date Event Reference

3/18/11 Initial Disclosures RCFC 26(a)(1)

3/21/11 Written discovery begins

4/1/11 Plaintiff's Initial Disclosure of Asserted Claims Damich Order ¶¶ 8(a)-8(c)

5/2/11 Defendant's Initial Disclosure of Prior Art Damich Order ¶¶ 8(d)-8(f)

6/1/11 Notices of depositions may be served

9/9/11 Plaintiff's Revised Disclosure of Asserted Claims Damich Order ¶¶ 8(a)-8(c)

10/14/11 Defendant's Revised Disclosure of Prior Art Damich Order ¶¶ 8(d)-8(f)

11/1/11 Joint Exchange of Proposed Terms for Construction Patent L.R. 4-1(a)

11/1/11 Identification of Claim Construction experts

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Date Event Reference

11/15/11 Parties meet and confer on Proposed Terms forConstruction

Patent L.R. 4-1(b)

1/9/12 Plaintiff's Claim Chart, Proposed ClaimConstruction Statement, and any expert reports insupport of plaintiff's proposed claim constructions

Damich Order ¶¶ 9(a) &11(a)

2/27/12 Defendant's Claim Chart, Proposed ClaimConstruction Statement, and any expert reports insupport of defendant's proposed claim constructions

Damich Order ¶¶ 9(b) &11(b)

3/9/12 Parties meet and confer on Joint Claim ConstructionStatement

Damich Order ¶ 12(a)

3/16/12 Filing of Joint Claim Construction Statement Damich Order ¶ 12(b)

3/30/12 Completion of Claim Construction Discovery,including depositions of experts

Patent L.R. 4-4

4/27/12 Plaintiff's Opening Brief for Claim ConstructionHearing

Damich Order ¶ 12(d)(i)

5/25/12 Defendant's Responsive Brief for ClaimConstruction Hearing

Damich Order ¶ 12(d)(ii)

6/8/12 Plaintiff's Reply Brief for Claim ConstructionHearing

Damich Order ¶12(d)(iii)

July 2012 Claim Construction Hearing

The parties suggest a status conference for determining further proceedings, including

any dispositive motions, after the Court issues its claim construction ruling.

Defendant agrees to this schedule based on plaintiff's representations that it is primarily

interested in discovering copies of the contract files for the accused devices in PDF format.

Correspondingly, plaintiff intends to take nonparty discovery of technical information from the

makers of the accused devices because defendant has not purchased technical drawing packages

for those devices. While defendant acknowledges that plaintiff will be seeking additional

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information beyond these contract files and as a result of its review of these contract files,

plaintiff understands that an extension of the discovery period prior to the claim construction

proceedings will be required if plaintiff later serves omnibus requests for e-mails and/or other

archived electronic information.

As the Court is aware, funding for the Federal Government could expire soon after the

filing of this paper, resulting in a government shutdown. In the event of a shutdown, defendant

prays leave to seek extensions of time for any affected deadlines commensurate with the length

of any such shutdown.

Respectfully submitted,

JOSEPH J. ZITOZITO tlp1250 Connecticut Avenue, Suite 200Washington, D.C. 20036Tel: (202) 466-3500E-mail: [email protected]

Date: 3/4/2011 Counsel for Plaintiff

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TONY WESTAssistant Attorney General

JOHN FARGODirector

s/John A. Hudalla Of Counsel: JOHN A. HUDALLALINDSAY K. EASTMAN AttorneyAttorney Commercial Litigation BranchU.S. Department of Justice Civil Division

U.S. Department of JusticeWashington, D.C. 20530Phone: (202) 307-0334E-mail: [email protected]

March 4, 2011 Attorneys for Defendant

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In the United States Court of Federal Claims

No. XX-XXX

(Filed: XXXXXXXX)

************************************

*

XXXXXXXXXXXXXXXXX, *

*

*

Plaintiff, *

*

v. *

*

THE UNITED STATES, *

*

Defendant. *

*

************************************

SPECIAL PROCEDURES ORDER FOR CASES UNDER 28 U.S.C. ' 1498(a)

(Revised January 6, 2011)

Pursuant to Rules 1, 16, and 83(b), and Appendix A & 1-2, of the Rules of the United States

Court of Federal Claims (RCFC), in the interest of promoting inexpensive, efficient, and just

litigation, it is ORDERED that each party shall comply with the following procedures:

1. Initial Matters.

a. Pretrial Rules. Counsel shall familiarize themselves with the rules governing

pretrial proceedings, particularly RCFC 5-7, 11, 16, 26, 77.2, and 83, and Appendix

A & 3, in order to ensure full and timely compliance with applicable deadlines,

filing procedures, and other requirements. Note that the RCFC ,1 though

generally similar, are not identical to the Federal Rules of Civil Procedure.

1 The Rules can be found in the Appendix to Title 28 of United States Code and on the

court=s web site.

Case 1:10-cv-00540-ECH Document 11-1 Filed 03/04/11 Page 1 of 17

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b. Communications with the Court. Unless invited or otherwise ordered by the court,

communications with these chambers shall be by formal motion, whether filed in

writing in the Clerk=s Office or moved in open court. In particular, letters will not

be accepted in lieu of motions without prior authorization. Notwithstanding this

provision, counsel may, at any time, jointly request a conference with the Judge to

discuss a dispute or other pending matter. Scheduling questions should be directed

to Judge Damich's Judicial Assistant, at (202) 357-6483. Questions regarding

CFC filing requirements and other standard court procedures should be directed to

the Clerk=s Office at (202) 357-6400.

c. Legibility. All papers filed with the court shall be legible. This requirement is

especially important when photocopies of documents with small type are

submitted.

d. Courtesy Copies, Time-Sensitive Electronic Filings.

i. Pursuant to RCFC Appendix E, paragraph 10, a courtesy copy in paper

form shall be submitted to chambers whenever a document has been filed

electronically that, when printed, would exceed 50 pages, including exhibits

or attachments. Submissions of a courtesy copy to chambers does not

constitute official filing with the Clerk=s Office under the Rules of the

Court.

ii. Counsel shall call chambers promptly to advise of electronic filings on

time-sensitive matters (e.g., motions for enlargement of time at or near the

date a filing is otherwise due).

iii. When communication with chambers is otherwise necessary,

1. Facsimile transmissions should be sent to:

Judge Edward J. Damich

Tel. No.: (202) 357-6483

Fax No.: (202) 357-6490

2. E-mail transmissions should be sent, with attachments (if any) in

Adobe Acrobat (PDF) (preferred) or Microsoft Word, to:

[email protected]

e. Court Closings. The court sometimes closes because of inclement weather in

Washington, D.C. Counsel may contact the Clerk=s Office at (202) 357-6407 or

view the web site of the court at www.uscfc.uscourts.gov to inquire about such

closings.

2. Professional Conduct. At all times during this proceeding, counsel=s conduct should be


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characterized by personal courtesy and professional integrity in the fullest sense of those

terms. In fulfilling their duty to represent their clients vigorously as lawyers, counsel

should be mindful of their obligations to the administration of justice. Conduct that may

be characterized as uncivil, abrasive, abusive, hostile, or obstructive impedes the

fundamental goal of resolving disputes rationally, peacefully, and efficiently. Such

conduct will not be tolerated and may result in sanctions being imposed. See, e.g., RCFC

37.

3. Motions - generally.

a. Page Limits. Briefs and memoranda in support of motions are limited in length as

set out in RCFC 5.2(b). Leave of court is necessary to exceed these page limits.

b. Courtesy Copies. When a courtesy copy is submitted pursuant to General Order

42A, the document may be reproduced using both sides of the paper. If submitted

in this way, however, the pages must be bound so that photocopying both sides of

the page is possible.

c. Sample orders. For proposed orders of two pages or longer, such as protective

orders, the parties should submit a draft order as an appendix to the motion. A

courtesy copy of the draft order should also be emailed directly to chambers as an

attached document.

d. Reconsideration of Orders or Rulings. The 30-day time limit specified in RCFC

59(b) shall also apply to motions for reconsideration of orders or other court

rulings.

4. Motions for Enlargements of Time and Stays of Proceedings. The court intends to follow

precisely any schedule established in the case and to apply strictly the rules regarding

requests for enlargements of time and stays of proceedings.

a. Motions for Enlargements.

i. Timing. Motions for enlargement must be filed as early as possible, see

RCFC 6(b), generally at least five (5) business days in advance.

ii. Requirements.

1. Each request for an enlargement must specify the grounds and shall

indicate whether the motion is opposed.

2. The burden of establishing grounds for an enlargement is on the

movant and motions are not granted automatically.


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3. In the case of requests filed out of time, the allegation of excusable

neglect must be substantiated. See RCFC 6(b).

4. After the second extension of time, counsel may be required to

obtain the signature of the party (in the government=s case, a

representative of the agency) on motions for any further extensions

of time.

b. Motions to Stay Proceedings.

i. Length of Time. Stays of proceedings for purposes of facilitating

settlement negotiations shall not generally be granted beyond 90 days.

ii. Motions for Continuations of Stays. If a party moves for continuation of a

stay beyond 90 days, that party shall denote, with specificity (e.g., dates,

places, participants) the steps taken in pursuit of settlement during the time

of the previous stay. Such motions shall also address the steps the parties

expect to take in continued pursuit of settlement. The parties bear the

burden of persuading the court that the case should not proceed thereafter

concurrently with settlement negotiations.

5. Hearings and Status Conferences.

a. In General. At each hearing or conference, including the preliminary status

conference held shortly after filing the joint preliminary status report (JPSR)

required by RCFC Appendix A and one held after filing the post-discovery joint

status report (JSR), the court explores the strengths and weaknesses of each party's

arguments and may discuss the possibility of utilizing dispositive motions,

alternative dispute resolution (ADR), discovery limitations, bifurcated

proceedings, or other means for reducing the cost and delay of discovery and trial.

See RCFC 16(c).

b. Time. The time for all hearings and status conferences is the time in Washington,

D.C., unless otherwise expressly stated.

c. Participants. A representative of the party (in the case of the government, agency

counsel or staff) must participate if counsel is not prepared to discuss in depth the

factual and legal history of the claim(s), and technical matters requiring specialized

expertise. A representative with the power to bind the Plaintiff shall be present at

all settlement conferences. A representative of the agency with the power to

recommend actions for the Defendant shall be present at all settlement conferences.

d. Scope of Conference. At each conference, counsel are expected to be

substantially prepared, e.g.,


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i. ready to agree to a schedule for future proceedings;

ii. fully familiar with the facts, procedural history, and legal arguments,

including the merits of any pending motion; and

iii. ready to discuss settlement prospects, ways to minimize unnecessary

discovery, and appropriate ADR techniques.

e. Attendance. Counsel are expected to appear at status conferences by telephone

unless instructed otherwise. Whenever counsel is expected to appear by telephone,

counsel shall e-mail chambers, at [email protected] , no later

than one business day before the conference, to provide the phone number where he

or she can be reached and to inform the court whether any others will be

participating for that party (and, if so, their names, phone numbers, and

affiliations). Status conferences and hearings shall be held on the record, unless

the court directs otherwise. The record shall generally be made via

audio-recording, unless either party requests that a reporter be present. Such a

request must be made at least five business days in advance of the conference.

f. Scheduling. Hearings and conferences will be scheduled by Judge Damich=s law

clerk, who will contact counsel to make appropriate arrangements. A court order

will be issued as to each such hearing or conference.

6. Supplemental Information in the JPSR. The purpose of the parties' JPSR, required by

RCFC Appendix A & 4 to be filed no later than 49 days after filing the answer or reply to a

counterclaim, is to inform the court of relevant matters so that a plan and schedule for the

litigation can be established at the preliminary status conference. Therefore, the JPSR

shall provide the following information, which is in addition to or different from that

required by the referenced paragraphs and subparagraphs of RCFC Appendix A: 2

a. Paragraph 4(a). Provide the jurisdictional statute(s) upon which plaintiff relies,

and plaintiff's detailed justification for invoking the CFC=s limited statutory

jurisdiction.

b. Paragraph 4(d). State whether there is any basis for transferring or remanding the

case to another tribunal, and whether the parties are aware of any related cases in

this or any other tribunal. See RCFC 40.2.

c. Paragraph 4(h). Describe the material issues of fact and law that are in dispute, as

well as those that are not. This statement should not be elaborate or technical, but

2 The JPSR must also be supplemented as the parties become aware of additional

information.


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should be sufficient, at a minimum, to explain the basis for each counsel's

certification under RCFC 11 with respect to the factual allegations and legal

theories upon which any claim or defense is based, and to give the court adequate

opportunity to prepare for, and participate meaningfully in, the preliminary status

conference (e.g., assisting the parties in focusing and narrowing issues and

disputes). Mere incorporation by reference or reiteration of the answer or the

complaint normally will not satisfy this requirement.

d. Paragraph 4(i). The parties shall state whether any method of ADR, including

those described below,3 is viable. If none, they shall explain why, with

particularity.

i. U.S. Court of Federal Claims' ADR Program. RCFC Appendix H & 3(a)

states that ADR is a voluntary procedure. When both parties agree to one

of these methods they may request the court to refer their dispute to the

CFC=s ADR Administrator.

1. Settlement Judge. In this flexible process, which can be used at

any time during the proceedings, the ADR Administrator assigns the

case to a CFC judge who will act as a neutral advisor. After a

detailed discussion of the strengths and weaknesses of each party=s

case, the settlement judge will provide a judicial assessment of the

dispute and the parties= settlement positions. If a resolution is not

reached, the case is returned to the presiding trial judge for further

action.

2. Mini-trial. In this procedure, which ordinarily takes place before

discovery, the parties present an abbreviated version of their case to

a judge other than the presiding judge. Useful in cases involving

factual disputes, rather than legal ones, this process should not run

longer than 3 months, with limited voluntary discovery. The

hearing, which should last no more than a day, is informal and the

parties are not bound by the rules of evidence or procedure. At its

conclusion, the parties meet to discuss settlement. The mini-trial

judge may play an active role or advise the parties on the merits, at

the parties' option.

3 This list is by no means exhaustive; the parties are encouraged to suggest other

alternative dispute resolution or trial simplification measures. The court recognizes that the

government will not agree to certain binding methods of dispute resolution. However, it also

notes the government's expressed support of ADR measures. See Executive Order 12,988 (Feb.

5, 1996); Department of Justice Policy on the Use of Alternative Dispute Resolution, 61 Fed. Reg.

36,895 (July 15, 1996).


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3. Third-Party Neutrals. A third-party neutral, selected by the parties,

will meet with the parties and attempt to facilitate dispute

resolution.

ii. Other Means of ADR

1. Bifurcated Trial. A bifurcated case is tried in two parts. For

example, a first trial may be held on the issue(s) of liability. A

second trial, on damages, may be unnecessary if no liability is

found. See RCFC 42(c).

2. Limited Discovery. The parties may agree to limit discovery to

certain issues or to conduct discovery in a particular chronological

order, while suspending other discovery, e.g., when dispositive

motions covering fewer than all the issues in the case are

anticipated.

3. Court-Appointed Experts/Neutral Fact-Finders. This method is

useful, e.g., in patent cases when complex and technical factual

disputes are presented. A neutral third-party fact-finder, chosen by

the court and/or agreed upon by the parties based on his or her

substantive or technical expertise, examines the disputed facts and

submits detailed findings to the court.

4. Arbitration. This is an informal adversarial process, similar to the

mini-trial, in which the case is heard and decided by one or more

private attorneys or retired judges.

5. Mediation. A flexible, non-adversarial process that may include

"shuttle diplomacy," mediation employs a neutral third party agreed

upon by the parties to help the disputants fashion a mutually

agreeable compromise.

6. Paper Trial. Trial time and expense are saved by allowing the

parties to submit written evidence, e.g., affidavits and transcripts of

depositions in which witnesses are cross-examined on their

affidavits on disputed issues of fact.

e. Paragraph 4(l). Provide a joint representation, citing the date of the meeting, that

counsel have held the early meeting of counsel as required in RCFC Appendix A &

3. In addition, jointly stipulate to the date of the initial disclosures set forth in

RCFC 26(a)(1) or state the grounds for any party=s objections that such disclosures

are not yet appropriate.


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f. Paragraph 4(j) and Paragraph 5. Joint Proposed Scheduling Plan. In lieu of the

requirements of && 4(j) and 5 of RCFC Appendix A, the parties shall set forth a

proposed scheduling plan with exact dates where a date is required. The parties= joint proposed scheduling plan shall include:

i. The requested place of any trial (and of hearings in general); the anticipated

duration of trial;4 and the earliest date by which the case can reasonably be

expected to be ready for trial;

ii. The dates for joinder of additional parties;

iii. Whether either of the parties anticipates filing any dispositive motions. If

so, the following details should be provided:

1. A date by which such motion will be filed;

2. The legal theory in support of such motion;

3. Whether the issue(s) on which a motion for summary judgment will

be based should be resolved before or after a hearing on claim

construction. For example, this court prefers to have indefiniteness

resolved before claim construction; and

4. If the motion is for summary judgment, whether either party desires

that expert discovery precede the motion; if so, the grounds therefor;

iv. Whether the case should be conducted in phases. For example, it may be

appropriate to delay the damages phase until after liability has been

established. It may also be appropriate to divide the liability stage into

discrete steps, such as construing the claims under Markman v. Westview

Instruments, 517 U.S. 370 (1996), to determine whether the patent is valid,5

and then determining whether there was infringement.

4 Counsel should represent whether the time provided is for the entire case or for each

side=s case. Further, for planning purposes only, counsel should know that Judge Damich

usually conducts trials from approximately 10:00 a.m. to approximately 4:00 p.m. with

appropriate breaks during the day. Of course, the daily trial schedule is subject to change.

5 The requirements for a claim construction hearing are set forth in Paragraph 12 of this

order.


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1. If the parties propose to proceed in phases, they should set forth a

schedule relative to each such phase;

v. A date by which fact discovery will be completed. Any motion to compel,

after the appropriate good faith effort to resolve the dispute, should be filed

on or before this date. Accordingly, counsel must plan to serve discovery

requests sufficiently before this date to permit the other side to object. In

addition, advise whether the case will likely involve the discovery of

classified material;

vi. Pursuant to RCFC 26(a)(2), the dates by which each party shall disclose its

expert witnesses= identities and reports (including rebuttal reports), and the

dates by which each party shall make its expert witnesses available for

deposition, giving consideration to whether serial or simultaneous

disclosure is appropriate in the case;

vii. The date by which expert discovery will be completed;

viii. Whether the presumptive limits of ten depositions and 25 interrogatories

per party should apply in this case and, if not, the reasons for varying these

limits; and

ix. Any other matters pertinent to the completion of discovery in this case or

that counsel deem appropriate for inclusion in the joint scheduling plan.

g. Paragraph 7. Provide three alternate dates (and time of day) that are mutually

agreeable to counsel for a status conference with the court. These dates should be

at least 14 days, but not more than 21 days, after the filing of the JPSR. After

receiving the JPSR, Judge Damich=s law clerk will contact the parties to schedule

the preliminary status conference, after which a corresponding order will issue.

h. Separate Allegations Permitted. Separate views and proposals on any of the points

covered by the JPSR may be set forth on any point on which the parties cannot

agree. Reasonable compromise, however, is strongly encouraged.

7. Appendix to Joint Preliminary Status Report.

The parties shall provide, as an appendix to the JPSR, copies of material portions of any

documents not previously filed that are relevant to jurisdiction or to disputed facts

alleged with particularity in the pleadings, e.g.:

i. The patents at issue, relevant contractual documents, correspondence

between the parties, and damage computations;

ii. If the patents at issue are available electronically (through LEXIS, Westlaw,


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or the Internet), the Plaintiff shall provide a citation to the patent; and

iii. records of prior judicial or agency proceedings relative to the claims in this

case.6

b. The parties shall include as exhibits relevant portions of statutes, regulations, and

subregulatory guidance that may be at issue, in effect at the relevant time, if these

are not frequently cited to in the United States Court of Federal Claims,7 or are

unpublished, outdated, or otherwise not readily available.

8. Discovery: Initial Disclosures.

a. Initial Disclosure of Asserted Claims. No later than 15 days after the answer to a

complaint for patent infringement, the Plaintiff must serve on all parties an "Initial

Disclosure of Asserted Claims" in conformity with Paragraph 8.b and must produce

or make available for inspection and copying the documents described in Paragraph

8.d.

b. Content of Initial Disclosure of Asserted Claims. Separately, for each opposing

party, the AInitial Disclosure of Asserted Claims," shall contain the following

information:

i. Each claim of each patent in suit that is allegedly infringed by each

opposing party, including for each claim the applicable statutory

subsections of 35 U.S.C. 271 asserted;

ii. Separately for each allegedly infringed claim, each accused apparatus,

product, device, process, method, act or other instrumentality ("accused

instrumentality") of each opposing party of which the party is aware. This

identification shall be as specific as possible. Each product, device and

apparatus must be identified by name or model number, if known. Each

method or process must be identified by name, if known, or by any product,

device or apparatus which, when used, results in the practice of the claimed

method or process;

6 The relevance of an exhibit should be clear from the statement of issues required by

Paragraph 6.c. of this Order. That statement should provide page references to the relevant

exhibits.

7 See, e.g., United States Court of Federal Claims: A Deskbook for Practitioners App. I

(1998).


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iii. The date of conception and the date of reduction to practice of each asserted

claim.

c. Document Production Accompanying Initial Disclosure of Asserted Claims. At the

time of filing the "Initial Disclosure of Asserted Claims," the Plaintiff must produce

to each opposing party or make available for inspection and copying all documents

relating to:

i. Any action that could be interpreted as either an offer to sell or public use of

each claimed invention prior to the date of application for the patent;

ii. Research, design, and development of each claimed invention; and

iii. All documents evidencing ownership of the patent rights by the party

asserting patent infringement.

d. Initial Disclosure of Prior Art. No later than 15 days after service upon it of an

"Initial Disclosure Of Asserted Claims," each opposing party shall serve on all

parties an "Initial Disclosure Of Prior Art" which conforms to Paragraph 8.e. and

must produce or make available for inspection and copying the documents

described in Paragraph 8.f.

e. Content of Initial Disclosure of Prior Art. The Initial Disclosure of Prior Art shall

contain the following information:

i. Each item of prior art that the party contends anticipates the claim or

renders it obvious;

ii. For each item of prior art, whether it anticipates the claim or renders it

obvious;

iii. If obviousness is alleged, an explanation of why the prior art renders the

asserted claim obvious, including an identification of any combinations of

prior art rendering the claim obvious; and

iv. The identification of prior art must be as specific as possible. Each prior art

patent shall be identified by its number, country of origin, and date of issue.

Each prior art publication shall be identified by its title, date of publication

and, where feasible, its author and publisher. Evidence of public use or

sale shall be presented by specifying the item offered for sale or publicly

used, the date the offer or use took place, and the identity of the persons or

entities that made the use, made the offer, and received the offer.


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f. Document Production Accompanying Initial Disclosure of Prior Art. At the time of

filing the "Disclosure of Prior Art," each opposing party must produce or make

available for inspection and copying any source code, specifications, schematics,

flow charts, artwork, formulas, or other documentation on any accused

instrumentality.

9. Discovery: Claim Chart.

a. Service and Content of Claim Chart. No later than 70 days after service upon it of

an "Initial Disclosure Of Prior Art," under Paragraph 8.d., any party claiming patent

infringement shall serve upon all parties a "Claim Chart." Separately, with respect

to each opposing party against whom a claim of patent infringement is made, the

Claim Chart must contain the following information:

i. Each claim of any patent in suit which the party alleges was infringed;

ii. The identity of each apparatus, product, device, process, method, act or

other instrumentality of each opposing party which allegedly infringes each

claim;

iii. Whether such infringement is claimed to be literal or under the doctrine of

equivalents;

iv. Where each element of each infringed claim is found within each apparatus,

product, device, process, method, act or other instrumentality; and

v. If a party claiming patent infringement wishes to preserve the right to rely

on its own apparatus, product, device, process, method, act or other

instrumentality as evidence of commercial success, the party must identify,

separately for each claim, each such apparatus, product, device, process,

method, act or other instrumentality that incorporates or reflects that

particular claim.

b. Response Chart. No later than 60 days after service upon it of a AClaim Chart,@ each party opposing a claim of patent infringement shall serve on all parties a

"Response Chart," which must contain the following information:

i. The identity of each item of prior art that anticipates the claim or renders it

obvious. Each prior art patent shall be identified by its number, country of

origin, and date of issue. Each prior art publication must be identified by its

title, date of publication, and, where feasible, author and publisher.

Evidence of public use or sale shall be presented by specifying the item

offered for sale or publicly used, the date the offer or use took place, the

identity of the persons or entities which made the use, made the offer, and


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received the offer;

ii. Whether it anticipates the claim or renders it obvious. If a combination of

prior art references makes a claim obvious, that combination must be

identified;

iii. Where, specifically, within each item of prior art each element of the claim

is found; and

iv. All grounds of invalidity other than anticipation or obviousness of any of

the claims listed in Claimant's Claim Chart. This identification must be as

specific as possible. For example, if a best mode defense is raised, the

adverse party must set forth with particularity what constitutes the

inventor's best mode, specifically citing information or materials obtained

in discovery to the extent feasible. If an enablement defense is raised, the

adverse party must set forth with particularity what is lacking in the

specification to enable one skilled in the art to make or use the invention.

c. Amendment to Claim Chart. Amendment of a Claim Chart or a Response Chart

may be made only by order of the Court upon a timely showing of good cause.

10. Discovery in General.

a. Dispositive motions and discovery. The filing of a dispositive motion shall not

suspend the conduct of discovery, unless the court so orders.

b. Methods of Discovery. The use of requests for admission, stipulations, and

witness interviews (by telephone, if appropriate) in lieu of formal depositions is

encouraged, as is the use of videotaped evidence and telephone conferencing.

c. Discovery Disputes.

i. Before petitioning the court to resolve a discovery dispute or to impose

sanctions for discovery abuses, counsel must attempt to resolve the problem

with opposing counsel. Failure to consult with opposing counsel before

filing a motion may result in the imposition of costs.

ii. Discovery motions shall be accompanied by a certification that the moving

party has made a reasonable and good faith effort to reach agreement with

opposing counsel on the disputed matter.

d. Abuse of the Discovery Process. Counsel are warned not to abuse the discovery

process. If either counsel makes excessive demands or provides insufficient

responses, appropriate sanctions (including, but not limited to, more stringent


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controls over discovery, restrictions on the use of evidence, and imposition of

attorneys' fees and costs) may be ordered. See RCFC 37(b).

e. Close of Discovery. Within 15 days after the close of discovery, the parties shall

file a JSR containing, inter alia, a proposed schedule for further proceedings. A

post-discovery conference, as mandated by RCFC Appendix A & 11, will be

scheduled shortly thereafter.

11. Claim Construction Proceedings.

a. Proposed Claim Construction Statement. No later than 70 days after service of the

"Initial Disclosure of Prior Art," pursuant to Paragraph 8.d., each party claiming

patent infringement must serve on all parties a "Proposed Claim Construction

Statement," which shall contain the following information for each claim in issue,

see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005):

i. Preferred interpretation of any claim term or phrase and identification of

support for that interpretation in the claims themselves. The support may

include the context in which a term is used, maintaining consistent usage

among claims, and distinguishing between dependent and independent

claims;

ii. All references from the specification that support, describe, or explain each

element of the claim. Such references may include a definition of the

claim term, or intentional disclaimer or disavowal of claim scope by the

patentee;

iii. All material in the prosecution history that describes or explains each

element of the claim;

iv. Any extrinsic evidence that supports the proposed construction of the claim,

including, but not limited to, dictionaries, treatises, expert testimony,

inventor testimony, and prior art, as permitted by law; and

v. When the party claiming patent infringement intends to offer expert

testimony during a claim construction hearing, that party must disclose the

expert as set forth in Paragraph 6.f.vi, supra, no later than when the party

serves the AProposed Claim Construction Statement.@ In addition, the

court expects that any depositions will take place during the time allotted

for the preparation of the AResponse to Proposed Claim Construction

Statement,@ described in subparagraph 11.b. below.

b. Response to Proposed Claim Construction Statement. No later than 60 days after

service upon it of a Proposed Claim Construction Statement, each opposing party


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must serve on each party a "Response to Proposed Claim Construction Statement."

The response shall contain the following information, see Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005):

i. Any interpretation of a claim term or phrase, in addition to or contrary to

that disclosed pursuant to Paragraph 11.a.i, and identification of support for

that interpretation in the claims themselves. The support may include the

context in which a term is used, maintaining consistent usage among

claims, and distinguishing between dependent and independent claims;

ii. All references from the specification that support, describe, or explain each

element of the claim in addition to or contrary to those disclosed pursuant to

Paragraph 11.a.ii. Such references may include a definition of the claim

term, or intentional disclaimer or disavowal of claim scope by the patentee;

iii. All material in the prosecution history that describes or explains each

element of the claim in addition to or contrary to those disclosed pursuant to

Paragraph 11.a.iii;

iv. Any extrinsic evidence that supports the proposed construction of the claim,

including, but not limited to, dictionaries, treatises, expert testimony,

inventor testimony, and prior art, as permitted by law; and

v. When the party opposing patent infringement intends to offer expert

testimony during a claim construction hearing, that party must disclose the

expert as set forth in Paragraph 6.f.vi, supra, no later than when the party

serves the AResponse to Proposed Claim Construction Statement.@ In

addition, the court expects that any depositions will take place during the

time allotted for the preparation of the AJoint Claim Construction

Statement,@ described in Paragraph 12, below.

12. Claim Construction Hearing.

a. Meet and Confer. No later than 21 days after the "Response to Proposed Claim

Construction Statement" has been served, all parties shall meet and confer for the

purpose of preparing a AJoint Claim Construction Statement,@ pursuant to

Paragraph 12.b.

b. Joint Claim Construction Statement. The Joint Claim Construction Statement shall

be filed no later than 15 days after the parties meet and confer pursuant to

Paragraph 12.a., and it shall contain the following information:

i. The construction of those claims and terms on which the parties agree;


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ii. Each party's proposed construction of each disputed claim and term,

supported by the same information that is required under Paragraph 11.

The parties are reminded that claims are written in clauses or phrases. A

construction of a term in isolation without regard to context is discouraged.

As the Federal Circuit has explained, Athe context in which a term is used in

the asserted claim can be highly instructive.@ Phillips v. AWH Corp., 415

F.3d 1303, 1314 (Fed. Cir. 2005); see also Hockerson-Halberstadt, Inc. v.

Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (A[p]roper claim

construction . . . demands interpretation of the entire claim in context, not a

single element in isolation.@); Brookhill-Wilk 1, LLC v. Intuitive Surgical,

Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (AWhile certain terms may be at

the center of the claim construction debate, the context of the surrounding

words of the claim also must be considered . . . .@). Thus, a complete, and

more persuasive, proposed construction will always consider the context in

which a term appears in the disputed claim;

iii. An identification of the terms, up to a maximum of ten, whose construction

will be most significant to the resolution of the case. The parties shall also

identify any term among the ten whose construction will be case or claim

dispositive;

iv. The jointly agreeable dates for a claim construction hearing on all disputed

issues of claim construction. The suggested dates shall take into

consideration the briefing schedule pursuant to Paragraph 12.d and the

calendar of Judge Damich; and

v. For any party who proposes to call one or more witnesses at the claim

construction hearing, the identity of each such witness, the subject matter of

each witness' testimony, and an estimate of the time required for the

testimony.

c. Hearing. After the parties have filed their Joint Claim Construction Statement, the

court will send a notice of the date and time of the Claim Construction Hearing.

Unless the notice states otherwise, the parties shall be prepared to call at the hearing

all the witnesses they identified under Paragraph 12.b.v.

d. Briefing Schedule. With respect to a Claim Construction Hearing, the parties shall

comply with the following briefing schedule:

i. Not less than 35 days before the hearing, the party claiming patent

infringement must serve and file its opening brief and supporting evidence;

ii. Not less than 21 days before the hearing, each opposing party must serve

and file its responsive brief and supporting evidence; and


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iii. Not less than 14 days before the hearing, the party claiming patent

infringement must serve and file any reply brief and any evidence directly

rebutting the supporting evidence contained in an opposing party's

response.

e. Format for Claim Construction Hearing. The court prefers to conduct the claim

construction hearing using the following procedure:8

i. First, the court will hear brief presentations about background technology

from both sides. A presentation by counsel is sometimes sufficient; in

other cases, the presentation should be made by an expert witness, subject

to cross-examination. The use of audio-visual and/or demonstrative

exhibits is permitted. These exhibits must be disclosed to the opposing

side with adequate time to prepare a response;

ii. Second, the court will hear argument based exclusively on intrinsic

evidence. The court will proceed disputed term by disputed term; that is,

the Plaintiff will argue its construction of term X, followed by the

Defendant=s argument on term X. Next, the Plaintiff will argue its

construction of term Y, followed by the Defendant=s argument on term Y;

and

iii. Third, if necessary, the court will hear presentation of extrinsic evidence.

The court will again proceed disputed term by disputed term. All

witnesses are subject to cross-examination.

13. Trial Materials for Proceedings other than Claim Construction Proceedings. When the

case approaches trial, the court will issue a separate order relating to trial preparation and

the requirements of RCFC Appendix A.

14. Notice of Appeal. Parties should note that, pursuant to Federal Rules of Appellate

Procedure 4(a)(1)(B), a notice of appeal must be filed with this court no later than 60 days

after the date of entry of the order or judgment appealed. The entry date of an order,

judgment, or any filing with the Clerk=s Office is the date when it is electronically entered

into the docket and may not correspond with the filing date.

s/ Edward J. Damich

EDWARD J. DAMICH

Judge

8 The court emphasizes that this procedure is a preference. The court is willing to alter

this procedure provided that any request is made with sufficient notice to all parties and the court.


Patent Local Rules

PAT 1Published April 2010

TABLE OF CONTENTSPATENT LOCAL RULES

Page

1. SCOPE OF RULES. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 21-1. Title.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 21-2. Scope and Construction.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 21-3. Modification of these Rules.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 21-4. Effective Date.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 2

2. GENERAL PROVISIONS.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 32-1. Governing Procedure.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 3

(a) Initial Case Management Conference. . . . . . . . . . . . . . . . . PAT 32-2. Confidentiality.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 32-3. Certification of Disclosures.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 32-4. Admissibility of Disclosures... . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 42-5. Relationship to Federal Rules of Civil Procedure.. . . . . . . . . . . . PAT 4

3. PATENT DISCLOSURES. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 53-1. Disclosure of Asserted Claims and Infringement Contentions.. PAT 53-2. Document Production Accompanying Disclosure.. . . . . . . . . . . . PAT 63-3. Invalidity Contentions.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 63-4. Document Production Accompanying Invalidity Contentions... PAT 73-5. Disclosure Requirement in Patent Cases for Declaratory Judgment of

Invalidity.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 8(a) Invalidity Contentions If No Claim of Infringement.. . . . PAT 8(b) Inapplicability of Rule.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 8

3-6. Amendment to Contentions.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 83-7. Advice of Counsel. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 8

4. CLAIM CONSTRUCTION PROCEEDINGS.. . . . . . . . . . . . . . . . . . . . . PAT 104-1. Exchange of Proposed Terms for Construction... . . . . . . . . . . . PAT 104-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 104-3. Joint Claim Construction and Prehearing Statement.. . . . . . . . PAT 114-4. Completion of Claim Construction Discovery.. . . . . . . . . . . . . . PAT 114-5. Claim Construction Briefs.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 124-6. Claim Construction Hearing. . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 124-7. Good Faith Participation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PAT 12


Patent Local Rules


PATENT LOCAL RULES

1. SCOPE OF RULES

1-1. Title.

These are the Local Rules of Practice for Patent Cases before the United StatesDistrict Court for the Northern District of California. They should be cited as “PatentL.R. __.”

1-2. Scope and Construction.

These rules apply to all civil actions filed in or transferred to this Court whichallege infringement of a utility patent in a complaint, counterclaim, cross-claim or thirdparty claim, or which seek a declaratory judgment that a utility patent is not infringed, isinvalid or is unenforceable. The Civil Local Rules of this Court shall also apply to suchactions, except to the extent that they are inconsistent with these Patent Local Rules. Ifthe filings or actions in a case do not trigger the application of these Patent Local Rulesunder the terms set forth herein, the parties shall, as soon as such circumstances becomeknown, meet and confer for the purpose of agreeing on the application of these PatentLocal Rules to the case and promptly report the results of the meet and confer to theCourt.

1-3. Modification of these Rules.

The Court may modify the obligations or deadlines set forth in these Patent LocalRules based on the circumstances of any particular case, including, without limitation, thesimplicity or complexity of the case as shown by the patents, claims, products, or partiesinvolved. Such modifications shall, in most cases, be made at the initial case managementconference, but may be made at other times upon a showing of good cause. In advance ofsubmission of any request for a modification, the parties shall meet and confer forpurposes of reaching an agreement, if possible, upon any modification.

1-4. Effective Date.

These Patent Local Rules take effect on December 1, 2009. They govern patentcases filed on or after that date. For actions pending prior to December 1, 2009, theprovisions of the Patent Local Rules that were in effect on November 30, 2009, shallapply, except that the time periods for actions pending before December 1, 2009 shall bethose set forth in and computed as in the Federal Rules of Civil Procedure and the PatentLocal Rules that took effect on December 1, 2009.


Patent Local Rules


2. GENERAL PROVISIONS

2-1. Governing Procedure.

(a) Initial Case Management Conference. When the parties confer pursuant toFRCivP 26(f), in addition to the matters covered by FRCivP 26, the parties shall discussand address in the Case Management Statement filed pursuant to FRCivP 26(f) and CivilL.R. 16-9, the following topics:

(1) Proposed modification of the obligations or deadlines set forthin these Patent Local Rules to ensure that they are suitable for thecircumstances of the particular case (see Patent L.R. 1-3);

(2) The scope and timing of any claim construction discoveryincluding disclosure of and discovery from any expert witness permittedby the court.;

(3) The format of the Claim Construction Hearing, includingwhether the Court will hear live testimony, the order of presentation, andthe estimated length of the hearing; and

(4) How the parties intend to educate the court on the technologyat issue.

2-2. Confidentiality.

Discovery cannot be withheld on the basis of confidentiality absent Court order.The Protective Order authorized by the Northern District of California shall governdiscovery unless the Court enters a different protective order. The approved ProtectiveOrder can be found on the Court’s website.

2-3. Certification of Disclosures.

All statements, disclosures, or charts filed or served in accordance with thesePatent Local Rules shall be dated and signed by counsel of record. Counsel’s signatureshall constitute a certification that to the best of his or her knowledge, information, andbelief, formed after an inquiry that is reasonable under the circumstances, the informationcontained in the statement, disclosure, or chart is complete and correct at the time it ismade.


Patent Local Rules


2-4. Admissibility of Disclosures.

Statements, disclosures, or charts governed by these Patent Local Rules areadmissible to the extent permitted by the Federal Rules of Evidence or Procedure.However, the statements and disclosures provided for in Patent L.R. 4-1 and 4-2 are notadmissible for any purpose other than in connection with motions seeking an extensionor modification of the time periods within which actions contemplated by these PatentLocal Rules shall be taken.

2-5. Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it shall not be aground for objecting to an opposing party’s discovery request (e.g., interrogatory,document request, request for admission, deposition question) or declining to provideinformation otherwise required to be disclosed pursuant to FRCivP 26(a)(1) that thediscovery request or disclosure requirement is premature in light of, or otherwise conflictswith, these Patent Local Rules, absent other legitimate objection. A party may object,however, to responding to the following categories of discovery requests (or decline toprovide information in its initial disclosures under FRCivP 26(a)(1)) on the ground thatthey are premature in light of the timetable provided in the Patent Local Rules:

(a) Requests seeking to elicit a party’s claim construction position;

(b) Requests seeking to elicit from the patent claimant a comparison of theasserted claims and the accused apparatus, product, device, process, method, act, or otherinstrumentality;

(c) Requests seeking to elicit from an accused infringer a comparison of theasserted claims and the prior art; and

(d) Requests seeking to elicit from an accused infringer the identification of anyadvice of counsel, and related documents.

Where a party properly objects to a discovery request (or declines to provideinformation in its initial disclosures under FRCivP 26(a)(1)) as set forth above, that partyshall provide the requested information on the date on which it is required to be providedto an opposing party under these Patent Local Rules or as set by the Court, unless thereexists another legitimate ground for objection.


Patent Local Rules


3. PATENT DISCLOSURES

3-1. Disclosure of Asserted Claims and Infringement Contentions.

Not later than 14 days after the Initial Case Management Conference, a partyclaiming patent infringement shall serve on all parties a “Disclosure of Asserted Claimsand Infringement Contentions.” Separately for each opposing party, the “Disclosure ofAsserted Claims and Infringement Contentions” shall contain the following information:

(a) Each claim of each patent in suit that is allegedly infringed by each opposingparty, including for each claim the applicable statutory subsections of 35 U.S.C. §271asserted;

(b) Separately for each asserted claim, each accused apparatus, product, device,process, method, act, or other instrumentality (“Accused Instrumentality”) of eachopposing party of which the party is aware. This identification shall be as specific aspossible. Each product, device, and apparatus shall be identified by name or modelnumber, if known. Each method or process shall be identified by name, if known, or byany product, device, or apparatus which, when used, allegedly results in the practice ofthe claimed method or process;

(c) A chart identifying specifically where each limitation of each asserted claimis found within each Accused Instrumentality, including for each limitation that such partycontends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), ormaterial(s) in the Accused Instrumentality that performs the claimed function.

(d) For each claim which is alleged to have been indirectly infringed, anidentification of any direct infringement and a description of the acts of the allegedindirect infringer that contribute to or are inducing that direct infringement. Insofar asalleged direct infringement is based on joint acts of multiple parties, the role of each suchparty in the direct infringement must be described.

(e) Whether each limitation of each asserted claim is alleged to be literally presentor present under the doctrine of equivalents in the Accused Instrumentality;

(f) For any patent that claims priority to an earlier application, the priority dateto which each asserted claim allegedly is entitled; and

(g) If a party claiming patent infringement wishes to preserve the right to rely, forany purpose, on the assertion that its own apparatus, product, device, process, method, act,or other instrumentality practices the claimed invention, the party shall identify, separatelyfor each asserted claim, each such apparatus, product, device, process, method, act, orother instrumentality that incorporates or reflects that particular claim.


Patent Local Rules


(h) If a party claiming patent infringement alleges willful infringement, the basisfor such allegation.

3-2. Document Production Accompanying Disclosure.

With the “Disclosure of Asserted Claims and Infringement Contentions,” the partyclaiming patent infringement shall produce to each opposing party or make available forinspection and copying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements,marketing materials, offer letters, beta site testing agreements, and third party or jointdevelopment agreements) sufficient to evidence each discussion with, disclosure to, orother manner of providing to a third party, or sale of or offer to sell, or any public use of,the claimed invention prior to the date of application for the patent in suit. A party’sproduction of a document as required herein shall not constitute an admission that suchdocument evidences or is prior art under 35 U.S.C. § 102;

(b) All documents evidencing the conception, reduction to practice, design, anddevelopment of each claimed invention, which were created on or before the date ofapplication for the patent in suit or the priority date identified pursuant to Patent L.R. 3-1(f), whichever is earlier;

(c) A copy of the file history for each patent in suit; and

(d) All documents evidencing ownership of the patent rights by the party assertingpatent infringement.

(e) If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documentssufficient to show the operation of any aspects or elements of such instrumentalities thepatent claimant relies upon as embodying any asserted claims.

The producing party shall separately identify by production number whichdocuments correspond to each category.

3-3. Invalidity Contentions.

Not later than 45 days after service upon it of the “Disclosure of Asserted Claimsand Infringement Contentions,” each party opposing a claim of patent infringement, shallserve on all parties its “Invalidity Contentions” which shall contain the followinginformation:


Patent Local Rules


(a) The identity of each item of prior art that allegedly anticipates each assertedclaim or renders it obvious. Each prior art patent shall be identified by its number,country of origin, and date of issue. Each prior art publication shall be identified by itstitle, date of publication, and where feasible, author and publisher. Prior art under 35U.S.C. § 102(b) shall be identified by specifying the item offered for sale or publicly usedor known, the date the offer or use took place or the information became known, and theidentity of the person or entity which made the use or which made and received the offer,or the person or entity which made the information known or to whom it was madeknown. Prior art under 35 U.S.C. § 102(f) shall be identified by providing the name ofthe person(s) from whom and the circumstances under which the invention or any part ofit was derived. Prior art under 35 U.S.C. § 102(g) shall be identified by providing theidentities of the person(s) or entities involved in and the circumstances surrounding themaking of the invention before the patent applicant(s);

(b) Whether each item of prior art anticipates each asserted claim or renders itobvious. If obviousness is alleged, an explanation of why the prior art renders theasserted claim obvious, including an identification of any combinations of prior artshowing obviousness;

(c) A chart identifying where specifically in each alleged item of prior art eachlimitation of each asserted claim is found, including for each limitation that such partycontends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), ormaterial(s) in each item of prior art that performs the claimed function; and

(d) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1) of any ofthe asserted claims.

3-4. Document Production Accompanying Invalidity Contentions.

With the “Invalidity Contentions,” the party opposing a claim of patentinfringement shall produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, orother documentation sufficient to show the operation of any aspects or elements of anAccused Instrumentality identified by the patent claimant in its Patent L.R. 3-1(c) chart;and

(b) A copy or sample of the prior art identified pursuant to Patent L.R. 3-3(a)which does not appear in the file history of the patent(s) at issue. To the extent any suchitem is not in English, an English translation of the portion(s) relied upon shall beproduced.

The producing party shall separately identify by production number whichdocuments correspond to each category.


Patent Local Rules


3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment ofInvalidity.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in whicha party files a complaint or other pleading seeking a declaratory judgment that a patent isinvalid Patent L.R. 3-1 and 3-2 shall not apply unless and until a claim for patentinfringement is made by a party. If the defendant does not assert a claim for patentinfringement in its answer to the complaint, no later than 14 days after the defendantserves its answer, or 14 days after the Initial Case Management Conference, whicheveris later, the party seeking a declaratory judgment of invalidity shall serve upon eachopposing party its Invalidity Contentions that conform to Patent L.R. 3-3 and produce ormake available for inspection and copying the documents described in Patent L.R. 3-4.

(b) Inapplicability of Rule. This Patent L.R. 3-5 shall not apply to cases inwhich a request for a declaratory judgment that a patent is invalid is filed in response toa complaint for infringement of the same patent.

3-6. Amendment to Contentions.

Amendment of the Infringement Contentions or the Invalidity Contentions maybe made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) a claim construction by theCourt different from that proposed by the party seeking amendment; (b) recent discoveryof material, prior art despite earlier diligent search; and (c) recent discovery of nonpublicinformation about the Accused Instrumentality which was not discovered, despite diligentefforts, before the service of the Infringement Contentions. The duty to supplementdiscovery responses does not excuse the need to obtain leave of court to amendcontentions.

3-7. Advice of Counsel.

Not later than 50 days after service by the Court of its Claim Construction Ruling,each party relying upon advice of counsel as part of a patent-related claim or defense forany reason shall:

(a) Produce or make available for inspection and copying any written advice anddocuments related thereto for which the attorney-client and work product protection havebeen waived;

(b) Provide a written summary of any oral advice and produce or make availablefor inspection and copying that summary and documents related thereto for which theattorney-client and work product protection have been waived; and


Patent Local Rules


(c) Serve a privilege log identifying any other documents, except those authoredby counsel acting solely as trial counsel, relating to the subject matter of the advice whichthe party is withholding on the grounds of attorney-client privilege or work productprotection.

A party who does not comply with the requirements of this Patent L.R. 3-7 shallnot be permitted to rely on advice of counsel for any purpose absent a stipulation of allparties or by order of the Court


Patent Local Rules


4. CLAIM CONSTRUCTION PROCEEDINGS

4-1. Exchange of Proposed Terms for Construction.

(a) Not later than 14 days after service of the “Invalidity Contentions” pursuantto Patent L.R. 3-3, not later than 42 days after service upon it of the “Disclosure ofAsserted Claims and Infringement Contentions” in those actions where validity is not atissue (and Patent L.R. 3-3 does not apply), or, in all cases in which a party files acomplaint or other pleading seeking a declaratory judgment not based on validity, not laterthan 14 days after the defendant serves an answer that does not assert a claim for patentinfringement (and Patent L.R. 3-1 does not apply), each party shall serve on each otherparty a list of claim terms which that party contends should be construed by the Court, andidentify any claim term which that party contends should be governed by 35 U.S.C. §112(6).

(b) The parties shall thereafter meet and confer for the purposes of limiting theterms in dispute by narrowing or resolving differences and facilitating the ultimatepreparation of a Joint Claim Construction and Prehearing Statement. The parties shallalso jointly identify the 10 terms likely to be most significant to resolving the parties’dispute, including those terms for which construction may be case or claim dispositive.

4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

(a) Not later than 21 days after the exchange of the lists pursuant to Patent L.R.4-1, the parties shall simultaneously exchange proposed constructions of each termidentified by either party for claim construction. Each such “Preliminary ClaimConstruction” shall also, for each term which any party contends is governed by 35 U.S.C.§ 112(6), identify the structure(s), act(s), or material(s) corresponding to that term’sfunction.

(b) At the same time the parties exchange their respective “Preliminary ClaimConstructions,” each party shall also identify all references from the specification orprosecution history that support its proposed construction and designate any supportingextrinsic evidence including, without limitation, dictionary definitions, citations to learnedtreatises and prior art, and testimony of percipient and expert witnesses. Extrinsicevidence shall be identified by production number or by producing a copy if notpreviously produced. With respect to any supporting witness, percipient or expert, theidentifying party shall also provide a description of the substance of that witness’proposed testimony that includes a listing of any opinions to be rendered in connectionwith claim construction.

(c) The parties shall thereafter meet and confer for the purposes of narrowing theissues and finalizing preparation of a Joint Claim Construction and Prehearing Statement.


Patent Local Rules


4-3. Joint Claim Construction and Prehearing Statement.

Not later than 60 days after service of the “Invalidity Contentions,” the partiesshall complete and file a Joint Claim Construction and Prehearing Statement, which shallcontain the following information:

(a) The construction of those terms on which the parties agree;

(b) Each party’s proposed construction of each disputed term, together with anidentification of all references from the specification or prosecution history that supportthat construction, and an identification of any extrinsic evidence known to the party onwhich it intends to rely either to support its proposed construction or to oppose any otherparty’s proposed construction, including, but not limited to, as permitted by law,dictionary definitions, citations to learned treatises and prior art, and testimony ofpercipient and expert witnesses;

(c) An identification of the terms whose construction will be most significant tothe resolution of the case up to a maximum of 10. The parties shall also identify any termamong the 10 whose construction will be case or claim dispositive. If the parties cannotagree on the 10 most significant terms, the parties shall identify the ones which they doagree are most significant and then they may evenly divide the remainder with each partyidentifying what it believes are the remaining most significant terms. However, the totalterms identified by all parties as most significant cannot exceed 10. For example, in acase involving two parties, if the parties agree upon the identification of five terms asmost significant, each may only identify two additional terms as most significant; if theparties agree upon eight such terms, each party may only identify only one additional termas most significant.

(d) The anticipated length of time necessary for the Claim Construction Hearing;

(e) Whether any party proposes to call one or more witnesses at the ClaimConstruction Hearing, the identity of each such witness, and for each witness, a summaryof his or her testimony including, for any expert, each opinion to be offered related toclaim construction.

4-4. Completion of Claim Construction Discovery.

Not later than 30 days after service and filing of the Joint Claim Construction andPrehearing Statement, the parties shall complete all discovery relating to claimconstruction, including any depositions with respect to claim construction of anywitnesses, including experts, identified in the Preliminary Claim Construction statement(Patent L.R. 4-2) or Joint Claim Construction and Prehearing Statement (Patent L.R. 4-3).


Patent Local Rules


4-5. Claim Construction Briefs.

(a) Not later than 45 days after serving and filing the Joint Claim Constructionand Prehearing Statement, the party claiming patent infringement, or the party assertinginvalidity if there is no infringement issue present in the case, shall serve and file anopening brief and any evidence supporting its claim construction.

(b) Not later than 14 days after service upon it of an opening brief, each opposingparty shall serve and file its responsive brief and supporting evidence.

(c) Not later than 7 days after service upon it of a responsive brief, the partyclaiming patent infringement, or the party asserting invalidity if there is no infringementissue present in the case, shall serve and file any reply brief and any evidence directlyrebutting the supporting evidence contained in an opposing party’s response.

4-6. Claim Construction Hearing.

Subject to the convenience of the Court’s calendar, two weeks followingsubmission of the reply brief specified in Patent L.R. 4-5(c), the Court shall conduct aClaim Construction Hearing, to the extent the parties or the Court believe a hearing isnecessary for construction of the claims at issue.

4-7. Good Faith Participation.

A failure to make a good faith effort to narrow the instances of disputed terms or otherwise participate in the meet and confer process of any of the provisionsof section 4 may expose counsel to sanctions, including under 28 U.S.C. § 1927.
