Appendix D - Patent Local Rules · Texas • Eastern District (published April 21, 2011) •...

Appendix D - Patent Local Rules

Patent Local Rules (PLRs) date back to December 1, 2000 when the Northern District ofCalifornia promulgated the first set of rules governing the content and timing of disclosures inpatent cases. These rules established a default regime for operationalizing the claim constructionprocess that developed following the Supreme Court’s decision in Markman v. WestviewInstruments, 515 U.S. 1192 (1995). See generally James Ware & Brian Davy, The History,Content, Application, and Influence of the Northern District of California’s Patent Local Rules,25 Santa Clara Computer & High Tech. L.J. 965 (2009). The N.D. Cal. has since updated itsPLRs. Eighteen district courts now have some form of Patent Local Rules. Many follow theN.D. Cal. model. Some districts have augmented the N.D. Cal. model to address distinctiveaspects of their docket. For example, the District of New Jersey, which is home to manypharmaceutical companies, developed rules specific to Hatch-Waxman ANDA cases. Otherdistricts, such as the District of Massachusetts, implement somewhat different approaches. Somedistricts also include model scheduling orders and protective orders in their local rules. ThisAppendix contains the PLRs that have been implemented as of April 1, 2012.

California • Northern District (published December 1, 2009) • Southern District (published November 1, 2011)

Georgia • Northern District

Illinois • Northern District

Massachusetts (published February 1, 2012)

Minnesota (published May 9, 2011)

Missouri • Eastern District

Nevada (published July 27, 2011)

New Hampshire (published December 1, 2011)

New Jersey (published November 1, 2011)

North Carolina • Eastern District (published July 2011)

Ohio • Northern District • Southern District (published June 1, 2010)

Pennsylvania • Western District (effective December 1, 2009)

Texas • Eastern District (published April 21, 2011) • Northern District (November 17, 2009) • Southern District

Washington • Western District

N.D. Cal.

USDC Patent Local Rules – Revised December 1, 2009 PAT-i

UNITED STATES DISTRICT COURT

Northern District of California

PATENT LOCAL RULES

Table of Contents

1. SCOPE OF RULES ..................................................................................................................... PAT-1

1-1. Title .................................................................................................................................. PAT-1

1-2. Scope and Construction .................................................................................................... PAT-1

1-3. Modification of these Rules ............................................................................................. PAT-1

1-4. Effective Date ................................................................................................................... PAT-1

2. GENERAL PROVISIONS .......................................................................................................... PAT-2

2-1. Governing Procedure ........................................................................................................ PAT-2

(a) Initial Case Management Conference ................................................................... PAT-2

2-2. Confidentiality .................................................................................................................. PAT-2

2-3. Certification of Disclosures .............................................................................................. PAT-2

2-4. Admissibility of Disclosures ............................................................................................ PAT-2

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

3. PATENT DISCLOSURES .......................................................................................................... PAT-4

3-1. Disclosure of Asserted Claims and Infringement Contentions ........................................ PAT-4

3-2. Document Production Accompanying Disclosure ........................................................... PAT-4

3-3. Invalidity Contentions ...................................................................................................... PAT-5

3-4. Document Production Accompanying Invalidity Contentions ......................................... PAT-6

3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity ........... PAT-6

(a) Invalidity Contentions If No Claim of Infringement .............................................. PAT-6

(b) Inapplicability of Rule ............................................................................................ PAT-6

3-6. Amendment to Contentions .............................................................................................. PAT-6

3-7. Advice of Counsel ............................................................................................................ PAT-7

4. CLAIM CONSTRUCTION PROCEEDINGS ............................................................................ PAT-8

4-1. Exchange of Proposed Terms for Construction ................................................................ PAT-8

4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence .......................... PAT-8

4-3. Joint Claim Construction and Prehearing Statement ........................................................ PAT-8

4-4. Completion of Claim Construction Discovery ................................................................. PAT-9

4-5. Claim Construction Briefs ................................................................................................ PAT-9

4-6. Claim Construction Hearing ........................................................................................... PAT-10

4-7. Good Faith Participation ................................................................................................ PAT-10

USDC Patent Local Rules – Revised December 1, 2009 PAT-1

1. SCOPE OF RULES

1-1. Title

These are the Local Rules of Practice for Patent Cases before the United States District Court

for the Northern District of California. They should be cited as “Patent L.R. __.”

1-2. Scope and Construction

These rules apply to all civil actions filed in or transferred to this Court which allege

infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or

which seek a declaratory judgment that a utility patent is not infringed, is invalid or is

unenforceable. The Civil Local Rules of this Court shall also apply to such actions, except to

the extent that they are inconsistent with these Patent Local Rules. If the filings or actions in a

case do not trigger the application of these Patent Local Rules under the terms set forth herein,

the parties shall, as soon as such circumstances become known, meet and confer for the purpose

of agreeing on the application of these Patent Local Rules to the case and promptly report the

results of the meet and confer to the Court.

1-3. Modification of these Rules

The Court may modify the obligations or deadlines set forth in these Patent Local Rules based

on the circumstances of any particular case, including, without limitation, the simplicity or

complexity of the case as shown by the patents, claims, products, or parties involved. Such

modifications shall, in most cases, be made at the initial case management conference, but may

be made at other times upon a showing of good cause. In advance of submission of any request

for a modification, the parties shall meet and confer for purposes 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 patent cases filed on

or after that date. For actions pending prior to December 1, 2009, the provisions of the Patent

Local Rules that were in effect on November 30, 2009, shall apply, except that the time periods

for actions pending before December 1, 2009 shall be those set forth in and computed as in the

Federal Rules of Civil Procedure and the Patent Local Rules that took effect on December 1,

2009.


2. GENERAL PROVISIONS

2-1. Governing Procedure

(a) Initial Case Management Conference. When the parties confer pursuant to Fed. R.

Civ. P. 26(f), in addition to the matters covered by Fed. R. Civ. P. 26, the parties shall

discuss and address in the Case Management Statement filed pursuant to Fed. R. Civ. P.

26(f) and Civil L.R. 16-9, the following topics:

(1) Proposed modification of the obligations or deadlines set forth in these Patent

Local Rules to ensure that they are suitable for the circumstances of the particular

case (see Patent L.R. 1-3);

(2) The scope and timing of any claim construction discovery including disclosure of

and discovery from any expert witness permitted by the court;

(3) The format of the Claim Construction Hearing, including whether the Court will

hear live testimony, the order of presentation, and the estimated length of the

hearing; and

(4) How the parties intend to educate the court on the technology at 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 govern discovery unless the Court

enters a different protective order. The approved Protective Order can be found on the Court’s

website.

2-3. Certification of Disclosures

All statements, disclosures, or charts filed or served in accordance with these Patent Local

Rules shall be dated and signed by counsel of record. Counsel’s signature shall constitute a

certification that to the best of his or her knowledge, information, and belief, formed after an

inquiry that is reasonable under the circumstances, the information contained in the statement,

disclosure, or chart is complete and correct at the time it is made.

2-4. Admissibility of Disclosures

Statements, disclosures, or charts governed by these Patent Local Rules are admissible 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 not admissible for any purpose other

than in connection with motions seeking an extension or modification of the time periods

within which actions contemplated by these Patent Local 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 a ground for

objecting to an opposing party’s discovery request (e.g., interrogatory, document request,

request for admission, deposition question) or declining to provide information otherwise

required to be disclosed pursuant to Fed. R. Civ. P. 26(a)(1) that the discovery request or

disclosure requirement is premature in light of, or otherwise conflicts with, these Patent Local

Rules, absent other legitimate objection. A party may object, however, to responding to the


following categories of discovery requests (or decline to provide information in its initial

disclosures under Fed. R. Civ. P. 26(a)(1)) on the ground that they 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 the asserted claims

and the accused apparatus, product, device, process, method, act, or other instrumentality;

(c) Requests seeking to elicit from an accused infringer a comparison of the asserted claims

and the prior art; and

(d) Requests seeking to elicit from an accused infringer the identification of any advice of

counsel, and related documents.

Where a party properly objects to a discovery request (or declines to provide information in its

initial disclosures under Fed. R. Civ. P. 26(a)(1)) as set forth above, that party shall provide the

requested information on the date on which it is required to be provided to an opposing party

under these Patent Local Rules or as set by the Court, unless there exists another legitimate

ground for objection.


3. PATENT DISCLOSURES

3-1. Disclosure of Asserted Claims and Infringement Contentions

Not later than 14 days after the Initial Case Management Conference, a party claiming patent

infringement shall serve on all parties a “Disclosure of Asserted Claims and Infringement

Contentions.” Separately for each opposing party, the “Disclosure of Asserted Claims and

Infringement Contentions” shall contain the following information:

(a) 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;

(b) Separately for each asserted 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 shall be identified by name or model number, if known.

Each method or process shall be identified by name, if known, or by any product, device,

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

process;

(c) A chart identifying specifically where each limitation of each asserted claim is found

within each Accused Instrumentality, including for each limitation that such party

contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or

material(s) in the Accused Instrumentality that performs the claimed function.

(d) For each claim which is alleged to have been indirectly infringed, an identification of any

direct infringement and a description of the acts of the alleged indirect infringer that

contribute to or are inducing that direct infringement. Insofar as alleged direct

infringement is based on joint acts of multiple parties, the role of each such party in the

direct infringement must be described.

(e) Whether each limitation of each asserted claim is alleged to be literally present or present

under the doctrine of equivalents in the Accused Instrumentality;

(f) For any patent that claims priority to an earlier application, the priority date to which

each asserted claim allegedly is entitled; and

(g) If a party claiming patent infringement wishes to preserve the right to rely, for any

purpose, on the assertion that its own apparatus, product, device, process, method, act, or

other instrumentality practices the claimed invention, the party shall identify, separately

for each asserted claim, each such apparatus, product, device, process, method, act, or

other instrumentality that incorporates or reflects that particular claim.

(h) If a party claiming patent infringement alleges willful infringement, the basis for such

allegation.

3-2. Document Production Accompanying Disclosure

With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming

patent infringement shall produce to each opposing party or make available for inspection and

copying:


(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing

materials, offer letters, beta site testing agreements, and third party or joint development

agreements) sufficient to evidence each discussion with, disclosure to, or other 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’s production of a

document as required herein shall not constitute an admission that such document

evidences or is prior art under 35 U.S.C. § 102;

(b) All documents evidencing the conception, reduction to practice, design, and development

of each claimed invention, which were created on or before the date of application 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 asserting patent

infringement.

(e) If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents sufficient

to show the operation of any aspects or elements of such instrumentalities the patent

claimant relies upon as embodying any asserted claims.

The producing party shall separately identify by production number which documents

correspond to each category.

3-3. Invalidity Contentions

Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and

Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on

all parties its “Invalidity Contentions” which shall contain the following information:

(a) The identity of each item of prior art that allegedly anticipates each asserted 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 shall be identified by its title, date of

publication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b)

shall be identified by specifying the item offered for sale or publicly used or known, the

date the offer or use took place or the information became known, and the identity 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 made known. Prior art

under 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) from

whom and the circumstances under which the invention or any part of it was derived.

Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities of the

person(s) or entities involved in and the circumstances surrounding the making of the

invention before the patent applicant(s);

(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. 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 showing

obviousness;


(c) A chart identifying where specifically in each alleged item of prior art each limitation of

each asserted claim is found, including for each limitation that such party contends is

governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(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 35 U.S.C. §

112(2) or enablement or written description under 35 U.S.C. § 112(1) of any of the

asserted claims.

3-4. Document Production Accompanying Invalidity Contentions

With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall

produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other

documentation sufficient to show the operation of any aspects or elements of an Accused

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 such item is not in

English, an English translation of the portion(s) relied upon shall be produced.



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

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files

a complaint or other pleading seeking a declaratory judgment that a patent is invalid

Patent L.R. 3-1 and 3-2 shall not apply unless and until a claim for patent infringement is

made by a party. If the defendant does not assert a claim for patent infringement in its

answer to the complaint, no later than 14 days after the defendant serves its answer, or 14

days after the Initial Case Management Conference, whichever is later, the party seeking

a declaratory judgment of invalidity shall serve upon each opposing party its Invalidity

Contentions that conform to Patent L.R. 3-3 and produce or make 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 in which a request

for a declaratory judgment that a patent is invalid is filed in response to a complaint for

infringement of the same patent.

3-6. Amendment to Contentions

Amendment of the Infringement Contentions or the Invalidity Contentions may be 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 the Court different from that proposed by the party seeking

amendment;


(b) Recent discovery of material, prior art despite earlier diligent search; and

(c) Recent discovery of nonpublic information about the Accused Instrumentality which was

not discovered, despite diligent efforts, before the service of the Infringement

Contentions.

The duty to supplement discovery responses does not excuse the need to obtain leave of court

to amend contentions.

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 for any reason shall:

(a) Produce or make available for inspection and copying any written advice and documents

related thereto for which the attorney-client and work product protection have been

waived;

(b) Provide a written summary of any oral advice and produce or make available for

inspection and copying that summary and documents related thereto for which the

attorney-client and work product protection have been waived; and

(c) Serve a privilege log identifying any other documents, except those authored by counsel

acting solely as trial counsel, relating to the subject matter of the advice which the party

is withholding on the grounds of attorney-client privilege or work product protection.

A party who does not comply with the requirements of this Patent L.R. 3-7 shall not be permitted

to rely on advice of counsel for any purpose absent a stipulation of all parties or by order of the

Court.


4. CLAIM CONSTRUCTION PROCEEDINGS

4-1. Exchange of Proposed Terms for Construction

(a) Not later than 14 days after service of the “Invalidity Contentions” pursuant to Patent

L.R. 3-3, not later than 42 days after service upon it of the “Disclosure of Asserted

Claims and Infringement Contentions” in those actions where validity is not at issue (and

Patent L.R. 3-3 does not apply), or, in all cases in which a party files a complaint or other

pleading seeking a declaratory judgment not based on validity, not later than 14 days

after the defendant serves an answer that does not assert a claim for patent infringement

(and Patent L.R. 3-1 does not apply), each party shall serve on each other party a list of

claim terms which that party contends should be construed by the Court, and identify 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 the terms in

dispute by narrowing or resolving differences and facilitating the ultimate preparation of

a Joint Claim Construction and Prehearing Statement. The parties shall also 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 term identified by

either party for claim construction. Each such “Preliminary Claim Construction” 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’s function.

(b) At the same time the parties exchange their respective “Preliminary Claim

Constructions,” each party shall also identify all references from the specification or

prosecution history that support its proposed construction and designate any supporting

extrinsic evidence including, without limitation, dictionary definitions, citations to

learned treatises and prior art, and testimony of percipient and expert witnesses.

Extrinsic evidence shall be identified by production number or by producing a copy if not

previously produced. With respect to any supporting witness, percipient or expert, the

identifying 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 connection

with claim construction.

(c) The parties shall thereafter meet and confer for the purposes of narrowing the issues and

finalizing preparation of a Joint Claim Construction and Prehearing Statement.

4-3. Joint Claim Construction and Prehearing Statement

Not later than 60 days after service of the “Invalidity Contentions,” the parties shall complete

and file a Joint Claim Construction and Prehearing Statement, which shall contain 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 an identification

of all references from the specification or prosecution history that support that

construction, and an identification of any extrinsic evidence known to the party on which

it intends to rely either to support its proposed construction or to oppose any other party’s

proposed construction, including, but not limited to, as permitted by law, dictionary

definitions, citations to learned treatises and prior art, and testimony of percipient and

expert witnesses;

(c) An identification of the terms whose construction will be most significant to the

resolution of the case up to a maximum of 10. The parties shall also identify any term

among the 10 whose construction will be case or claim dispositive. If the parties cannot

agree on the 10 most significant terms, the parties shall identify the ones which they do

agree are most significant and then they may evenly divide the remainder with each party

identifying what it believes are the remaining most significant terms. However, the total

terms identified by all parties as most significant cannot exceed 10. For example, in a

case involving two parties, if the parties agree upon the identification of five terms as

most significant, each may only identify two additional terms as most significant; if the

parties agree upon eight such terms, each party may only identify only one additional

term as 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 Claim Construction

Hearing, the identity of each such witness, and for each witness, a summary of his or her

testimony including, for any expert, each opinion to be offered related to claim

construction.

4-4. Completion of Claim Construction Discovery

Not later than 30 days after service and filing of the Joint Claim Construction and Prehearing

Statement, the parties shall complete all discovery relating to claim construction, including any

depositions with respect to claim construction of any witnesses, 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).

4-5. Claim Construction Briefs

(a) Not later than 45 days after serving and filing the Joint Claim Construction and

Prehearing Statement, the party claiming patent infringement, or the party asserting

invalidity if there is no infringement issue present in the case, shall serve and file an

opening brief and any evidence supporting its claim construction.

(b) Not later than 14 days after service upon it of an opening brief, each opposing party 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 party claiming patent

infringement, or the party asserting invalidity if there is no infringement issue present in

the case, shall serve and file any reply brief and any evidence directly rebutting 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 following submission of the

reply brief specified in Patent L.R. 4-5(c), the Court shall conduct a Claim Construction

Hearing, to the extent the parties or the Court believe a hearing is necessary 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 provisions of section 4 may expose

counsel to sanctions, including under 28 U.S.C. § 1927.

United States District CourtSouthern District

of California

L O C A L R U L E S

Revised as of:

November 01, 2011

CONDENSED PRINT -- FOR SALE @ FINANCIAL

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PATENT LOCAL RULES

1. Scope of Rules

1.1 Title.

These are the Local Rules of Practice for Patent Cases before the United States District Court for the Southern District ofCalifornia. They should be cited as “Patent L.R. ___.”

1.2 Effective Date.

These Patent Local Rules take effect on December 1, 2009, and will apply to any case filed thereafter.

1.3 Scope and Construction.

These Patent Local Rules apply to all civil actions filed in or transferred to this court which allege infringement of autility patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a declaratory judgment that autility patent is not infringed, is invalid or is unenforceable. The court may accelerate, extend, eliminate, or modify theobligations or deadlines set forth in these Patent Local Rules based on the court’s schedule or the circumstances of anyparticular case, including, without limitation, the complexity of the case or the number of patents, claims, products, orparties involved. If any motion filed prior to the Claim Construction Hearing provided for in Patent L.R. 4.5 raises claimconstruction issues, the court may, for good cause shown, defer the motion until after completion of the disclosures,filings, or ruling following the Claim Construction Hearing. The Civil Local Rules of this court also apply to theseactions, except to the extent they are inconsistent with these Patent Local Rules.

1.4 Application of Rules When No Specified Triggering Event.

If the filings or actions in a case do not trigger the application of these Patent Local Rules, as soon as any party ascertainsthat circumstances exist to make application of these Patent Local Rules appropriate to the case, that party should notifythe assigned magistrate judge so the matter may be scheduled for a Case Management Conference.

2. General Provisions

2.1 Governing Procedure.

a. Early Neutral Evaluation (“ENE”) Conference. Within sixty (60) days of a defendant making its firstappearance in the case, counsel and the parties will appear before the assigned magistrate judge for an ENEconference pursuant to Civ.L.R. 16.1.c.1. No later than twenty-one (21) days before the ENE, the parties willmeet and confer pursuant to Fed.R.Civ.P. 26(f).

If no settlement is reached at the ENE Conference, the magistrate judge will proceed with the Initial CaseManagement Conference. At the end of the conference, the magistrate judge must prepare a case managementorder which will include:

1. A discovery schedule; and

2. A date for the Claim Construction Hearing within nine months of the date of a defendant’s firstappearance.

b. Initial Case Management Conference. When the parties confer with each other pursuant to Fed.R.Civ.P.26(f), in addition to the matters covered by Fed. R.Civ.P. 26, the parties must discuss and address in the CaseManagement Statement filed pursuant to Fed.R.Civ.P. 26(f), the following topics:

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1. Proposed modification of the deadlines provided for in these Patent Local Rules, and the effect of anysuch modification on the date and time of the Claim Construction Hearing, if any;

2. Whether the court will hear live testimony at the Claim Construction Hearing;

3. The need for and specific limits on discovery relating to claim construction, including depositions ofpercipient and expert witnesses; and

4. The order of presentation at the Claim Construction Hearing.

2.2 Confidentiality.

If any document or information produced under these Patent Local Rules is deemed confidential by the producing partyand if the court has not entered a protective order, until a protective order is issued by the court, the document will bemarked “Confidential” or with some other confidential designation (such as “Confidential – Outside Attorneys EyesOnly”) by the disclosing party and disclosure of the confidential document or information will be limited to each party’soutside attorney(s) of record and the employees of such outside attorney(s). An approved form of protective order isattached as Appendix A.

If a party is not represented by an outside attorney, disclosure of the confidential document or information will be limitedto a designated “in house” attorney, whose identity and job functions will be disclosed to the producing party five courtdays prior to any such disclosure, in order to permit any motion for protective order or other relief regarding suchdisclosure. The person(s) to whom disclosure of a confidential document or information is made under this Patent LocalRule will keep it confidential and use it only for purposes of litigating the case.

A document may not be filed under seal unless authorized by an order entered by the judge before whom the hearing orproceeding related to the proposed sealed document will take place.

2.3 Certification of Initial Disclosures.

All statements, disclosures, or charts filed or served in accordance with these Patent Local Rules must be dated andsigned by counsel of record. Counsel’s signature will constitute a certification that to the best of his or her knowledge,information, and belief, formed after an inquiry that is reasonable under the circumstances, that information contained inthe statement, disclosure, or chart is complete and correct at the time it is made.

2.4 Admissibility of Disclosures.

Statements, disclosures, or charts governed by these Patent Local Rules are admissible to the extent permitted by theFederal Rules of Evidence or Federal Rules of Civil Procedure. However, the statements or disclosures provided for inPatent Local Rules 4.1 and 4.2 are not admissible for any purpose other than in connection with motions seeking anextension or modification of the time periods within which actions contemplated by these Patent Local Rules must betaken.

2.5 Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it will not be a legitimate ground for objecting to anopposing party’s discovery request (e.g., interrogatory, document request, request for admission, deposition question), ordeclining to provide information otherwise required to be disclosed pursuant to Fed.R.Civ.P. 26(a)(1), that the discoveryrequest or disclosure requirement is premature in light of, or otherwise conflicts with, these Patent Local Rules. A partymay object, however, to responding to the following categories of discovery requests on the ground that they arepremature 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 the asserted claims and the accusedapparatus, product, device, process, method, act, or other instrumentality;

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c. Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art; andd. Requests seeking to elicit from an accused infringer the identification of any opinions of counsel, and related

documents, that it intends to rely upon as a defense to an allegation of willful infringement.

Where a party properly objects to a discovery request as set forth above, that party must provide the requested informationon the date on which it is required to provide the requested information to an opposing party under these Patent LocalRules, unless another legitimate ground for objection exists.

3. Patent Disclosures

3.1 Disclosure of Asserted Claims and Preliminary Infringement Contentions.

Not later than fourteen (14) days after the Initial Case Management Conference, a party claiming patent infringementmust serve on all parties a “Disclosure of Asserted Claims and Preliminary Infringement Contentions.” Separately foreach opposing party, the “Disclosure of Asserted Claims and Preliminary Infringement Contentions” must contain thefollowing information:

a. Each claim of each patent in suit that is allegedly infringed by each opposing party;

b. Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or otherinstrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware. Thisidentification must be as specific as possible. Each product, device and apparatus must be identified by name ormodel number, if known. Each method or process must be identified by name, if known, or by any product,device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;

c. A chart identifying specifically where each element of each asserted claim is found within each AccusedInstrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), theidentity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimedfunction;

d. Whether each element of each asserted claim is claimed to be literally present and/or present under the doctrineof equivalents in the Accused Instrumentality;

e. For any patent that claims priority to an earlier application, the priority date to which each asserted claimallegedly is entitled; and

f. If a party claiming patent infringement asserts that its own apparatus, product, device, process, method, act, orother instrumentality practices the claimed invention, the party must identify, separately for each asserted claim,each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflectsthat particular claim.

3.2 Document Production Accompanying Disclosure.

With the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” the party claiming patentinfringement must produce to each opposing party or make available for inspection and copying, the following documentsin the possession, custody or control of that party:

a. Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta sitetesting agreements, and third party or joint development agreements) sufficient to evidence each discussion with,disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention priorto the date of application for the patent in suit. A party’s production of a document as required within theserules does not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;

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b. All documents evidencing the conception, reduction to practice, design, and development of each claimedinvention, which were created on or before the date of application for the patent in suit or the priority dateidentified pursuant to Patent L.R. 3.1.e, whichever is earlier; and

c. A copy of the file history for each patent in suit and each application to which a claim for priority is made underPatent L.R. 3.1.e.

The producing party must separately identify by production number which documents correspond to each category. If thedocuments identified above are not in the possession, custody or control of the party charged with production, that partymust use its best efforts to obtain all responsive documents and make a timely disclosure.

3.3 Preliminary Invalidity Contentions.

Not later than sixty (60) days after service upon it of the “Disclosure of Asserted Claims and Preliminary InfringementContentions,” each party opposing a claim of patent infringement must serve on all parties its “Preliminary InvalidityContentions,” which must contain the following information:

a. The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious. Thisincludes information about any alleged knowledge or use of the invention in this country prior to the date ofinvention of the patent. Each prior art patent must be identified by its number, country of origin, and date ofissue. Each prior art publication must be identified by its title, date of publication, and where feasible, authorand publisher. Prior art under 35 U.S.C. § 102(b) must be identified by specifying the item offered for sale orpublicly used or known, the date the offer or use took place or the information became known, and the identityof the person or entity that made the use or that made and received the offer, or the person or entity that made theinformation known or to whom it was made known. Prior art under 35 U.S.C. § 102(f) must be identified byproviding the name of the 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) must be identified by providing the identities of the person(s)or entities involved in and the circumstances surrounding the making of the invention before the patentapplicant(s);

b. Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items ofprior art makes a claim obvious, each such combination must be identified;

c. A chart identifying where specifically in each alleged item of prior art each element of each asserted claim isfound, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of thestructure(s), act(s), or material(s) in each item of prior art that performs the claimed function;

d. Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) of any of the asserted claims; and

e. Any grounds of invalidity based on lack of written description, lack of enabling disclosure, or failure to describethe best mode under 35 U.S.C. § 112(1).

3.4 Document Production Accompanying Preliminary Invalidity Contentions.

With the “Preliminary Invalidity Contentions,” the party opposing a claim of patent infringement must produce or makeavailable for inspection and copying:

a. Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient toshow the operation of any aspects or elements of any Accused Instrumentality identified by the patent claimantin its Patent L.R. 3.1.c chart; and

b. A copy of each item of prior art identified pursuant to Patent L.R. 3.3.a which does not appear in the file historyof the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s)relied upon must be produced.

3.5 Disclosure Requirements in Patent Cases for Declaratory Relief.

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a. Invalidity Contentions if No Claim of Infringement. In all cases in which a party files a complaint or otherpleading seeking a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, PatentLocal Rules 3.1 and 3.2 will not apply unless and until a claim for patent infringement is made by a party. If thedefendant does not assert a claim for patent infringement in answer to the complaint, no later than fourteen (14)days after the Initial Case Management Conference the party seeking a declaratory judgment must serve uponeach opposing party Preliminary Invalidity Contentions that conform to Patent L.R. 3.3 and produce or makeavailable for inspection and copying the documents described in Patent L.R. 3.4.

b. Inapplicability of Rule. This Patent L.R. 3.5 does not apply to cases in which a request for declaratoryjudgment that a patent is not infringed, is invalid, or is unenforceable, is filed in response to a complaint forinfringement of the same patent.

3.6 Final Contentions.

Each party’s “Preliminary Infringement Contentions” and “Preliminary Invalidity Contentions” will be deemed to be thatparty’s final contentions, except as set forth below:

a. If a party claiming patent infringement believes in good faith that (1) the court’s Claim Construction Ruling sorequires, or (2) the documents produced pursuant to Patent L.R. 3.4 so require, then not later than thirty (30)days after service by the court of its Claim Construction Ruling, that party may serve “Final InfringementContentions” without leave of court that amend its “Preliminary Infringement Contentions” with respect to theinformation required by Patent Local Rules 3.1.c and d.

b. Not later than fifty (50) days after service by the court of its Claim Construction Ruling, each party opposing aclaim of patent infringement may serve “Final Invalidity Contentions” without leave of court that amend its“Preliminary Invalidity Contentions” with respect to the information required by Patent L.R. 3.3 if:

1. a party claiming patent infringement has served “Final Infringement Contentions” pursuant to PatentL.R. 3.6.a, or

2. the party opposing a claim of patent infringement believes in good faith that the court’s ClaimConstruction Ruling so requires.

3.7 Amendment to Contentions.

Amendment or modification of the Preliminary or Final Infringement Contentions or the Preliminary or Final InvalidityContentions, other than as expressly permitted in Patent L.R. 3.6, may be made only by order of the court, which will beentered only upon a showing of good cause.

3.8 Willfulness.

Not later than thirty 30 days after filing of the Claim Construction Order, each party opposing a claim of patentinfringement that will rely on an opinion must:

a. Produce or make available for inspection and copying the opinion(s) and any other documentation relating to theopinion(s) as to which that party agrees the attorney-client or work product protection has been waived; and

b. Serve a privilege log identifying any other documents, except those authored by counsel acting solely as trialcounsel, relating to the subject matter of the opinion(s) which the party is withholding on the grounds ofattorney-client privilege or work product protection.

A party opposing a claim of patent infringement who does not comply with the requirements of Patent L.R. 3.8 will notbe permitted to rely on an opinion of counsel as part of a defense to willful infringement, absent a stipulation of allparties or by order of the court, which will be entered only upon showing of good cause.

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4. Claim Construction Proceedings

4.1 Exchange of Preliminary Claim Construction and Extrinsic Evidence.

a. Not later than fourteen (14) days after the service of the “Preliminary Invalidity Contentions” pursuant to PatentL.R. 3.3, the parties will simultaneously exchange a preliminary proposed construction of each claim term,phrase, or clause which the parties have identified for claim construction purposes. Each such “PreliminaryClaim Constructions” will also, for each element which any party contends is governed by 35 U.S.C. § 112(6),identify the structure(s), act(s), or material(s) described in the specification corresponding to that element.

b. Simultaneously with exchange of the “Preliminary Claim Constructions,” the parties must also provide apreliminary identification of extrinsic evidence, including without limitation, dictionary definitions, citations tolearned treatises and prior art, and testimony of percipient and expert witnesses they contend support theirrespective claim constructions. The parties must identify each such item of extrinsic evidence by productionnumber or produce a copy of any such item not previously produced. With respect to any such witness,percipient or expert, the parties must also provide a brief description of the substance of that witness’s proposedtestimony.

c. Not later than fourteen (14) days after the service of the “Preliminary Claim Constructions” pursuant to PatentL.R. 4.1.a, the parties will simultaneously exchange “Responsive Claim Constructions” identifying whether theresponding party agrees with the other party’s proposed construction, or identifying an alternate construction inthe responding party’s preliminary construction, or setting forth the responding party’s alternate construction.

d. Simultaneous with exchange of the “Responsive Claim Constructions” pursuant to Patent L.R. 4.1.c, the partiesmust also provide a preliminary identification of extrinsic evidence, including without limitation, dictionarydefinitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses theycontend support any responsive claim constructions. The parties must identify each such item of extrinsicevidence by production number or produce a copy of any such item not previously produced. With respect toany such witness, percipient or expert, the parties must also provide a brief description of the substance of thatwitness’s proposed testimony.

e. The parties must thereafter meet and confer for the purposes of narrowing the issues and finalizing preparationof a Joint Claim Construction Chart, Worksheet and Hearing Statement.

4.2 Joint Claim Construction Chart, Worksheet and Hearing Statement.

Not later than fourteen (14) days after service of the “Responsive Claim Constructions” pursuant to Patent L.R. 4.1.c, theparties must complete and file a Joint Claim Construction Chart, Joint Claim Construction Worksheet and Joint HearingStatement.

a. The Joint Claim Construction Chart must have a column listing complete language of disputed claims with thedisputed terms in bold type and separate columns for each party’s proposed construction of each disputed term. Each party’s proposed construction of each disputed claim term, phrase, or clause, must identify all referencesfrom the specification or prosecution history that support that construction, and identify any extrinsic evidenceknown to the party on which it intends to rely either to support its proposed construction of the claim or tooppose any party’s proposed construction of the claim, including, but not limited to, as permitted by law,dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expertwitnesses.

b. The parties’ Joint Claim Construction Worksheet must be in the format set forth in Appendix B and include anyproposed constructions to which the parties agree, as well as those in dispute. The parties must jointly submitthe Joint Claim Construction Worksheet on computer disk in both Word and WordPerfect format or in suchother format as the court may direct.

c. The Joint Hearing Statement must include:

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1. The anticipated length of time necessary for the Claim Construction Hearing; and

2. Whether any party proposes to call one or more witnesses, including experts, at the Claim ConstructionHearing, the identity of each such witness, and for each expert, a summary of each opinion to be offeredin sufficient detail to permit a meaningful deposition of that expert.

d. At the court’s discretion, within seven (7) days of the submission of the Joint Claim Construction Chart, JointClaim Construction Worksheet and Joint Hearing Statement, the court will hold a status conference with theparties, in person or by telephone, to discuss scheduling, witnesses and any other matters regarding the ClaimConstruction Hearing.

4.3 Completion of Claim Construction Discovery.

Not later than twenty-eight (28) days after service and filing of the Joint Claim Construction Chart, Joint ClaimConstruction Worksheet and Joint Hearing Statement, the parties must complete all discovery, including depositions ofany percipient or expert witnesses, that they intend to use in the Claim Construction Hearing. Fed.R.Civ.P. 30 applies todepositions taken pursuant to Patent L.R. 4.3, except as to experts. An expert witness identified in a party’s JointHearing Statement pursuant to Patent L.R. 4.2.c, may be deposed on claim construction issues. The identification of anexpert witness in the Joint Hearing Statement may be deemed good cause for a further deposition on all substantiveissues.

4.4 Claim Construction Briefs.

a. Not later than fourteen (14) days after close of claim construction discovery, the parties will simultaneously fileand serve opening briefs and any evidence supporting their claim construction.

b. Not later than fourteen (14) days after service of the opening briefs, the parties will simultaneously file and servebriefs responsive to the opposing party’s opening brief and any evidence directly rebutting the supportingevidence contained in the opposing party’s opening brief.

4.5 Claim Construction Hearing.

Not later than twenty-eight (28) days after service of responsive briefs and subject to the convenience of the court’scalendar, the court will conduct a Claim Construction Hearing, if the court believes a hearing is necessary forconstruction of the claims at issue. The court may also order in its discretion a tutorial hearing, to occur before, or on thedate of, the Claim Construction Hearing.

Attached as Appendix C is a time line illustrating the exchange and filing deadlines set forth in these Patent Local Rules.

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APPENDIX A APPROVED FORM OF PROTECTIVE ORDER

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF CALIFORNIA

Plaintiff,

Plaintiff,

CASE NO. 00cv0000

PROTECTIVE ORDER

vs.

Defendant,

Defendant.

The Court recognizes that at least some of the documents and information ("materials") being

sought through discovery in the above-captioned action are, for competitive reasons, normally kept

confidential by the parties. The parties have agreed to be bound by the terms of this Protective Order

(“Order”) in this action.

The materials to be exchanged throughout the course of the litigation between the parties may

contain trade secret or other confidential research, technical, cost, price, marketing or other

commercial information, as is contemplated by Federal Rule of Civil Procedure 26(c)(7). The

purpose of this Order is to protect the confidentiality of such materials as much as practical during the

litigation. THEREFORE:

DEFINITIONS

1. The term "Confidential Information" will mean and include information contained or

disclosed in any materials, including documents, portions of documents, answers to interrogatories,

responses to requests for admissions, trial testimony, deposition testimony, and transcripts of trial testimony

and depositions, including data, summaries, and compilations derived therefrom that is deemed to be

Confidential Information by any party to which it belongs.

2. The term "materials" will include, but is not be limited to: documents; correspondence;

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memoranda; bulletins; blueprints; specifications; customer lists or other material that identify customers or

potential customers; price lists or schedules or other matter identifying pricing; minutes; telegrams; letters;

statements; cancelled checks; contracts; invoices; drafts; books of account; worksheets; notes of

conversations; desk diaries; appointment books; expense accounts; recordings; photographs; motion

pictures; compilations from which information can be obtained and translated into reasonably usable form

through detection devices; sketches; drawings; notes (including laboratory notebooks and records); reports;

instructions; disclosures; other writings; models and prototypes and other physical objects.

3. The term "counsel" will mean outside counsel of record, and other attorneys, paralegals,

secretaries, and other support staff employed in the law firms identified below:

_______________________________________________________________________________

_____________________________________________________________________________

[“Counsel” also includes________________________, in-house attorneys for [Plaintiff] and

__________________________, in-house attorneys for [Defendant].]

GENERAL RULES

4. Each party to this litigation that produces or discloses any materials, answers to

interrogatories, responses to requests for admission, trial testimony, deposition testimony, and transcripts

of trial testimony and depositions, or information that the producing party believes should be subject to this

Protective Order may designate the same as "CONFIDENTIAL" or "CONFIDENTIAL - FOR COUNSEL

ONLY."

a. Designation as "CONFIDENTIAL": Any party may designate information as

"CONFIDENTIAL" only if, in the good faith belief of such party and its counsel, the unrestricted disclosure

of such information could be potentially prejudicial to the business or operations of such party.

b. Designation as "CONFIDENTIAL - FOR COUNSEL ONLY": Any party may designate

information as "CONFIDENTIAL - FOR COUNSEL ONLY" only if, in the good faith belief of such party

and its counsel, the information is among that considered to be most sensitive by the party, including but

not limited to trade secret or other confidential research, development, financial or other commercial

information.

5. In the event the producing party elects to produce materials for inspection, no marking need

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be made by the producing party in advance of the initial inspection. For purposes of the initial inspection,

all materials produced will be considered as "CONFIDENTIAL - FOR COUNSEL ONLY," and must be

treated as such pursuant to the terms of this Order. Thereafter, upon selection of specified materials for

copying by the inspecting party, the producing party must, within a reasonable time prior to producing those

materials to the inspecting party, mark the copies of those materials that contain Confidential Information

with the appropriate confidentiality marking.

6. Whenever a deposition taken on behalf of any party involves a disclosure of Confidential

Information of any party:

a. the deposition or portions of the deposition must be designated as containing

Confidential Information subject to the provisions of this Order; such designation

must be made on the record whenever possible, but a party may designate portions

of depositions as containing Confidential Information after transcription of the

proceedings; [A] party will have until fourteen (14) days after receipt of the

deposition transcript to inform the other party or parties to the action of the portions

of the transcript to be designated "CONFIDENTIAL" or "CONFIDENTIAL - FOR

COUNSEL ONLY.”

b. the disclosing party will have the right to exclude from attendance at the deposition,

during such time as the Confidential Information is to be disclosed, any person other

than the deponent, counsel (including their staff and associates), the court reporter,

and the person(s) agreed upon pursuant to paragraph 8 below; and

c. the originals of the deposition transcripts and all copies of the deposition must bear

the legend "CONFIDENTIAL" or "CONFIDENTIAL - FOR COUNSEL ONLY,"

as appropriate, and the original or any copy ultimately presented to a court for filing

must not be filed unless it can be accomplished under seal, identified as being

subject to this Order, and protected from being opened except by order of this Court.

7. All Confidential Information designated as "CONFIDENTIAL" or "CONFIDENTIAL -

FOR COUNSEL ONLY" must not be disclosed by the receiving party to anyone other than those persons

designated withing this order and must be handled in the manner set forth below and, in any event, must not

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be used for any purpose other than in connection with this litigation, unless and until such designation is

removed either by agreement of the parties, or by order of the Court.

8. Information designated "CONFIDENTIAL - FOR COUNSEL ONLY" must be viewed only

by counsel (as defined in paragraph 3) of the receiving party, and by independent experts under the

conditions set forth in this Paragraph. The right of any independent expert to receive any Confidential

Information will be subject to the advance approval of such expert by the producing party or by permission

of the Court. The party seeking approval of an independent expert must provide the producing party with

the name and curriculum vitae of the proposed independent expert, and an executed copy of the form

attached hereto as Exhibit A, in advance of providing any Confidential Information of the producing party

to the expert. Any objection by the producing party to an independent expert receiving Confidential

Information must be made in writing within fourteen (14) days following receipt of the identification of the

proposed expert. Confidential Information may be disclosed to an independent expert if the fourteen (14)

day period has passed and no objection has been made. The approval of independent experts must not be

unreasonably withheld.

9. Information designated "CONFIDENTIAL" must be viewed only by counsel (as defined

in paragraph 3) of the receiving party, by independent experts (pursuant to the terms of paragraph 8), and

by the additional individuals listed below, provided each such individual has read this Order in advance of

disclosure and has agreed in writing to be bound by its terms:

(a) Executives who are required to participate in policy decisions with reference to this

action;

(b) Technical personnel of the parties with whom Counsel for the parties find it

necessary to consult, in the discretion of such counsel, in preparation for trial of this

action; and

(c) Stenographic and clerical employees associated with the individuals identified

above.

10. With respect to material designated "CONFIDENTIAL" or "CONFIDENTIAL - FOR

COUNSEL ONLY," any person indicated on the face of the document to be its originator, author or a

recipient of a copy of the document, may be shown the same.

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11. All information which has been designated as "CONFIDENTIAL" or "CONFIDENTIAL

-FOR COUNSEL ONLY" by the producing or disclosing party, and any and all reproductions of that

information, must be retained in the custody of the counsel for the receiving party identified in paragraph

3, except that independent experts authorized to view such information under the terms of this Order may

retain custody of copies such as are necessary for their participation in this litigation.

12. Before any materials produced in discovery, answers to interrogatories, responses to requests

for admissions, deposition transcripts, or other documents which are designated as Confidential Information

are filed with the Court for any purpose, the party seeking to file such material must seek permission of the

Court to file the material under seal.

13. At any stage of these proceedings, any party may object to a designation of the materials as

Confidential Information. The party objecting to confidentiality must notify, in writing, counsel for the

designating party of the objected-to materials and the grounds for the objection. If the dispute is not resolved

consensually between the parties within seven (7) days of receipt of such a notice of objections, the objecting

party may move the Court for a ruling on the objection. The materials at issue must be treated as

Confidential Information, as designated by the designating party, until the Court has ruled on the objection

or the matter has been otherwise resolved.

14. All Confidential Information must be held in confidence by those inspecting or receiving it,

and must be used only for purposes of this action. Counsel for each party, and each person receiving

Confidential Information must take reasonable precautions to prevent the unauthorized or inadvertent

disclosure of such information. If Confidential Information is disclosed to any person other than a person

authorized by this Order, the party responsible for the unauthorized disclosure must immediately bring all

pertinent facts relating to the unauthorized disclosure to the attention of the other parties and, without

prejudice to any rights and remedies of the other parties, make every effort to prevent further disclosure by

the party and by the person(s) receiving the unauthorized disclosure.

15. No party will be responsible to another party for disclosure of Confidential Information

under this Order if the information in question is not labeled or otherwise identified as such in accordance

with this Order.

16. If a party, through inadvertence, produces any Confidential Information without labeling

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or marking or otherwise designating it as such in accordance with this Order, the designating party may give

written notice to the receiving party that the document or thing produced is deemed Confidential

Information, and that the document or thing produced should be treated as such in accordance with that

designation under this Order. The receiving party must treat the materials as confidential, once the

designating party so notifies the receiving party. If the receiving party has disclosed the materials before

receiving the designation, the receiving party must notify the designating party in writing of each such

disclosure. Counsel for the parties will agree on a mutually acceptable manner of labeling or marking the

inadvertently produced materials as "CONFIDENTIAL" or "CONFIDENTIAL - FOR COUNSEL ONLY"

- SUBJECT TO PROTECTIVE ORDER.

17. Nothing within this order will prejudice the right of any party to object to the production of

any discovery material on the grounds that the material is protected as privileged or as attorney work

product.

18. Nothing in this Order will bar counsel from rendering advice to their clients with respect to

this litigation and, in the course thereof, relying upon any information designated as Confidential

Information, provided that the contents of the information must not be disclosed.

19. This Order will be without prejudice to the right of any party to oppose production of any

information for lack of relevance or any other ground other than the mere presence of Confidential

Information. The existence of this Order must not be used by either party as a basis for discovery that is

otherwise improper under the Federal Rules of Civil Procedure.

20. Nothing within this order will be construed to prevent disclosure of Confidential Information

if such disclosure is required by law or by order of the Court.

21. Upon final termination of this action, including any and all appeals, counsel for each party

must, upon request of the producing party, return all Confidential Information to the party that produced

the information, including any copies, excerpts, and summaries of that information, or must destroy same

at the option of the receiving party, and must purge all such information from all machine-readable media

on which it resides. Notwithstanding the foregoing, counsel for each party may retain all pleadings, briefs,

memoranda, motions, and other documents filed with the Court that refer to or incorporate Confidential

Information, and will continue to be bound by this Order with respect to all such retained information.

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Further, attorney work product materials that contain Confidential Information need not be destroyed, but,

if they are not destroyed, the person in possession of the attorney work product will continue to be bound

by this Order with respect to all such retained information.

22. The restrictions and obligations set forth within this order will not apply to any information

that: (a) the parties agree should not be designated Confidential Information; (b) the parties agree, or the

Court rules, is already public knowledge; (c) the parties agree, or the Court rules, has become public

knowledge other than as a result of disclosure by the receiving party, its employees, or its agents in violation

of this Order; or (d) has come or will come into the receiving party's legitimate knowledge independently

of the production by the designating party. Prior knowledge must be established by pre-production

documentation.

23. The restrictions and obligations within this order will not be deemed to prohibit discussions

of any Confidential Information with anyone if that person already has or obtains legitimate possession of

that information.

24. Transmission by facsimile is acceptable for all notification purposes within this order.

25. This Order may be modified by agreement of the parties, subject to approval by the Court.

26. The Court may modify the terms and conditions of this Order for good cause, or in the

interest of justice, or on its own order at any time in these proceedings. The parties prefer that the Court

provide them with notice of the Court's intent to modify the Order and the content of those modifications,

prior to entry of such an order.

IT IS SO ORDERED this _______ day of __________, _____

_______________________________________________ Judge, United States District Court

EXHIBIT A

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SOUTHERN DISTRICT OF CALIFORNIA

+ ))

Plaintiffs, ) AGREEMENT TO BE BOUNDv. ) BY PROTECTIVE ORDER

)))

Defendant. )______________________________)

I, __________________________________ , declare and say that:

1. I am employed as ______________________________________________

by

______________________________________________________________________.

2. I have read the Protective Order entered in _____________v. ______________, Case

No. ______________, and have received a copy of the Protective Order.

3. I promise that I will use any and all “Confidential” or “Confidential - For Counsel

Only” information, as defined in the Protective Order, given to me only in a manner authorized by the

Protective Order, and only to assist counsel in the litigation of this matter.

4. I promise that I will not disclose or discuss such “Confidential” or “Confidential - For

Counsel Only” information with anyone other than the persons described in paragraphs 3, 8 and 9 of

the Protective Order.

5. I acknowledge that, by signing this agreement, I am subjecting myself to the jurisdiction

of the United States District Court for the Southern District of California with respect to enforcement of

the Protective Order.

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

78Doc #53397

6. I understand that any disclosure or use of “Confidential” or “Confidential - For Counsel

Only” information in any manner contrary to the provisions of the Protective Order may subject me to

sanctions for contempt of court.

I declare under penalty of perjury that the foregoing is true and correct.

Date:_______________________________

________________________________________

79Doc #53397

APPENDIX B

APPROVED FORM OF

JOINT CLAIM CONSTRUCTION WORKSHEET

80Doc #53397

JOINT CLAIM CONSTRUCTION WORKSHEET

PATENT CLAIM AGREED

PROPOSED

CONSTRUCTION

PLAINTIFF’S

PROPOSED

CONSTRUCTION

DEFENDANT’S

PROPOSED

CONSTRUCTION

COURT’S

CONSTRUCTION

1. Claim language as it

appears in the patent

with terms and

phrases to be

construed in bold.

Proposed construction

if the parties agree.

Plaintiff’s proposed

construction if parties

disagree.

Defendant’s proposed


disagree.

Blank column for

Court to enter its

construction.



with terms and

phrases to be

construed in bold.


if the parties agree.



disagree.



disagree.

Blank column for

Court to enter its

construction.



with terms and

phrases to be

construed in bold.


in the parties agree.



disagree.



disagree.

Blank column for

Court to enter its

construction

81Doc #53397

APPENDIX C

TIME LINE OF EXCHANGE AND FILING DATES

Doc #53397 82

Timeline for Patent Cases in the United States District Court for the Southern District of California

60 days14

days

All days are calendar days

14

days

28 days14

days

14

days

PreliminaryClaimConstruction

Meet andconfer on jointchart

14

days

60

days

21

days

28 days or

per Court’s

calendar

14

days

Approximately 9 months from Defendant’s FirstAppearance to Claim Construction Hearing

Complaint Filed

CompleteClaimConstruction Discovery

File JointClaimConstructionChart,Worksheet andHearingStatement

File OpeningBriefs

FileResponsiveBriefs

ClaimConstruction

ResponsiveClaimConstruction

PreliminaryInvalidityContentions

PreliminaryInfringementContentions

ENE/InitialCMC

Rule 26Meet andConfer

Defendant’sfirstappearance

PR-1

TABLE OF CONTENTS

PATENT LOCAL RULES

Page(s)

LPR 1: General Provisions

LPR 1.1. Title. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-3

LPR 1.2. Purpose, Scope and Construction. . . . . . . . . . . . . . . . . . PR-3

LPR 1.3. Effective Date. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-3

LPR 2: Confidentiality of Commercial or Technical Information

LPR 2.1. Confidentiality Prior to Entry of Case Specific Protective Order . . . . . . . . . . . . . . . . . . . . . . . PR-3

LPR 2.2. Stipulated Protective Orders . . . . . . . . . . . . . . . . . . . . . PR-4

LPR 3: Relationship to General Discovery Procedures

LPR 3.1. Discovery Requests . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-5

LPR 4: Disclosure of Contentions

LPR 4.1. Infringement Contentions . . . . . . . . . . . . . . . . . . . . . . . PR-5

LPR 4.2. Response to Infringement Contentions . . . . . . . . . . . . PR-7

LPR 4.3. Invalidity Contentions. . . . . . . . . . . . . . . . . . . . . . . . . . . PR-7

LPR 4.4. Time for Disclosures . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-8

LPR 4.5. Supplementing or Amending Contentions . . . . . . . . . PR-9

PR-2

LPR 5: Bifurcation and Willful Infringement Issues

LPR 5.1. Presumption Against Bifurcation . . . . . . . . . . . . . . . . . PR-9

LPR 5.2. Discovery of the Substance of Opinions of Counsel . . PR-9

LPR 5.3. No Disqualification . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-10

LPR 6: Claim Construction Proceedings

LPR 6.1. Exchange of Proposed Terms . . . . . . . . . . . . . . . . . . . PR-11

LPR 6.2. Exchange of Preliminary Constructions . . . . . . . . . . PR-11

LPR 6.3. Joint Claim Construction Statement . . . . . . . . . . . . . PR-12

LPR 6.4. Completion of Claim Construction Discovery . . . . . PR-13

LPR 6.5. Claim Construction Briefs . . . . . . . . . . . . . . . . . . . . . PR-13

LPR 6.6. Claim Construction Hearing . . . . . . . . . . . . . . . . . . . . PR-13

LPR 6.7. Discovery after Claim Construction . . . . . . . . . . . . . . PR-13

LPR 7: Expert Witnesses

LPR 7.1. Disclosure of Experts and Expert Reports . . . . . . . . PR-13 LPR 7.2. Depositions of Experts . . . . . . . . . . . . . . . . . . . . . . . . . PR-14

LPR 7.3. Presumption Against Supplementation or Amendment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . PR-14

PR-3

LPR 1: GENERAL PROVISIONS

LPR l.1. TITLE.

These are the Local Rules of Practice for Patent Cases before theUnited States District Court for the Northern District of Georgia. They maybe cited as “Patent L.R. __.”

LPR 1.2. PURPOSE, SCOPE AND CONSTRUCTION.

(a) These rules are intended to supplement the Civil Local Rules ofthis District to facilitate the speedy, fair and efficient resolution of patentdisputes.

(b) These rules apply to all civil actions filed in or transferred to thisCourt which allege infringement of a utility patent in a complaint,counterclaim, cross-claim or third party claim, or which seek a declaratoryjudgment that a utility patent is not infringed, is invalid or is unenforceable.

(c) The Court may modify the obligations or deadlines set forth inthese Patent Local Rules based on the circumstances of any particular case,by stipulation of all parties, on motion of a party or on the Court’s ownmotion. The parties shall meet and confer prior to filing any motion seekinga modification of the obligations or deadlines set forth in these Patent LocalRules. Such meeting shall take place prior to the filing of the JointPreliminary Report and Discovery Plan, and any such motion shall be filedno later than the filing of the Joint Preliminary Report and Discovery Plan.

LPR 1.3. EFFECTIVE DATE.

These Patent Local Rules shall take effect on July 15, 2004 and shallapply to any case filed or transferred to this Court thereafter. Relevantprovisions of these rules may be applied to any pending case by the Court,on its own motion or on motion by any party.

LPR 2: CONFIDENTIALITY OF COMMERCIAL ORTECHNICAL INFORMATION

LPR 2.1. Confidentiality Prior to Entry of Case Specific ProtectiveOrder.

PR-4

(a) If any document or information produced is deemed confidentialby the producing party and if the Court has not entered a protective order,until a protective order is issued by the Court, the document shall be marked“Confidential – Subject to Protective Order” by the disclosing party anddisclosure of the confidential document or information shall be limited toeach party’s outside attorney(s) of record and the employees of such outsideattorney(s).

(b) If a party is not represented by an outside attorney, disclosure ofthe confidential document or information shall be limited to one designated“in house” attorney, whose identity and job functions shall be disclosed tothe producing party five (5) court days prior to any such disclosure, in orderto permit any motion for protective order or other relief regarding suchdisclosure.

(c) Pending entry of a protective order (by stipulation or on motion),all persons to whom disclosure of a confidential document or information ismade under this local rule shall not disclose any such protected informationto any person not entitled to have access to it. After entry of such an order,the limits on disclosure provided by such order shall apply to the disclosureof documents otherwise produced pursuant to this rule.

(d) Documents filed with the clerk containing or disclosinginformation protected by this rule shall be filed under seal with a notationthat the pleading is not to be made available to members of the public.

(e) Nothing in this rule shall affect the burden of proof or persuasionimposed by law on a party seeking to limit or prevent disclosure or use of adocument deemed confidential by that party.

LPR 2.2. Stipulated Protective Orders

(a) No later than the time for filing of the Joint Preliminary Reportand Discovery Plan pursuant to Local Rule 16.2, the parties shall meet andconfer to prepare a stipulated protective order to govern the production ofcommercially or technologically sensitive information in the case.

(b) Notwithstanding any provision in a protective order limiting theuse of a document for purposes of a single lawsuit, the fact that an attorneyor law firm has had access to a document covered by a protective order inone case shall not furnish a basis for disqualifying such lawyer in anothercase.

PR-5

LPR 3: RELATIONSHIP TO GENERAL DISCOVERYPROCEDURES

LPR 3.1. Discovery Requests

a) These Rules do not excuse any party from responding to any properdiscovery request made under the Federal Rules of Civil Procedure withinthe time required by such rules, except as follows:

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

(2) Requests seeking to elicit from the patent claimant a comparisonof the asserted claims and the accused technology;

(3) Requests seeking to elicit from an accused infringer a comparisonof the asserted claims and the prior art; and

(4) Requests seeking to elicit from an accused infringer theidentification of any opinions of counsel, and related documents, thatit intends to rely upon as a defense to an allegation of willfulinfringement.

(b) Disclosure of such information shall instead be made pursuant tothese rules, absent stipulation of the parties or other order of the Court.

LPR 4: DISCLOSURE OF CONTENTIONS

LPR 4.1. INFRINGEMENT CONTENTIONS

(a) A party claiming patent infringement shall serve on all parties aDisclosure of Infringement Contentions at the time specified in these Rules. A separate Disclosure shall be made for each party accused of infringing apatent-in-suit.

(b) The Disclosure of Infringement Contentions shall contain thefollowing information:

(1) Each claim of each patent in suit that is allegedly infringed byeach opposing party;

PR-6

(2) Separately for each asserted claim, each accused apparatus,method, composition or other instrumentality (“AccusedInstrumentality”) of each accused party of which the claiming party isaware. This identification shall be as specific as possible, with eachapparatus identified by name or model number, if known, and eachmethod identified by name, if known;

(3) A chart identifying specifically where each element of eachasserted claim is found within each Accused Instrumentality,including for each element that such party contends is governed by 35U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s)in the Accused Instrumentality that performs the claimed function;

(4) Whether each element of each asserted claim is claimed to beliterally present, present under the doctrine of equivalents, or both, inthe Accused Instrumentality; and

(5) For any patent that claims priority to an earlier application, thepriority date to which each asserted claim allegedly is entitled.

(c) With the Disclosure of Infringement Contentions, the partyclaiming patent infringement must produce to each opposing party or makeavailable for inspection and copying:

(1) Documents sufficient to evidence each instance of providing theclaimed invention to a third party, by sale, offer to sell, or othermanner of transfer, prior to the date of application for the patent insuit;

(2) All documents evidencing the conception, reduction to practice,design, and development of each claimed invention, which werecreated on or before the date of application for the patent in suit or thepriority date identified pursuant in the Disclosure, whichever isearlier;

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

(4) A copy of all non-U.S. patents claiming a common priority withany patent asserted in the case, together with a copy of all prior artcited in such non-U.S. patent proceedings.

PR-7

(d) A party’s production of a document as required herein shall notconstitute an admission that such document evidences or is prior art under35 U.S.C. § 102.

LPR 4.2. RESPONSE TO INFRINGEMENT CONTENTIONS

(a) A party opposing a claim of infringement shall make the followingResponse to Infringement Contentions within the time period provided bythese rules:

(1) The Response to Infringement Contentions shall include a chartresponsive to the claims chart contained within the Disclosure ofInfringement Contentions, and shall either acknowledge or deny whethereach element of each asserted claim is found within each AccusedInstrumentality;

(2) The Response to Infringement Contentions shall include a copy ofsource code, specifications, schematics, flow charts, artwork, formulas, orother documentation sufficient to show the operation or composition of anAccused Instrumentality identified in the Disclosure of InfringementContentions within the time period specified by these Rules.

LPR 4.3. INVALIDITY CONTENTIONS.

(a) Each party opposing a claim of patent infringement, and each partyseeking a declaratory judgment of patent invalidity, shall serve on all partiesits Disclosure of Invalidity Contentions at the time specified in these rules,which shall contain the following information:

(1) The identity of each item of prior art that allegedly anticipateseach asserted claim or renders it obvious.

(i) Prior art under 35 U.S.C. § 102(b) shall be identified byspecifying the item offered for sale or publicly used or known,the date the offer or use took place or the information becameknown, and the identity of the person or entity which made theuse or which made and received the offer, or the person orentity which made the information known or to whom it wasmade known.

(ii) Prior art under 35 U.S.C. § 102(f) shall be identified byproviding the name of the person(s) or entity(ies) from whom

PR-8

and the circumstances under which the invention or any part ofit was derived. (iii) Prior art under 35 U.S.C. § 102(g) shall be identified byproviding the identities of the person(s) or entity(ies) involvedin and the circumstances surrounding the making of theinvention before the patent applicant(s);

(2) For each item of prior art disclosed, whether each item of prior artanticipates each asserted claim or renders it obvious. If the disclosingparty contends that a combination of items of prior art makes a claimobvious, each such combination, and the motivation to combine suchitems, shall be identified.

(3) A chart identifying where specifically in each alleged item of priorart each element of each asserted claim is found;

(4) Any grounds of invalidity based on any applicable provision of 35U.S.C. § 112.

(b) The Disclosure shall include a copy of each item of prior artidentified in the Disclosure comprising a printed publication if such item ofprior art does not appear in the file history of the patent(s) at issue. To theextent any such item is not in English, an English translation of theportion(s) relied upon shall be produced.

LPR 4.4. TIME FOR DISCLOSURES

(a) A plaintiff pleading infringement of a patent shall first make itsDisclosure of Infringement Contentions within thirty (30) days after filing ofthe Joint Preliminary Report and Discovery Plan. A plaintiff seeking adeclaratory judgment of patent invalidity or non-infringement shall likewisefirst make its Disclosure of Invalidity Contentions within thirty (30) daysafter filing of the Joint Preliminary Report and Discovery Plan.

(b) A defendant responding to a declaratory judgment action andpleading infringement of a patent in a counterclaim shall first make itsDisclosure of Infringement Contentions within thirty (30) days after serviceof the plaintiff’s Disclosure of Invalidity Contentions. A defendantopposing a claim of patent infringement shall first make its Disclosure ofInvalidity Contentions and its Response to Infringement within thirty (30)

PR-9

days after the plaintiff’s Disclosure of Infringement Contentions.

(c) A plaintiff seeking a declaratory judgment of patent invalidity ornon-infringement, and responding to a counter-claim of patent infringement,shall produce its Response to Infringement Contentions within twenty (20)days after the defendant’s Disclosure of Infringement Contentions.

LPR 4.5. SUPPLEMENTING OR AMENDING CONTENTIONS.

(a) Disclosures and Responses shall have such binding effect on aparty as a response to an interrogatory under Rule 33 of the Federal Rules ofCivil Procedure.

(b) Each party’s Disclosures or Response shall be supplemented oramended pursuant to the rules for supplementation and amendment ofdiscovery responses generally provided for under the Federal Rules of CivilProcedure.

(c) In addition, any amendment or modification of the Disclosures orResponses which a party believes are required in light of a either a claimconstruction ruling by the Court or a modification of an opposing party’sDisclosure or Response shall be made within thirty (30) days of service ofsuch ruling, Disclosure or Response.

LPR 5: BIFURCATION AND WILLFUL INFRINGEMENTISSUES

LPR 5.1. PRESUMPTION AGAINST BIFURCATION

There shall be a rebuttable presumption against the bifurcation ofdamages from liability issues in patent cases for purposes of either discoveryor trial.

LPR 5.2. DISCOVERY OF THE SUBSTANCE OF OPINIONS OFCOUNSEL

(a) The substance of any advice of counsel tendered in defense to acharge of willful infringement, and any other information which might bedeemed to be within the scope of a waiver attendant to disclosure of suchadvice, shall not be discoverable until the earlier of:

(1) five (5) days after a ruling on summary judgment indicating a

PR-10

triable issue of fact to which willfulness would be relevant; or

(2) thirty (30) days prior to the close of fact discovery under thediscovery track to which the case is assigned.

(b) On the day such willfulness information becomes discoverable, theparty relying on such advice shall produce the following:

(1) a copy of all written opinions to be relied on by the party opposingthe claim of infringement;

(2) a copy of all materials or information provided to the attorney inconnection with the advice;

(3) a copy of all written attorney-work product developed in thecourse of preparation of the opinion and which work product wasdisclosed to the client;

(4) identification of the date, sender and recipient (but not necessarilythe substance) of all written or oral communications between theattorney or law firm rendering any opinions to be relied on, whichcommunications discuss the same subject matter as such opinion.

(c) After such willfulness information becomes discoverable, a partyclaiming willful infringement shall be entitled to take the deposition of anyattorneys rendering the advice relied on and any persons who received suchadvice, including but not limited to any person who claims to have relied onsuch advice.

(d) These rules contain no presumption as to whether any materialsother than those specifically required to be produced by this rule are, in fact,discoverable or subject to the scope of the waiver of any attorney clientprivilege. Resolution of any dispute over disclosure of further material shallbe left to the Court.

LPR 5.3. NO DISQUALIFICATION

(a) An individual lawyer who rendered an opinion tendered in defenseof a charge of willful infringement should not, absent express permissionfrom the Court, examine witnesses or otherwise appear as an advocate in

PR-11

front of a jury where the jury will be determining the question of willfulinfringement.

(b) An individual lawyer involved in the prosecution of a patent-in-suit and whose conduct in connection with such prosecution is to bedetermined by the trier of fact should not, absent express permission fromthe Court, examine witnesses or otherwise appear as an advocate in front ofthe trier of fact where the trier of fact will make any determination of thequestion of inequitable conduct with respect to that patent-in-suit.

(c) No other disqualification or limitation on the participation of anindividual lawyer should be required solely based on the fact that the lawyerrendered an opinion tendered in defense of a charge of willful infringementor the fact that there is a claim of inequitable conduct with regard to a patentin which the lawyer was involved in the prosecution of the particular patent-in-suit unless the party moving for disqualification or limitation ofparticipation shall demonstrate a basis for such under the Georgia Rules ofProfessional Conduct or applicable case authority, or shall otherwise showgood cause for such disqualification or limitation of participation.

(d) With regard to motions made pursuant to (c), counsel shall not bedisqualified or limited from participation in the case, pursuant to these rules,prior to a ruling on such a motion.

LPR 6: CLAIM CONSTRUCTION PROCEEDINGS

LPR 6.1. EXCHANGE OF PROPOSED TERMS

(a) Not later than ninety (90) days after filing of the Joint PreliminaryReport and Discovery Plan, each party shall simultaneously exchange a listof claim terms, phrases, or clauses which that party contends should beconstrued by the Court, and identify any claim element which that partycontends should be governed by 35 U.S.C. § 112(6).

(b) The parties shall thereafter meet and confer for the purposes offinalizing this list, narrowing or resolving differences.

LPR 6.2. EXCHANGE OF PRELIMINARY CONSTRUCTIONS

(a) Not later than twenty (20) days after the exchange of ProposedTerms, for Construction, the parties shall simultaneously exchange apreliminary proposed construction of each claim term, phrase, or clausewhich any party has identified for claim construction purposes. Each such

PR-12

Preliminary Claim Construction shall also, for each element which any partycontends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s),or material(s) in the specification corresponding to that element.

(b) At the same time the parties exchange their respective PreliminaryClaim Constructions they shall each also provide a preliminary identificationof extrinsic evidence, including without limitation, dictionary definitions,citations to learned treatises and prior art, and testimony of percipient andexpert witnesses intended to support the respective claim constructions. Theparties shall identify each such item of extrinsic evidence by productionnumber or produce a copy of any such item not previously produced. Withrespect to any such witness, percipient or expert, the parties shall alsoprovide a brief description of the substance of that witness’ proposedtestimony.

(c) The parties shall thereafter meet and confer for the purposes ofnarrowing the issues and finalizing preparation of a Joint ClaimConstruction Statement.

LPR 6.3. JOINT CLAIM CONSTRUCTION STATEMENT

(a) Not later than one hundred and thirty (130) days after the filing ofthe Joint Preliminary Report and Discovery Plan, the parties shall completeand file a Joint Claim Construction Statement,

(b) The Joint Claim Construction Statement shall contain thefollowing information:

(1) The construction of those claim terms, phrases, or clauses onwhich the parties agree;(2) Each party’s proposed construction of each disputed claim term,phrase, or clause, together with an identification of all references fromthe specification or prosecution history that support that construction,and an identification of any extrinsic evidence known to the party onwhich it intends to rely either to support its proposed construction ofthe claim or to oppose any other party’s proposed construction of theclaim; (3) The anticipated length of time necessary for the ClaimConstruction Hearing;(4) Whether any party proposes to call one or more witnesses,including experts, at the Claim Construction Hearing, the identity ofeach such witness, and for each expert, a summary of each opinion tobe offered in sufficient detail to permit a meaningful deposition of that

PR-13

expert. No other Rule 26 report or disclosure shall be required fortestimony directed solely towards claim construction.

LPR 6.4. COMPLETION OF CLAIM CONSTRUCTIONDISCOVERY

(a) No later than fifteen (15) days after service and filing of the JointClaim Construction Statement, the parties shall complete all discoveryrelating to claim construction, including any depositions with respect toclaim construction of any witnesses, including experts, identified in the JointClaim Construction Statement.

(b) Discovery from an individual on claim construction issues shallnot prevent a prior or subsequent deposition of the same individual on otherissues.

LPR 6.5. CLAIM CONSTRUCTION BRIEFS

(a) Not later than thirty (30) days after serving and filing the JointClaim Construction Statement, each party shall serve and file an openingbrief and any evidence supporting its claim construction.

(b) Not later than twenty (20) days after service upon it of an openingbrief, each party shall serve and file its responsive brief and supportingevidence.

LPR 6.6. CLAIM CONSTRUCTION HEARING

Subject to the convenience of the Court’s calendar, the Court shallconduct a Claim Construction Hearing to the extent the Court believe ahearing is necessary for construction of the claims at issue.

LPR 6.7. DISCOVERY AFTER CLAIM CONSTRUCTION

If at the time the Court issues its claim construction ruling, there arefewer than thirty (30) days left for discovery pursuant to the discovery trackto which the case was assigned pursuant to the Local Rules, the parties shallhave an additional forty-five (45) days in which to take discovery after theCourt files and serves its claim construction ruling.

LPR 7: EXPERT WITNESSES

PR-14

LPR 7.1. DISCLOSURE OF EXPERTS AND EXPERT REPORTS

(a) For issues other than claim construction to which expert testimonyshall be directed, expert witness disclosures and depositions shall begoverned by this rule.

(b) No later than thirty (30) days after (1) the normal close ofdiscovery pursuant to the discovery track to which the case was assigned, or(2) the close of discovery after claim construction, which ever is later, eachparty shall make its initial expert witness disclosures required by Rule 26 onthe issues on which each bears the burden of proof;

(c) No later than thirty (30) days after the first round of disclosures,each party shall make its initial expert witness disclosures required by Rule26 on the issues on which the opposing party bears the burden of proof;

(d) No later than ten (10) days after the second round of disclosures,each party shall make any rebuttal expert witness disclosures permitted byRule 26.

LPR 7.2. DEPOSITIONS OF EXPERTS

Depositions of expert witnesses disclosed under this Rule shallcommence within seven (7) days of the deadline service of rebuttal reportsand shall be completed within thirty (30) days after commencement of thedeposition period. If the party taking the deposition agrees to pay thereasonable travel expenses of the expert, and absent good cause otherwiseshown, the party designating the expert shall make its expert witnessavailable for deposition in this District.

LPR 7.3. PRESUMPTION AGAINST SUPPLEMENTATION ORAMENDMENT

Because of the complexity of the issues often present in patent cases,amendments or supplementation to expert reports after the deadlinesprovided here are presumptively prejudicial and shall not be allowed unless(a) the tendering party shows cause that the amendment or supplementationcould not reasonably have been made earlier and (b) all reasonable steps aremade to ameliorate the prejudice to the responding party.

UNITED STATES DISTRICT COURT FOR THENORTHERN DISTRICT OF ILLINOIS

LOCAL PATENT RULES

PREAMBLE

1. SCOPE OF RULES

LPR 1.1 Application and ConstructionLPR 1.2 Initial Scheduling Conference LPR 1.3 Fact DiscoveryLPR 1.4 ConfidentialityLPR 1.5 Certification of DisclosuresLPR 1.6 Admissibility of DisclosuresLPR 1.7 Relationship to Federal Rules of Civil Procedure

2. PATENT INITIAL DISCLOSURES

LPR 2.1 Initial DisclosuresLPR 2.2 Initial Infringement ContentionsLPR 2.3 Initial Non-Infringement, Unenforceability and Invalidity ContentionsLPR 2.4 Document Production Accompanying Initial Invalidity ContentionsLPR 2.5 Initial Response to Invalidity ContentionsLPR 2.6 Disclosure Requirement in Patent Cases Initiated

by Complaint for Declaratory Judgment

3. FINAL CONTENTIONS

LPR 3.1 Final Infringement, Unenforceability and Invalidity ContentionsLPR 3.2 Final Non-infringement, Enforceability and Validity ContentionsLPR 3.3 Document Production Accompanying Final Invalidity ContentionsLPR 3.4. Amendment of Final ContentionsLPR 3.5 Final Date to Seek Stay Pending ReexaminationLPR 3.6 Discovery Concerning Opinions of Counsel


LPR4.1 Exchange of Proposed Claim Terms To Be Construed Along With Proposed Constructions

LPR 4.2 Claim Construction BriefsLPR 4.3 Claim Construction Hearing

5. EXPERT WITNESSES

LPR 5.1 Disclosure of Experts and Expert ReportsLPR 5.2 Depositions of ExpertsLPR 5.3 Presumption Against Supplementation of Reports

6. DISPOSITIVE MOTIONS

LPR 6.1 Final Day for Filing Dispositive Motions

UNITED STATES DISTRICT COURT FOR THENORTHERN DISTRICT OF ILLINOIS

LOCAL PATENT RULES

PREAMBLE

These Local Patent Rules provide a standard structure for patent cases that will permit greaterpredictability and planning for the Court and the litigants. These Rules also anticipate and address manyof the procedural issues that commonly arise in patent cases. The Court’s intention is to eliminate theneed for litigants and judges to address separately in each case procedural issues that tend to recur inthe vast majority of patent cases.

The Rules require, along with a party’s disclosures under Federal Rule of Civil Procedure26(a)(1), meaningful disclosure of each party’s contentions and support for allegations in the pleadings. Complaints and counterclaims in most patent cases are worded in a bare-bones fashion, necessitatingdiscovery to flesh out the basis for each party’s contentions. The Rules require the parties to providethe particulars behind allegations of infringement, non-infringement, and invalidity at an early date. Because Federal Rule of Civil Procedure 11 requires a party to have factual and legal support forallegations in its pleadings, early disclosure of the basis for each side’s allegations will impose no unfairhardship and will benefit all parties by enabling a focus on the contested issues at an early stage of thecase. The Rules’ supplementation of the requirements of Rule 26(a)(1) and other Federal Rules is alsoappropriate due to the various ways in which patent litigation differs from most other civil litigation,including its factual complexity; the routine assertion of counterclaims; the need for the Court toconstrue, and thus for the parties to identify, disputed language in patent claims; and the variety of waysin which a patent may be infringed or invalid.

The initial disclosures required by the Rules are not intended to confine a party to thecontentions it makes at the outset of the case. It is not unusual for a party in a patent case to learnadditional grounds for claims of infringement, non-infringement, and invalidity as the case progresses. After a reasonable period for fact discovery, however, each party must provide a final statement of itscontentions on relevant issues, which the party may thereafter amend only “upon a showing of goodcause and absence of unfair prejudice, made in timely fashion following discovery of the basis for theamendment.” LPR 3.4.

The Rules also provide a standardized structure for claim construction proceedings, requiringthe parties to identify and exchange position statements regarding disputed claim language beforepresenting disputes to the Court. The Rules contemplate that claim construction will be done, in mostcases, toward the end of fact discovery. The committee of lawyers and judges that drafted and proposedthe Rules considered placing claim construction at both earlier and later spots in the standard schedule. The decision to place claim construction near the end of fact discovery is premised on the determinationthat claim construction is more likely to be a meaningful process that deals with the truly significantdisputed claim terms if the parties have had sufficient time, via the discovery process, to ascertain whatclaim terms really matter and why and can identify (as the Rules require) which are outcomedeterminative. The Rules’ placement of claim construction near the end of fact discovery does notpreclude the parties from proposing or the Court from requiring an earlier claim construction in a

1

particular case. This may be appropriate in, for example, a case in which it is apparent at an early stagethat the outcome will turn on one claim term or a small number of terms that can be identified withouta significant amount of fact discovery.

Finally, the Rules provide for a standardized protective order that is deemed to be in effect uponthe initiation of the lawsuit. This is done for two reasons. First, confidentiality issues abound in patentlitigation. Second, early entry of a protective order is critical to enable the early initial disclosures ofpatent-related contentions that the Rules require. Absent a “default” protective order, the making ofinitial disclosures, and thus the entire schedule, would be delayed while the parties negotiated aprotective order. The parties may, either at the outset of the case or later, seek a revised protective orderthat is more tailored to their case. Because, however, the Rules provide for automatic entry of thedefault protective order, the desire to negotiate a more tailored version is not a basis to delay thedisclosure and discovery schedule that the Rules contemplate.

2

1. SCOPE OF RULES

LPR 1.1 Application and Construction

These Rules (“LPR”) apply to all cases filed in or transferred to this District after theireffective date in which a party makes a claim of infringement, non-infringement, invalidity, orunenforceability of a utility patent. The Court may apply all or part of the LPR to any such casealready pending on the effective date of the LPR. The Court may modify the obligations anddeadlines of the LPR based on the circumstances of any particular case. If a party files, prior to theClaim Construction Proceedings provided for in LPR Section 5, a motion that raises claimconstruction issues, the Court may defer the motion until after the Claim Construction Proceedings.

LPR 1.2 Initial Scheduling Conference

In their conference pursuant to Fed. R. Civ. P. 26(f), the parties must discuss and addressthose matters found in the form scheduling order contained in LPR Appendix “A.” A completedproposed version of the scheduling order is to be presented to the Court within seven (7) days afterthe Rule 26(f) conference or at such other time as the Court directs.

LPR 1.3 Fact Discovery

Fact discovery shall commence upon the date for the Initial Disclosures under LPR 2.1 andshall be completed twenty-eight (28) days after the date for exchange of claim terms and phrasesunder LPR 4.1. Fact discovery may resume upon entry of a claim construction ruling and shall endforty-two (42) days after entry of the claim construction ruling.

LPR 1.4 Confidentiality

The protective order found in LPR Appendix B shall be deemed to be in effect as of thedate for each party’s Initial Disclosures. Any party may move the Court to modify the Appendix Bprotective order for good cause. The filing of such a motion does not affect the requirement for ortiming of any of the disclosures required by the LPR.

LPR 1.5 Certification of Disclosures

All disclosures made pursuant to LPR 2.2, 2.3, 2.4, 2.5, 3.1, and 3.2 must be dated and signedby counsel of record (or by the party if unrepresented by counsel) and are subject to therequirements of Federal Rules of Civil Procedure 11 and 26(g).

LPR 1.6 Admissibility of Disclosures

The disclosures provided for in LPR 2.2, 2.3, 2.4, and 2.5 are inadmissible as evidence on themerits.

CommentThe purpose of the initial disclosures pursuant to LPR 2.2 – 2.5 is to identify

the likely issues in the case, to enable the parties to focus and narrow their discoveryrequests. Permitting use of the initial disclosures as evidence on the merits would

3

defeat this purpose. A party may make reference to the initial disclosures for anyother appropriate purpose.

LPR 1.7 Relationship to Federal Rules of Civil Procedure

A party may not object to mandatory disclosures under Federal Rule of Civil Procedure 26(a)or to a discovery request on the ground that it conflicts with or is premature under the LPR, exceptto the following categories of requests and disclosures:

(a) requests for a party’s claim construction position;

(b) requests to the patent claimant for a comparison of the asserted claims and theaccused apparatus, device, process, method, act, or other instrumentality;

(c) requests to an accused infringer for a comparison of the asserted claims and the priorart;

(d) requests to an accused infringer for its non-infringement contentions; and

(e) requests to the patent claimant for its contentions regarding the presence of claimelements in the prior art.

Federal Rule of Civil Procedure 26’s requirements concerning supplementation of disclosureand discovery responses apply to all disclosures required under the LPR.


CommentLPR 2.2 – 2.5 supplements the initial disclosures required by Federal Rule of

Civil Procedure 26(a)(1). As stated in the comment to LPR 1.6, the purpose of theseprovisions is to require the parties to identify the likely issues in the case, to enablethem to focus and narrow their discovery requests. To accomplish this purpose, theparties’ disclosures must be meaningful – as opposed to boilerplate - and non-evasive. These provisions should be construed accordingly when applied toparticular cases.

LPR 2.1 Initial Disclosures

The plaintiff and any defendant that files an answer or other response to the complaint shallexchange their initial disclosures under Federal Rule of Civil Procedure 26(a)(1) (“InitialDisclosures”) within fourteen (14) days after the defendant files its answer or other response,provided, however, if defendant asserts a counterclaim for infringement of another patent, the InitialDisclosures shall be within fourteen (14) days after the plaintiff files its answer or other response tothat counterclaim. As used in this Rule, the term “document” has the same meaning as in FederalRule of Civil Procedure 34(a):

4

(a) A party asserting a claim of patent infringement shall produce or make the followingavailable for inspection and copying along with its Initial Disclosures, to the extent they are in theparty’s possession, custody or control.

(1) all documents concerning any disclosure, sale or transfer, or offer to sell ortransfer, of any item embodying, practicing or resulting from the practice of the claimedinvention prior to the date of application for the patent in suit. Production of a documentpursuant to this Rule is not an admission that the document evidences or is prior art under35 U.S.C. § 102;

(2) all documents concerning 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 a priority date otherwise identified for the patent in suit,whichever is earlier;

(3) all documents concerning communications to and from the U.S. PatentOffice for each patent in suit and for each patent on which a claim for priority is based; and

(4) all documents concerning ownership of the patent rights by the partyasserting patent infringement.

The producing party shall separately identify by production number which documentscorrespond to each category.

(b) A party opposing a claim of patent infringement shall produce or make the followingavailable for inspection and copying, along with its Initial Disclosures:

(1) documents sufficient to show the operation and construction of all aspects orelements of each accused apparatus, product, device, component, process, method or otherinstrumentality identified with specificity in the pleading of the party asserting patentinfringement; and

(2) a copy of each item of prior art of which the party is aware that allegedlyanticipates each asserted patent and its related claims or renders them obvious or, if a copy isunavailable, a description sufficient to identify the prior art and its relevant details.

LPR 2.2 Initial Infringement Contentions

A party claiming patent infringement must serve on all parties “Initial InfringementContentions” containing the following information within fourteen (14) days after the InitialDisclosure under LPR 2.1:

(a) identification each claim of each patent in suit that is allegedly infringed by theopposing party, including for each claim the applicable statutory subsection of 35 U.S.C. § 271;

(b) separately for each asserted claim, identification of each accused apparatus, product,device, process, method, act, or other instrumentality (“Accused Instrumentality”) of the opposingparty of which the party claiming infringement is aware. Each Accused Instrumentality must be

5

identified by name, if known, or by any product, device, or apparatus which, when used, allegedlyresults in the practice of the claimed method or process;

(c) a chart identifying specifically where each element of each asserted claim is foundwithin each Accused Instrumentality, including for each element that such party contends isgoverned by 35 U.S.C. § 112(6), a description of the claimed function of that element and theidentity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs theclaimed function;

(d) identification of whether each element of each asserted claim is claimed to be presentin the Accused Instrumentality literally or under the doctrine of equivalents. For any claim underthe doctrine of equivalents, the Initial Infringement Contentions must include an explanation ofeach function, way, and result that is equivalent and why any differences are not substantial;

(e) for each claim that is alleged to have been indirectly infringed, an identification ofany direct infringement and a description of the acts of the alleged indirect infringer that contributeto or are inducing that direct infringement. If alleged direct infringement is based on joint acts ofmultiple parties, the role of each such party in the direct infringement must be described;

(f) for any patent that claims priority to an earlier application, the priority date to whicheach asserted claim allegedly is entitled;

(g) identification of the basis for any allegation of willful infringement; and

(h) if a party claiming patent infringement wishes to preserve the right to rely, for anypurpose, on the assertion that its own or its licensee’s apparatus, product, device, process, method,act, or other instrumentality practices the claimed invention, the party must identify, separately foreach asserted patent, each such apparatus, product, device, process, method, act, or otherinstrumentality that incorporates or reflects that particular claim, including whether it is marked withthe patent number.

LPR 2.3 Initial Non-Infringement, Unenforceability and Invalidity Contentions

Each party opposing a claim of patent infringement or asserting invalidity orunenforceability shall serve upon all parties its “Initial Non-Infringement, Unenforceability andInvalidity Contentions” within fourteen (14) days after service of the Initial InfringementContentions. Such Initial Contentions shall be as follows:

(a) Non-Infringement Contentions shall contain a chart, responsive to the chart requiredby LPR 2.2(c), that identifies as to each identified element in each asserted claim, to the extent thenknown by the party opposing infringement, whether such element is present literally or under thedoctrine of equivalents in each Accused Instrumentality and, if not, the reason for such denial andthe relevant distinctions.

(b) Invalidity Contentions must contain the following information to the extent thenknown to the party asserting invalidity:

(1) identification, with particularity, of each item of prior art that allegedlyanticipates each asserted claim or renders it obvious. Each prior art patent shall be identified

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by its number, country of origin, and date of issue. Each prior art publication must beidentified by its title, date of publication, and where feasible, author and publisher. Prior artunder 35 U.S.C. § 102(b) shall be identified by specifying the item offered for sale or publiclyused or known, the date the offer or use took place or the information became known, andthe identity of the person or entity which made the use or which made and received theoffer, 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 of theperson(s) from whom and the circumstances under which the invention or any part of it wasderived. Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities ofthe person(s) or entities involved in and the circumstances surrounding the making of theinvention before the patent applicant(s);

(2) a statement of whether each item of prior art allegedly anticipates eachasserted claim or renders it obvious. If a combination of items of prior art allegedly makes aclaim obvious, each such combination, and the reasons to combine such items must beidentified;

(3) a chart identifying where specifically in each alleged item of prior art eachelement of each asserted claim is found, including for each element that such party contendsis governed by 35 U.S.C. § 112(6), a description of the claimed function of that element andthe identity of the structure(s), act(s), or material(s) in each item of prior art that performsthe claimed function; and

(4) a detailed statement of any grounds of invalidity based on indefinitenessunder 35 U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1).

(c) Unenforceability contentions shall identify the acts allegedly supporting and all basesfor the assertion of unenforceability.

LPR 2.4 Document Production Accompanying Initial Invalidity Contentions

With the Initial Non-Infringement and Invalidity Contentions under LPR 2.3, the partyopposing a claim of patent infringement shall supplement its Initial Disclosures and, in particular,must produce or make available for inspection and copying:

(a) any additional documentation showing the operation of any aspects or elements ofan Accused Instrumentality identified by the patent claimant in its LPR 2.2 chart; and

(b) a copy of any additional items of prior art identified pursuant to LPR 2.3 that doesnot appear in the file history of the patent(s) at issue.

LPR 2.5 Initial Response to Invalidity Contentions

Within fourteen (14) days after service of the Initial Non-Infringement and InvalidityContentions under LPR 2.3, each party claiming patent infringement shall serve upon all parties its“Initial Response to Invalidity Contentions.” The Initial Response to Invalidity Contentions shallcontain a chart, responsive to the chart required by LPR 2.3(b)(3), that states as to each identifiedelement in each asserted claim, to the extent then known, whether the party admits to the identity ofelements in the prior art and, if not, the reason for such denial.

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LPR 2.6 Disclosure Requirement in Patent Cases Initiatedby Complaint for Declaratory Judgment

In a case initiated by a complaint for declaratory judgment in which a party files a pleadingseeking a judgment that a patent is not infringed, is invalid, or is unenforceable, LPR 2.2 and 2.3shall not apply unless a party makes a claim for patent infringement. If no claim of infringement ismade, the party seeking a declaratory judgment must comply with LPR 2.3 and 2.4 within twenty-eight (28) days after the Initial Disclosures.

3. FINAL CONTENTIONS

LPR 3.1 Final Infringement, Unenforceability and Invalidity Contentions

A party claiming patent infringement must serve on all parties “Final InfringementContentions” containing the information required by LPR 2.2 (a)–(h) within twenty-one (21) weeksafter the due date for service of Initial Infringement Contentions. Each party asserting invalidity orunenforceability of a patent claim shall serve on all other parties, at the same time that the FinalInfringement Contentions are served, “Final Unenforceability and Invalidity Contentions”containing the information required by LPR 2.3 (b), (c).

LPR 3.2 Final Non-infringement, Enforceability and Validity Contentions

Each party asserting non-infringement of a patent claim shall serve on all other parties “FinalNon-infringement Contentions” within twenty-eight (28) days after service of the FinalInfringement Contentions, containing the information called for in LPR 2.3(a). Each party assertingpatent infringement shall serve, at the same time the “Final Non-Infringement Contentions” areserved, Final Contentions in Response to any “Final Unenforceability and Invalidity Contentions.”

LPR 3.3 Document Production Accompanying Final Invalidity Contentions

With the Final Invalidity Contentions, the party asserting invalidity of any patent claim shallproduce or make available for inspection and copying: a copy or sample of all prior art identifiedpursuant to LPR 3.2, to the extent not previously produced, that does not appear in the file historyof the patent(s) at issue. If any such item is not in English, an English translation of the portion(s)relied upon shall be produced. The translated portion of the non-English prior art shall be sufficientto place in context the particular matter upon which the party relies.

The producing party shall separately identify by production number which documentscorrespond to each category.

LPR 3.4. Amendment of Final Contentions

A party may amend its Final Infringement Contentions or Final Non-infringement andInvalidity Contentions only by order of the Court upon a showing of good cause and absence ofunfair prejudice to opposing parties, made promptly upon discovery of the basis for the amendment. An example of a circumstance that may support a finding of good cause, absent undue prejudice tothe non-moving party, includes a claim construction by the Court different from that proposed bythe party seeking amendment.

8

The duty to supplement discovery responses does not excuse the need to obtain leave ofcourt to amend contentions.

LPR 3.5 Final Date to Seek Stay Pending Reexamination

Absent exceptional circumstances, no party may file a motion to stay the lawsuit pendingreexamination in the U.S. Patent Office after the due date for service of the Final Contentionspursuant to LPR 3.2.

LPR 3.6 Discovery Concerning Opinions of Counsel

(a) The substance of a claim of reliance on advice of counsel offered in defense to acharge of willful infringement, and other information within the scope of a waiver of the attorney-client privilege based upon disclosure of such advice, is not subject to discovery until thirty-five (35)days prior to the close of the period of fact discovery that, under LPR 1.3, follows the court’s claimconstruction ruling.

(b) On the day advice of counsel information becomes discoverable under LPR 3.6(a), aparty claiming reliance on advice of counsel shall disclose to all other parties the following:

(1) All written opinions of counsel upon which the party will rely;

(2) All information provided to the attorney in connection with the advice;

(3) All written attorney work product developed in preparing the opinion thatthe attorney disclosed to the client; and

(4) Identification of the date, sender and recipient of all written and oralcommunications with the attorney or law firm concerning the subject matterof the advice by counsel.

(c) After advice of counsel information becomes discoverable under LPR 3.6(a), a partyclaiming willful infringement may take the deposition of any attorneys preparing or rendering theadvice relied upon and any persons who received or claims to have relied upon such advice.

(d) This Rule does not address whether materials other than those listed in LPR3.6(b)(1-4) are subject to discovery or within the scope of any waiver of the attorney client privilege.


LPR4.1 Exchange of Proposed Claim Terms To Be Construed Along With Proposed Constructions

(a) Within fourteen (14) days after service of the Final Contentions pursuant to LPR 3.2,each party shall serve a list of (i) the claim terms and phrases the party contends the Court shouldconstrue; (ii) the party’s proposed constructions; (iii) identification of any claim element that theparty contends is governed by 35 U.S.C. § 112(6); and (iv) the party’s description of the function of

9

that element, and the structure(s), act(s), or material(s) corresponding to that element, identified bycolumn and line number with respect to the asserted patent(s).

(b) Within seven (7) days after the exchange of claim terms and phrases, the parties mustmeet and confer and agree upon no more than ten (10) terms or phrases to submit for constructionby the court. No more than ten (10) terms or phrases may be presented to the Court forconstruction absent prior leave of court upon a showing of good cause. The assertion of multiplenon-related patents shall, in an appropriate case, constitute good cause. If the parties are unable toagree upon ten terms, then five shall be allocated to all plaintiffs and five to all defendants. For eachterm to be presented to the Court, the parties must certify whether it is outcome-determinative.

CommentIn some cases, the parties may dispute the construction of more than ten

terms. But because construction of outcome-determinative or otherwise significantclaim terms may lead to settlement or entry of summary judgment, in the majority ofcases the need to construe other claim terms of lesser importance may be obviated. The limitation to ten claim terms to be presented for construction is intended torequire the parties to focus upon outcome-determinative or otherwise significantdisputes.

LPR 4.2 Claim Construction Briefs

(a) Within thirty-five (35) days after the exchange of terms set forth in LPR 4.1, theparties opposing infringement shall file their Opening Claim Construction Brief, which may notexceed twenty-five (25) pages absent prior leave of court. The brief shall identify any intrinsicevidence with citation to the Joint Appendix under LPR 4.2(b) and shall separately identify anyextrinsic evidence the party contends supports its proposed claim construction. If a party offers thetestimony of a witness to support its claim construction, it must include with its brief a sworndeclaration by the witness setting forth the substance of the witness’ proposed testimony, andpromptly make the witness available for deposition concerning the proposed testimony.

(b) On the date for filing the Opening Claim Construction Brief, the parties shall file aJoint Appendix containing the patent(s) in dispute and the prosecution history for each patent. Theprosecution history must be paginated, and all parties must cite to the Joint Appendix whenreferencing the materials it contains. Any party may file a separate appendix to its claimconstruction brief containing other supporting materials.

(c) Within twenty-eight (28) days after filing of the Opening Claim Construction brief,the parties claiming infringement shall file their Responsive Claim Construction Brief, which maynot exceed twenty-five (25) pages absent prior leave of Court. The brief shall identify any intrinsicevidence with citation to the Joint Appendix under LPR 4.2(b) and shall separately identify anyextrinsic evidence the party contends supports its proposed claim construction. If a party offers thetestimony of a witness to support its claim construction, it must include with its brief a sworndeclaration by the witness setting forth the substance of the witness’s proposed testimony andpromptly make the witness available for deposition concerning the proposed testimony, in whichcase the date for the filing of a Reply Claim Construction brief shall be extended by seven (7)calendar days. The brief shall also describe all objections to any extrinsic evidence identified in theOpening Claim Construction Brief.

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(d) Within fourteen (14) days after filing of the Responsive Claim Construction Brief,the parties opposing infringement shall file their Reply Claim Construction Brief, which may notexceed fifteen (15) pages absent prior leave of Court. The brief shall describe all objections to anyextrinsic evidence identified in the Opening Claim Construction Brief.

(e) The presence of multiple alleged infringers with different products or processes shall,in an appropriate case, constitute good cause for allowing additional pages in the Opening,Responsive, or Reply Claim Construction Briefs or for allowing separate briefing as to differentalleged infringers.

(f) Within seven (7) days after filing of the Reply Claim Construction Brief, the partiesshall file (1) a joint claim construction chart that sets forth each claim term and phrase addressed inthe claim construction briefs; each party’s proposed construction, and (2) a joint status reportcontaining the parties’ proposals for the nature and form of the claim construction hearing pursuantto LPR 4.3.

CommentThe committee opted for consecutive claim construction briefs rather than

simultaneous briefs, concluding that consecutive briefing is more likely to promote ameaningful exchange regarding the contested points. For the same reason, thecommittee opted to have the alleged infringer file the opening claim constructionbrief. Patent holders are more likely to argue for a “plain meaning” construction orfor non-construction of disputed terms; alleged infringers tend to be less likely to doso.

The Rules provide for three briefs (opening, response, and reply), not four,due to the likelihood of a claim construction hearing or argument. The Court’sdetermination not to hold a hearing or argument may constitute a basis to permit asurreply brief by the patent holder. A judge may choose not to require a reply brief.

LPR 4.3 Claim Construction Hearing

Unless the Court orders otherwise, a claim construction oral argument or hearing may beheld within twenty-eight (28) days after filing of the Reply Claim Construction Brief. Either beforeor after the filing of claim construction briefs, the Court shall issue an order describing the scheduleand procedures for a claim construction hearing. Any exhibits, including demonstrative exhibits, tobe used at a claim construction hearing must be exchanged no later than three (3) days before thehearing.

5. EXPERT WITNESSES

LPR 5.1 Disclosure of Experts and Expert Reports

Unless the Court orders otherwise,

(a) for issues other than claim construction to which expert testimony shall be directed,expert witness disclosures and depositions shall be governed by this Rule;

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(b) within twenty-one (21) days after the close of discovery after the claim constructionruling, each party shall make its initial expert witness disclosures required by Federal Rule of CivilProcedure 26 on issues for which it bears the burden of proof;

(c) within thirty-five (35) days after the date for initial expert reports, each party shallmake its rebuttal expert witness disclosures required by Federal Rule of Civil Procedure 26 on theissues for which the opposing party bears the burden of proof.

LPR 5.2 Depositions of Experts

Depositions of expert witnesses shall be completed within thirty-five (35) days afterexchange of expert rebuttal disclosures.

LPR 5.3 Presumption Against Supplementation of Reports

Amendments or supplementation to expert reports after the deadlines provided herein arepresumptively prejudicial and shall not be allowed absent prior leave of court upon a showing ofgood cause that the amendment or supplementation could not reasonably have been made earlierand that the opposing party is not unfairly prejudiced.

6. DISPOSITIVE MOTIONS

LPR 6.1 Final Day for Filing Dispositive Motions

All dispositive motions shall be filed within twenty-eight (28) days after the scheduled datefor the end of expert discovery.

CommentThis Rule does not preclude a party from moving for summary judgment at

an earlier stage of the case if circumstances warrant. It is up to the trial judge todetermine whether to consider an “early” summary judgment motion. See also LPR1.1 (judge may defer a motion raising claim construction issues until after claimconstruction hearing is held).

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APPENDIX A

UNITED STATES DISTRICT COURT for the

NORTHERN DISTRICT OF ILLINOIS <Name(s) of plaintiff(s)>,

Plaintiff(s)

v.

<Name(s) of defendant(s)>,

Defendant(s)

) ) ) ) ) ) ) ) ) )

Civil Action No. <Number>

REPORT OF THE PARTIES’ PLANNING MEETING

1. The following persons participated in a Rule 26(f) conference on <Date> by

<State the method of conferring>:

<Name>, representing the <plaintiff> <Name>, representing the <defendant>

2. Initial Disclosures. The parties [have completed] [will complete by <Date>] the

initial disclosures required by Rule 26(a)(1). 3. Disclosures and Discovery Pursuant to Local Patent Rules. The parties

acknowledge that the requirements of the Local Patent Rules apply to this case. 4. Additional Discovery Plan. The parties propose the following in addition to the

discovery plan and schedules addressed in the Local Patent Rules:

(a) <Maximum number of interrogatories by each party to another party, along with the dates the answers are due.>

(b) <Maximum number of requests for admission, along with the dates responses are due.>

(c) <Maximum number of factual depositions by each party.> (d) <Limits on the length of depositions, in hours.> (e) Discovery is permitted with respect to claims of willful infringement and

defenses of patent invalidity or unenforceability not pleaded by a party, where the evidence needed to support these claims or defenses is in whole or in part in the hands of another party.

5. Alternative Discovery Plan. The parties propose a discovery plan that differs from that provided in the Local Patent Rules, for the reasons described with particularity in Exhibit 1 to this Report:

<Use separate paragraphs or subparagraphs if the parties disagree.>

6. Other Dates:

(a) <Dates for supplementations under Rule 26(e).> (b) <A date if the parties ask to meet with the court before a scheduling

order.> (c) <Requested dates for pretrial conferences.> (d) <Final dates for the plaintiff to amend pleadings or to join parties.> (e) <Final dates for the defendant to amend pleadings or to join parties.> (f) <Final dates for submitting Rule 26(a)(3) witness lists, designations of

witnesses whose testimony will be presented by deposition, and exhibit lists.>

(g) <Final dates to file objections under Rule 26(a)(3).> 7. Other Items:

(a) <State the prospects for settlement.> (b) <Identify any alternative dispute resolution procedure that may enhance

settlement prospects.> (c) Communications between a party’s attorney and a testifying expert

relating to the issues on which he/she opines, or to the basis or grounds in support of or countering the opinion, are subject to discovery by the opposing party only to the extent provided in Rule 26(b)(4)(B) and (C).

(d) In responding to discovery requests, each party shall construe broadly terms of art used in the patent field (e.g., “prior art”, “best mode”, “on sale”), and read them as requesting discovery relating to the issue as opposed to a particular definition of the term used. Compliance with this provision is not satisfied by the respondent including a specific definition of the term in its response, and limiting the response to that definition.

(e) The parties [agree/do not agree] the video “An Introduction to the Patent System” distributed by the Federal Judicial Center, should be shown to the jurors in connection with its preliminary jury instructions.

(f) <Other matters.> Date: <Date> <Signature of the attorney or unrepresented

party>

___________________________________ <Printed name> <Address><E-mail address> <Telephone number>

Date: <Date> <Signature of the attorney or unrepresented

party> ___________________________________ <Printed name> <Address> <E-mail address> <Telephone number>

CHICAGO\2552959.1 ID\AJST

1

APPENDIX B

2

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

____________________________, ) )

Plaintiff[s], ) )

vs. ) Case No. _________ )

____________________________, ) )

Defendant[s]. )

PROTECTIVE ORDER

The Court enters the following protective order pursuant to Federal Rule of Civil

Procedure 26(c)(1).

1. Findings: The Court finds that the parties to this case may request or produce

information involving trade secrets or confidential research and development or commercial

information, the disclosure of which is likely to cause harm to the party producing such

information.

2. Definitions:

a. “Party” means a named party in this case. “Person” means an individual or an

entity. “Producer” means a person who produces information via the discovery process in this

case. “Recipient” means a person who receives information via the discovery process in this

case.

b. “Confidential” information is information concerning a person’s business

operations, processes, and technical and development information within the scope of Rule

3

26(c)(1)(G), the disclosure of which is likely to harm that person’s competitive position, or the

disclosure of which would contravene an obligation of confidentiality to a third person or to a

Court.

c. “Highly Confidential” information is information within the scope of Rule

26(c)(1)(G) that is current or future business or technical trade secrets and plans more sensitive

or strategic than Confidential information, the disclosure of which is likely to significantly harm

that person’s competitive position, or the disclosure of which would contravene an obligation

of confidentiality to a third person or to a Court.

d. Information is not Confidential or Highly Confidential if it is disclosed in a printed

publication, is known to the public, was known to the recipient without obligation of

confidentiality before the producer disclosed it, or is or becomes known to the recipient by

means not constituting a breach of this Order. Information is likewise not Confidential or Highly

Confidential if a person lawfully obtained it independently of this litigation.

3. Designation of information as Confidential or Highly Confidential:

a. A person’s designation of information as Confidential or Highly Confidential

means that the person believes in good faith, upon reasonable inquiry, that the information

qualifies as such.

b. A person designates information in a document or thing as Confidential or Highly

Confidential by clearly and prominently marking it on its face as “CONFIDENTIAL” or “HIGHLY

CONFIDENTIAL.” A producer may make documents or things containing Confidential or Highly

Confidential information available for inspection and copying without marking them as

LOCAL RULES

OF THE UNITED STATES DISTRICT COURT

FOR THE

DISTRICT OF MASSACHUSETTS

Including Amendments Through February 1, 2012

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RULE 16.1 EARLY ASSESSMENT OF CASES (a) Scheduling Conference in Civil Cases. In every civil action, except in categories of actions exempted by LR 16.2 as inappropriate for scheduling procedures, the judge or, in the interests of the efficient administration of justice, a designated magistrate judge shall convene a scheduling conference as soon as practicable, but in any event within ninety (90) days after the appearance of a defendant and within one hundred twenty (120) days after the complaint has been served on a defendant. In cases removed to this court from a state court or transferred from any other federal court, the judge or designated magistrate judge shall convene a scheduling conference within sixty (60) days after removal or transfer. (b) Obligation of Counsel to Confer. Unless otherwise ordered by the judge, counsel for the parties must, pursuant to Fed. R. Civ. P. 26(f), confer at least 21 days before the date for the scheduling conference for the purpose of: (1) preparing an agenda of matters to be discussed at the scheduling conference, (2) preparing a proposed pretrial schedule for the case that includes a plan for discovery, and (3) considering whether they will consent to trial by magistrate judge. (c) Settlement Proposals. Unless otherwise ordered by the judge, the plaintiff shall present written settlement proposals to all defendants no later than 14 days before the date for the scheduling conference. Defense counsel shall have conferred with their clients on the subject of settlement before the scheduling conference and be prepared to respond to the proposals at the scheduling conference. (d) Joint Statement. Unless otherwise ordered by the judge, the parties are required to file, no later than seven (7) days before the scheduling conference and after consideration of the topics contemplated by Fed. R. Civ. P. 16(b) & (c) and 26(f), a joint statement containing a proposed pretrial schedule, which shall include: (1) a joint discovery plan scheduling the time and length for all discovery events, that shall

(a) conform to the obligation to limit discovery set forth in Fed. R. Civ. P. 26(b), and

(b) take into account the desirability of conducting phased discovery in which the first phase is limited to developing information needed for a realistic assessment of the case and, if the case does not terminate, the second phase is directed at information needed to prepare for trial; and

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(2) a proposed schedule for the filing of motions; and (3) certifications signed by counsel and by an authorized representative of each party affirming that each party and that party’s counsel have conferred:

(a) with a view to establishing a budget for the costs of conducting the full course--and various alternative courses--of the litigation; and

(b) to consider the resolution of the litigation through the use of alternative dispute resolution programs such as those outlined in LR 16.4.

To the extent that all parties are able to reach agreement on a proposed pretrial schedule, they shall so indicate. To the extent that the parties differ on what the pretrial schedule should be, they shall set forth separately the items on which they differ and indicate the nature of that difference. The purpose of the parties’ proposed pretrial schedule or schedules shall be to advise the judge of the parties’ best estimates of the amounts of time they will need to accomplish specified pretrial steps. The parties’ proposed agenda for the scheduling conference, and their proposed pretrial schedule or schedules, shall be considered by the judge as advisory only. (e) Conduct of Scheduling Conference. At or following the scheduling conference, the judge shall make an early determination of whether the case is “complex” or otherwise appropriate for careful and deliberate monitoring in an individualized and case-specific manner. The judge shall consider assigning any case so categorized to a case management conference or series of conferences under LR 16.3. The factors to be considered by the judge in making this decision include: (1) the complexity of the case (the number of parties, claims, and defenses raised, the legal difficulty of the issues presented, and the factual difficulty of the subject matter); (2) the amount of time reasonably needed by the litigants and their attorneys to prepare the case for trial; (3) the judicial and other resources required and available for the preparation and disposition of the case; (4) whether the case belongs to those categories of cases that:

(a) involve little or no discovery,

(b) ordinarily require little or no additional judicial intervention, or

(c) generally fall into identifiable and easily managed patterns; (5) the extent to which individualized and case-specific treatment will promote the goal of reducing cost and delay in civil litigation; and

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(6) whether the public interest requires that the case receive intense judicial attention. In other respects, the scheduling conference shall be conducted according to the provisions for a pretrial conference under Federal Rule of Civil Procedure 16 and for a case management conference under LR 16.3. (f) Scheduling Orders. Following the conference, the judge shall enter a scheduling order that will govern the pretrial phase of the case. Unless the judge determines otherwise, the scheduling order shall include specific deadlines or general time frameworks for: (1) amendments to the pleadings; (2) service of, and compliance with, written discovery requests; (3) the completion of depositions, including, if applicable, the terms for taking and using videotape depositions; (4) the identification of trial experts; (5) the sequence of disclosure of information regarding experts contemplated by Fed. R. Civ. P. 26(b); (6) the filing of motions; (7) a settlement conference, to be attended by trial counsel and, in the discretion of the judge, their clients;

(8) one or more case management conferences and/or the final pretrial conference; (9) a final pretrial conference, which shall occur within eighteen months after the filing of the complaint; (10) the joinder of any additional parties; (11) any other procedural matter that the judge determines is appropriate for the fair and efficient management of the litigation. (g) Modification of Scheduling Order. The scheduling order shall specify that its provisions, including any deadlines, having been established with the participation of all parties, can be modified only by order of the judge, or the magistrate judge if so authorized by the judge, and only upon a showing of good cause supported by affidavits, other evidentiary materials, or references to pertinent portions of the record. (h) Definition of Judge. As used in this rule, “judge” refers to the United States District Judge to whom the case is assigned or to the United States Magistrate Judge who has been

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assigned the case pursuant to 28 U.S.C. § 636(c), if the Magistrate Judge has been assigned the case prior to the convening of the scheduling conference mandated by this rule. Adopted effective October 1, 1992; amended effective January 2, 1995; December 10, 1996; December 4, 2000; January 2, 2001; December 1, 2009.

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RULE 16.6 SCHEDULING AND PROCEDURES IN PATENT INFRINGEMENT CASES

(A) Additional Items for Consideration by the Court and the Parties In addition to the parties' obligations under Fed. R. Civ. P. 26 (f) and LR 16.1, the parties in cases raising issues of patent infringement shall consider and address in their joint statement under L.R. 16.1 the following issues:

(1) The timing for disclosing initial infringement and invalidity positions;

(2) The process for identifying disputed claim terms, exchanging proposed claim constructions, and claim construction briefing;

(3) The timing of and procedure for the claim construction hearing, including: (a) whether the Court will decide claim construction through live testimony at

a hearing or based on the papers and attorney argument; and (b) the timing of claim construction relative to summary judgment, expert

discovery, and the close of fact discovery. (4) The need for tutorials on the relevant technology, including:

(a) the form and scope of any such tutorials; and

(b) the timing for such tutorials.

(5) The identification of dispositive issues that may lead to an early resolution of the litigation. (6) Whether the court should authorize the filing under seal of any documents that contain confidential information. (7) Procedures for, and limits (if any) to be placed on, the preservation and discovery of electronically stored information, including:

(a) whether preservation and discovery of electronically stored information should be limited to that located on the parties’ active computer systems or extended to backup systems;

(b) the identification of key persons, if any, who should have their

electronically stored information produced;

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(c) whether production of electronically stored information should be limited to discrete time periods;

(d) whether costs of producing electronically stored information should be

shifted, particularly costs of preserving and producing information stored on backup systems.

(B) Scheduling Order

The Scheduling Conference in cases raising issues of patent infringement should result in a special tailored Scheduling Order. A template for such a Scheduling Order is set forth as a default in the Appendix. Adopted effective November 4, 2008. [See Appendix E. Local Rule 16.6 Supplement].

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APPENDIX E LOCAL RULE 16.6 SUPPLEMENT SAMPLE SPECIAL SCHEDULING ORDER FOR PATENT INFRINGEMENT CASES

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SAMPLE SPECIAL SCHEDULING ORDER FOR PATENT INFRINGEMENT CASES This appendix sets forth a sample scheduling order for claim construction and related procedures in patent cases [with suggested timing in brackets]. These procedures should be viewed as supplementing, not replacing, the LR 16.1 schedule. The Court and parties may incorporate such suggested procedures into the LR 16.1 scheduling order.

(A) Preliminary Disclosures (1) Preliminary Infringement Disclosure

No later than _____ [30] days after the Rule 16 Case Management Conference, the patentee shall serve and file preliminary disclosure of the claims infringed. The patentee shall specify which claims are allegedly infringed and identify the accused product(s) or method(s) that allegedly infringe those claims. The patentee shall also specify whether the alleged infringement is literal or falls under the doctrine of equivalents. If the patentee has not already done so, the patentee shall produce all documents supporting its contentions and/or identify any such supporting documents produced by the accused infringer. Such disclosures may be amended and supplemented up to ____ [30] days before the date of the Markman Hearing. After that time, such disclosures may be amended or supplemented only pursuant to ¶ D(1) or by leave of court, for good cause shown.

The patentee may use a table such as that represented below.

CLAIM LIMITATION

ACCUSED COMPONENT

BASIS OF INFRINGEMENT CONTENTION

(2) Preliminary Invalidity and Non-Infringement Disclosures

No later than _____ [60] days after service of the patentee’s preliminary infringement contentions, the accused infringer shall serve and file Preliminary Invalidity and Non-Infringement Contentions. The accused infringer shall identify prior art that anticipates or renders obvious the identified patent claims in question and, for each such prior art reference, shall specify whether it anticipates or is relevant to the obviousness inquiry. If applicable, the accused infringer shall also specify any other grounds for invalidity, such as indefiniteness, best mode, enablement, or written description. If the accused infringer has not already done so, the accused infringer shall produce documents relevant to the invalidity defenses and/or identify any such supporting documents produced by the patentee. Further, if the accused infringer has not already done so, the accused infringer shall produce documents sufficient to show operation of the accused product(s) or method(s) that the patentee identified in its preliminary infringement disclosures. Such disclosures may be amended and supplemented up to ________ [30] days before the date of the Markman Hearing. After that time, such disclosures may be amended or supplemented only pursuant to ¶ D(1) or by leave of court, for good cause shown, except that, if

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the patentee amends or supplements its preliminary infringement disclosures, the accused infringer may likewise amend or supplement its disclosures within ___ [30] days of service of the amended or supplemented infringement disclosures.

The accused infringer may use the charts shown below.

CLAIM LIMITATION

PRIOR ART OR OTHER EVIDENCE

BASIS OF INVALIDITY CONTENTION

CLAIM LIMITATION

ACCUSED COMPONENT

BASIS OF NON-INFRINGEMENT CONTENTION

(1) Disclosures in Declaratory Judgment Actions

In declaratory judgment actions initially filed by potential infringers(i.e., as opposed to being stated by way of answer, counterclaim, or other response to a first-filed complaint for patent infringement), the disclosure requirements of subsections (A)(1) and (2) above apply as if the action had been initiated by the patent holder, except that (a) the preliminary infringement disclosure of the declaratory judgment defendant/patent holder shall be due not less than 90 days after the Rule 16 Case Management Conference and (b), if the declaratory judgment defendant/patent holder does not state a claim for infringement, then only the declaratory judgment plaintiff/potential infringer’s disclosure requirements shall apply.

(B) Claim Construction Proceedings

(1) No later than [120] days after completion of the preliminary disclosures, the

parties shall simultaneously exchange a list of claim terms to be construed and proposed constructions.

(2) No later than [21] days after exchanging the list of claims, the parties shall simultaneously exchange and file preliminary claim construction briefs. Each brief shall contain a list of terms construed, the party’s proposed construction of each term, and evidence and argument supporting each construction. Absent leave of court, preliminary claim construction briefs shall be limited to_____ [25] pages, double spaced, of at least 12-point Times New Roman font or equivalent, including footnotes.

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(3) No later than [14] days following exchange and filing of the preliminary claim construction briefs, parties shall simultaneously exchange reply briefs. Absent leave of court, reply briefs shall be limited to [15] pages, double spaced, of at least 12-point Times New Roman font or equivalent, including footnotes.

(4) No later than [14] days following exchange and filing of the reply briefs, the parties shall finalize the list of disputed terms for the court to construe. The parties shall prepare and file a joint claim construction and prehearing statement (hereafter the “joint statement”) that identifies both agreed and disputed terms.

(a) The joint statement shall note the anticipated length of time necessary for the claim construction hearing and whether any party proposes to call witnesses, including a statement that such extrinsic evidence does not conflict with intrinsic evidence.

(b) The joint statement shall also indicate whether the parties will present tutorials on

the relevant technology, the form of such tutorials, and the timing for such tutorials in relation to the claim construction hearing. If the parties plan to provide tutorials in the form of briefs, declarations, computer animations, slide presentations, or other media, the parties shall exchange such materials _____ [7] days before the claim construction hearing. In the alternative, the parties may present tutorials through presentations by the attorneys or experts at the claim construction hearing.

(c) The joint statement shall include a proposed order in which parties will present

their arguments at the claim construction hearing, which may be term-by-term or party-by-party, depending on the issues in the case.

(d) The joint statement shall limit the number of claim terms to be construed and shall

prioritize the disputed terms in order of importance. The Court suggests that, ordinarily, no more than ten (10) terms per patent be identified as requiring construction.

(e) The joint statement shall include a joint claim construction chart, noting each

party’s proposed construction of each term, and supporting evidence. The parties may use the form shown below.

TERM PATENTEE’S

CONSTRUCTION ACCUSED INFRINGER’S CONSTRUCTION

COURT’S CONSTRUCTION

(C) The Claim Construction Hearing (a.k.a. “Markman Hearing”)

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The Court shall schedule a hearing date promptly after the filing of the joint claim construction statement.

(D) After the Hearing

(1) If necessary, the parties may amend their preliminary infringement/non-infringement and invalidity disclosures, noting whether any infringement or invalidity contentions are withdrawn, within [30] days after the Court’s ruling on the claim construction.

(2) If the fact discovery period has expired before a ruling on claim construction, and

upon motion or stipulation of the parties, the Court may grant additional time for discovery. Such additional discovery shall be limited to issues of infringement, invalidity, or unenforceability dependent on the claim construction.

(E) Expert Discovery

(1) Ordinarily, expert discovery, including expert reports and depositions, shall be

scheduled to occur after the close of fact discovery. (2) If expert discovery has been substantially conducted before a claim construction

ruling, then the Court may grant additional time for supplemental expert discovery. Such additional discovery shall be limited to issues of infringement, invalidity, or unenforceability dependent on the claim construction.

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confidential without forfeiting a claim of confidentiality, so long as the producer causes copies

of the documents or things to be marked as Confidential or Highly Confidential before providing

them to the recipient.

c. A person designates information in deposition testimony as Confidential or

Highly Confidential by stating on the record at the deposition that the information is

Confidential or Highly Confidential or by advising the opposing party and the stenographer and

videographer in writing, within fourteen days after receipt of the deposition transcript, that the

information is Confidential or Highly Confidential.

d. A person’s failure to designate a document, thing, or testimony as Confidential

or Highly Confidential does not constitute forfeiture of a claim of confidentiality as to any other

document, thing, or testimony.

e. A person who has designated information as Confidential or Highly Confidential

may withdraw the designation by written notification to all parties in the case.

f. If a party disputes a producer’s designation of information as Confidential or

Highly Confidential, the party shall notify the producer in writing of the basis for the dispute,

identifying the specific document[s] or thing[s] as to which the designation is disputed and

proposing a new designation for such materials. The party and the producer shall then meet

and confer to attempt to resolve the dispute without involvement of the Court. If they cannot

resolve the dispute, the proposed new designation shall be applied fourteen (14) days after

notice of the dispute unless within that fourteen day period the producer files a motion with

the Court to maintain the producer’s designation. The producer bears the burden of proving

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that the information is properly designated as Confidential or Highly Confidential. The

information shall remain subject to the producer’s Confidential or Highly Confidential

designation until the Court rules on the dispute. A party’s failure to contest a designation of

information as Confidential or Highly Confidential is not an admission that the information was

properly designated as such.

4. Use and disclosure of Confidential [or Highly Confidential] information:

a. Confidential and Highly Confidential information may be used exclusively for

purposes of this litigation, subject to the restrictions of this order.

b. Absent written permission from the producer or further order by the Court, the

recipient may not disclose Confidential information to any person other than the following: (i)

a party’s outside counsel of record, including necessary paralegal, secretarial and clerical

personnel assisting such counsel; (ii) a party’s in‐house counsel; (iii) a party’s officers and

employees directly involved in this case whose access to the information is reasonably required

to supervise, manage, or participate in this case; (iv) a stenographer and videographer

recording testimony concerning the information; (v) subject to the provisions of paragraph 4(d)

of this order, experts and consultants and their staff whom a party employs for purposes of this

litigation only; and (vi) the Court and personnel assisting the Court.

c. Absent written permission from the producer or further order by the Court, the

recipient may not disclose Highly Confidential information to any person other than those

identified in paragraph 4(b)( i), (iv), (v), and (vi).

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d. A party may not disclose Confidential or Highly Confidential information to an

expert or consultant pursuant to paragraph 4(b) or 4(c) of this order until after the expert or

consultant has signed an undertaking in the form of Appendix 1 to this Order. The party

obtaining the undertaking must serve it on all other parties within ten days after its execution.

At least ten days before the first disclosure of Confidential or Highly Confidential information to

an expert or consultant (or member of their staff), the party proposing to make the disclosure

must serve the producer with a written identification of the expert or consultant and a copy of

his or her curriculum vitae. If the producer has good cause to object to the disclosure (which

does not include challenging the qualifications of the expert or consultant), it must serve the

party proposing to make the disclosure with a written objection within ten days after service of

the identification. Unless the parties resolve the dispute within ten days after service of the

objection, the producer must move the Court promptly for a ruling, and the Confidential or

Highly Confidential information may not be disclosed to the expert or consultant without the

Court’s approval.

e. Notwithstanding paragraph 4(a) and (b), a party may disclose Confidential or

Highly Confidential information to: (i) any employee or author of the producer; (ii) any person,

no longer affiliated with the producer, who authored the information in whole or in part; and

(iii) any person who received the information before this case was filed.

f. A party who wishes to disclose Confidential or Highly Confidential information to

a person not authorized under paragraph 4(b) or 4(c) must first make a reasonable attempt to

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obtain the producer’s permission. If the party is unable to obtain permission, it may move the

Court to obtain permission.

5. Copies: A party producing documents as part of discovery must, upon request,

furnish the requesting party with one copy of the documents it requests, at the requesting

party’s expense. Before copying, the parties must agree upon the rate at which the requesting

party will be charged for copying.

6. Inadvertent Disclosure: Inadvertent disclosures of material protected by the

attorney‐client privilege or the work product doctrine shall be handled in accordance with

Federal Rule of Evidence 502.

7. Filing with the Court:

a. This protective order does not, by itself, authorize the filing of any document

under seal. No document may be filed under seal without prior leave of court. A party wishing

to file under seal a document containing Confidential or Highly Confidential information must

move the Court, consistent with Local Rule 26.2(b) and prior to the due date for the document,

for permission to file the document under seal. If a party obtains permission to file a

document under seal, it must also (unless excused by the Court) file a public‐record version that

excludes any Confidential or Highly Confidential information.

b. If a party wishes to file in the public record a document that another producer

has designated as Confidential or Highly Confidential, the party must advise the producer of the

document no later than five business days before the document is due to be filed, so that the

producer may move the Court to require the document to be filed under seal.

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c. Pursuant to Local Rule 5.8, any document filed under seal must be accompanied

by a cover sheet disclosing (i) the caption of the case, including the case number; (ii) the title

“Restricted Document Pursuant to Local Rule 26.2;” (iii) a statement that the document is filed

as restricted in accordance with a court order and the date of the order; and (iv) the signature

of the attorney of record filing the document.

8. Document Disposal: Upon the conclusion of this case, each party must return to

the producer all documents and copies of documents containing the producer’s Confidential [or

Highly Confidential] information, and must destroy all notes, memoranda, or other materials

derived from or in any way revealing confidential or highly confidential information.

Alternatively, if the producer agrees, the party may destroy all documents and copies of

documents containing the producer’s Confidential or Highly Confidential information. The

party returning and/or destroying the producer’s Confidential and Highly Confidential

information must promptly certify in writing its compliance with the requirements of this

paragraph. Notwithstanding the requirements of this paragraph, a party and its counsel may

retain one complete set of all documents filed with the Court, remaining subject to all

requirements of this order.

9. Originals: A legible photocopy of a document may be used as the “original” for

all purposes in this action. The actual “original,” in whatever form the producing party has it,

must be made available to any other party within ten days after a written request.

10. Survival of obligations: This order’s obligations regarding Confidential and Highly

Confidential information survive the conclusion of this case.


FOR THE

DISTRICT OF MINNESOTA

L O C A L R U L E S

Effective May 9, 2011

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FORM 4.

RULE 26(f) REPORT (PATENT CASES)

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

Name of Plaintiff CIVIL FILE NO. _______________ Plaintiff, v. RULE 26(f) REPORT (PATENT CASES) Name of Defendant Defendant. The parties/counsel identified below participated in the meeting required by Fed. R. Civ. P. 26(f) and the Local Rules, on ____________, and prepared the following recommended pretrial scheduling order. The pretrial conference in this matter is scheduled for ____________, before the United States Magistrate Judge _______________ in Room ______, Federal Courts Building, _______________, Minnesota. The parties [request/do not request] that the pretrial be held by telephone. (a) Description of Case

(1) Concise factual summary of Plaintiff's claims, including the patent number(s), date(s) of patent(s), and patentee(s);

(2) Concise factual summary of Defendant's claims/defenses; (3) Statement of jurisdiction (including statutory citations); (4) Summary of factual stipulations or agreements; (5) Statement of whether jury trial has been timely demanded by any party. (b) Pleadings

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(1) Statement of whether all process has been served, all pleadings filed and

any plan for any party to amend pleadings or add additional parties to the action;

(2) Proposed date by which all hearings on motions to amend and/or add

parties to the action shall be heard; Date: ____________ (c) Discovery and Pleading of Additional Claims and Defenses

(1) Discovery is permitted with respect to claims of willful infringement and defenses of patent invalidity or unenforceability not pleaded by a party, where the evidence needed to support these claims or defenses is in whole or in part in the hands of another party.

(2) Once a party has given the necessary discovery, the opposing party may

seek leave of Court to add claims or defenses for which it alleges, consistent with Fed. R. Civ. P. 11, that it has support, and such support shall be explained in the motion seeking leave. Leave shall be liberally given where prima facie support is present, provided that the party seeks leave as soon as reasonably possible following the opposing party providing the necessary discovery.

(d) Fact Discovery

The parties recommend that the Court establish the following fact discovery deadlines and limitations:

(1) All pre-discovery disclosures required by Fed. R. Civ. P. 26(a)(1) shall be

completed on or before ____________. (2) Fact discovery shall be commenced in time to be completed by

____________.

(3) The parties agree and recommend that the Court limit the use and numbers of discovery procedures as follows:

(A) ____________ interrogatories; (B) ____________ document requests; (C) ____________ factual depositions; (D) ____________ requests for admissions;

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(E) ____________ other. (e) Expert Discovery The parties anticipate that they will/will not require expert witnesses at time of trial. (1) The plaintiff anticipates calling ____________ experts in the fields of: (2) The defendant anticipates calling ____________ experts in the fields of:

(3) By the close of fact discovery, the parties shall identify to the opposing party the experts who will provide a report that deals with the issues on which that party has the burden of persuasion.

Alternate recommended date: ____________

(4) Within 30 days after the close of fact discovery the parties shall exchange initial expert reports, which reports shall be in accordance with Fed. R. Civ. P. 26(a)(2)(B) ("Initial Expert Reports"). The Initial Expert Reports from each party shall deal with the issues on which that party has the burden of persuasion.


(5) Within 30 days after the Initial Expert Reports are exchanged Rebuttal Expert Reports shall be exchanged. Rebuttal Expert Reports shall also be in accordance with Fed. R. Civ. P. 26(a)(2)(B).


(6) Anything shown or told to a testifying expert relating to the issues on which he/she opines, or to the basis or grounds in support of or countering the opinion, is subject to discovery by the opposing party.

(7) The parties shall agree that: (A) drafts of expert reports [will/will not] be

retained and produced; and (B) inquiry [is/is not] permitted into whom, if anyone, other than the expert participated in the drafting of his/her report. The Court will not entertain motions on these two issues. In the absence of such an agreement, drafts of expert reports need not be produced, but inquiry into who participated in the drafting and what their respective contributions were is permitted.

(8) All expert discovery shall be completed by __________________. (f) Discovery Relating to Claim Construction Hearing

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(1) Deadline For Plaintiff's Claim Chart: ____________.

Plaintiff's Claim Chart shall identify: (1) which claim(s) of its patent(s) it alleges are being infringed; (2) which specific products or methods of defendant's it alleges literally infringe each claim; and (3) where each element of each claim listed in (1) is found in each product or method listed in (2), including the basis for each contention that the element is present. If there is a contention by Plaintiff that there is infringement of any claims under the doctrine of equivalents, Plaintiff shall separately indicate this on its Claim Chart and, in addition to the information required for literal infringement, Plaintiff shall also explain each function, way, and result that it contends are equivalent, and why it contends that any differences are not substantial.

(2) Deadline For Defendant's Claim Chart: ____________.

Defendant's Claim Chart shall indicate with specificity which elements on Plaintiff's Claim Chart it admits are present in its accused device or process, and which it contends are absent. In the latter regard, Defendant will set forth in detail the basis for its contention that the element is absent. As to the doctrine of equivalents, Defendant shall indicate on its chart its contentions concerning any differences in function, way, and result, and why any differences are substantial.

(3) On or before ____________, the parties shall simultaneously exchange a

list of claim terms, phrases, or clause that each party contends should be construed by the Court. On or before __________, the parties shall meet and confer for the purpose of finalizing a list, narrowing or resolving differences, and facilitating the ultimate preparation of a joint claim construction statement. During the meet and confer process, the parties shall exchange their preliminary proposed construction of each claim term, phrase or clause which the parties collectively have identified for claim construction purposes.

At the same time the parties exchange their respective "preliminary claim construction" they shall also provide a preliminary identification of extrinsic evidence, including without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses that they contend support their respective claim constructions. The parties shall identify each such items of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, percipient or expert, the parties shall also provide a brief description of the substance of that witness' proposed testimony.

(4) Following the parties' meet and confer described above, and no later than

____________, the parties shall notify the Court as to whether they

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request that the Court schedule a Claim Construction hearing to determine claim interpretation. If any party believes there is no reason for a Claim Construction hearing, the party shall provide the reason to the Court.

At the same time, the parties shall also complete and file with the Court a joint claim construction statement that shall contain the following information:

(A) The construction of those claim terms, phrases, or clauses on

which the parties agree;

(B) Each party's proposed construction of each disputed claim term, phrase, or clause together with an identification of all references from the specification of prosecution history that support that construction, and an identification of any extrinsic evidence known to the party on which it intends to rely either in support of its proposed construction of the claim or to oppose any other party's proposed construction of the claim, including, but not limited, as permitted by law, dictionary definitions, citation to learned treatises and prior art, and testimony of percipient and expert witnesses;

(C) Whether any party proposes to call one or more witnesses,

including experts at the Claim Construction hearing, the identity of each such witness and for each expert, a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert.

(5) If the Court schedules a Claim Construction hearing, prior to the date of

the Claim Construction hearing, the Court shall issue an Order discussing:

(A) Whether it will receive extrinsic evidence, and if so, the particular evidence it will receive;

(B) Whether the extrinsic evidence in the form of testimony shall be the

affidavits already filed, or in the form of live testimony from the affiants; and

(C) A briefing schedule. (g) Discovery Relating to Validity/Prior Art

(1) Within ____________ days of its receipt of Plaintiff's Claim Chart pursuant to Discovery Plan paragraph (1) Defendant shall serve on Plaintiff a list of all of the prior art on which it relies, and a complete and detailed explanation of what it alleges the prior art shows and how that prior art invalidates the claim(s) asserted by Plaintiff ("Defendant's Prior Art Statement").

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(2) Within ____________ days of its receipt of Defendant's Prior Art Statement Plaintiff shall serve on Defendant "Plaintiff's Prior Art Statement", in which it will state in detail its position on what the prior art relied upon by Defendant shows, if its interpretation differs from Defendant's, and its position on why the prior art does not invalidate the asserted patent claims.

(3) Plaintiff's and Defendant's "Prior Art Statements" can be, but need not be,

in the form of expert reports. (4) Defendant can add prior art to its original Statement only by leave of the Court. (h) Other Discovery Issues

(1) Defendant may postpone the waiver of any applicable attorney-client privilege on topics relevant to claims of willful infringement, if any, until ____________, provided that all relevant privileged documents are produced no later than ____________. All additional discovery regarding the waiver will take place after ____________ and shall be completed by ____________.

(2) The parties have met and discussed whether any discovery should be

conducted in phases to reduce expenses or make discovery more effective and present the following joint or individual proposals:

(3) The parties have discussed the entry of a Protective Order. If either party

believes a Protective Order is necessary, the parties shall jointly submit with this report a proposed Protective Order. The parties are encouraged, though not required, to use Form 5 as a template for the proposed Protective Order. If the parties disagree as to any terms to be included in the Protective Order, they shall present with this report any issues of disagreement, including but not limited to any issues relating to persons who are entitled to have access to documents subject to protective treatment. The Court shall endeavor to resolve any issues relating to the Protective Order in connection with the pretrial conference.

(i) Discovery Definitions

In responding to discovery requests, each party shall construe broadly terms of art used in the patent field (e.g., "prior art", "best mode", "on sale"), and read them as requesting discovery relating to the issue as opposed to a particular definition of the term used. Compliance with this provision is not satisfied by the respondent including a specific definition of the term of art in its response, and limiting its response to that definition.

(j) Motion Schedule

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(1) The parties recommend that all non-dispositive motions be filed and served on or before the following dates:

(A) All motions that seek to amend the pleadings or add parties must

be served by ____________.

(B) All other non-dispositive motions and supporting documents, including those which relate to discovery, shall be served and filed by the discovery deadline date ____________.

(C) All non-dispositive motions shall be scheduled, filed and served in

compliance with the Local Rules.

(2) The parties recommend that all dispositive motions be filed and served so they can be heard by the following dates:

(A) All dispositive motions shall be served and filed by the parties by

____________.

(B) All dispositive motions shall be scheduled, filed and served in compliance with the Local Rules.

(k) Trial-Ready Date

(1) The parties agree that the case will be ready for trial on or after ____________.

(2) A final pretrial conference should be held on or before ____________. (l) Settlement

(1) The parties will discuss settlement before ____________, the date of the initial pretrial conference, by Plaintiff making a written demand for settlement and each Defendant making a written response/offer to Plaintiff's demand.

(2) The parties believe that a settlement conference is appropriate and should

be scheduled by the Court before ____________.

(3) The parties have discussed whether alternative dispute resolution will be helpful to the resolution of this case and recommend the following to the Court:

(m) Trial by Magistrate Judge

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The parties have/have not agreed to consent to jurisdiction by the Magistrate Judge pursuant to Title 28, United States Code, Section 636(c). (If the parties agree, the consent should be filed with the Fed. R. Civ. P. 26(f) Report.)

(n) Tutorial Describing the Technology and Matters in Issue

If the parties believe that a tutorial for the Court would be helpful for the Court, the parties shall simultaneously submit a letter to the Court, asking whether the Court wishes to schedule a tutorial and proposing the timing and format of the tutorial.

(o) Patent Procedure Tutorial

The parties [agree/do not agree] the video "An Introduction to the Patent System", distributed by the Federal Judicial Center, should be shown to the jurors in connection with its preliminary jury instructions.

DATE: ____________ ___________________________________

Plaintiff's Counsel License # Address Phone # Email

DATE: ____________ ____________________________________

Defendant's Counsel License # Address Phone # Email

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FORM 5. STIPULATION FOR PROTECTIVE ORDER

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA

) [NAME OF PARTY], ) Case No. ___________ ) Plaintiff, ) ) STIPULATION FOR v. ) PROTECTIVE ORDER ) [NAME OF PARTY], ) ) Defendant. ) ) Upon stipulation of the parties for an order pursuant to Fed. R. Civ. P. 26(c) that

trade secret or other confidential information be disclosed only in designated ways:

1. As used in the Protective Order, these terms have the following meanings:

"Attorneys" means counsel of record;

"Confidential" documents are documents designated pursuant to paragraph 2;

"Confidential - Attorneys' Eyes Only" documents are the subset of Confidential documents designated pursuant to paragraph 5; "Documents" are all materials within the scope of Fed. R. Civ. P. 34;

"Written Assurance" means an executed document in the form attached as

Exhibit A.

2. By identifying a document "Confidential", a party may designate any document,

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including interrogatory responses, other discovery responses, or transcripts, that it in

good faith contends to constitute or contain trade secret or other confidential

information.

3. All Confidential documents, along with the information contained in the

documents, shall be used solely for the purpose of this action, and no person receiving

such documents shall, directly or indirectly, transfer, disclose, or communicate in any

way the contents of the documents to any person other than those specified in

paragraph 4. Prohibited purposes include, but are not limited to, use for competitive

purposes or the prosecution of additional intellectual property rights.

4. Access to any Confidential document shall be limited to:

(a) the Court and its officers;

(b) Attorneys and their office associates, legal assistants, and stenographic and

clerical employees;

(c) persons shown on the face of the document to have authored or received it;

(d) court reporters retained to transcribe testimony;

[Optional: (e) these inside counsel: [names];]

[Optional: (f) these employees of the parties: [names];]

(g) outside independent persons (i.e., persons not currently or formerly

employed by, consulting with, or otherwise associated with any party) who are retained

by a party or its attorneys to furnish technical or expert services, or to provide

assistance as mock jurors or focus group members or the like, and/or to give testimony

in this action.

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5. The parties shall have the right to further designate Confidential documents or

portions of documents [optional: in the areas of [identify]] as "Confidential - Attorneys'

Eyes Only". Disclosure of such information shall be limited to the persons designated in

paragraphs 4(a), (b), (c), (d), (e), and (g).

6. Third parties producing documents in the course of this action may also

designate documents as "Confidential" or "Confidential - Attorneys' Eyes Only", subject

to the same protections and constraints as the parties to the action. A copy of the

Protective Order shall be served along with any subpoena served in connection with this

action. All documents produced by such third parties shall be treated as "Confidential -

Attorneys' Eyes Only" for a period of 14 days from the date of their production, and

during that period any party may designate such documents as "Confidential" or

"Confidential - Attorneys' Eyes Only" pursuant to the terms of the Protective Order.

7. Each person appropriately designated pursuant to paragraph 4(g) to receive

Confidential information shall execute a "Written Assurance" in the form attached as

Exhibit A. Opposing counsel shall be notified at least 14 days prior to disclosure to any

such person who is known to be an employee or agent of, or consultant to, any

competitor of the party whose designated documents are sought to be disclosed. Such

notice shall provide a reasonable description of the outside independent person to

whom disclosure is sought sufficient to permit objection to be made. If a party objects in

writing to such disclosure within 14 days after receipt of notice, no disclosure shall be

made until the party seeking disclosure obtains the prior approval of the Court or the

objecting party.

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8. All depositions or portions of depositions taken in this action that contain trade

secret or other confidential information may be designated "Confidential" or

"Confidential - Attorneys' Eyes Only" and thereby obtain the protections accorded other

"Confidential" or "Confidential - Attorneys' Eyes Only" documents. Confidentiality

designations for depositions shall be made either on the record or by written notice to

the other party within 14 days of receipt of the transcript. Unless otherwise agreed,

depositions shall be treated as "Confidential - Attorneys' Eyes Only" during the 14-day

period following receipt of the transcript. The deposition of any witness (or any portion

of such deposition) that encompasses Confidential information shall be taken only in the

presence of persons who are qualified to have access to such information.

9. Any party who inadvertently fails to identify documents as "Confidential" or

"Confidential - Attorneys' Eyes Only" shall have 14 days from the discovery of its

oversight to correct its failure. Such failure shall be corrected by providing written notice

of the error and substituted copies of the inadvertently produced documents. Any party

receiving such inadvertently unmarked documents shall make reasonable efforts to

retrieve documents distributed to persons not entitled to receive documents with the

corrected designation.

10. Any party who inadvertently discloses documents that are privileged or

otherwise immune from discovery shall, promptly upon discovery of such inadvertent

disclosure, so advise the receiving party and request that the documents be returned.

The receiving party shall return such inadvertently produced documents, including all

copies, within 14 days of receiving such a written request. The party returning such

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inadvertently produced documents may thereafter seek re-production of any such

documents pursuant to applicable law.

11. If a party files a document containing Confidential information with the Court, it

shall do so in compliance with the Electronic Case Filing Procedures for the District of

Minnesota. Prior to disclosure at trial or a hearing of materials or information

designated "Confidential" or "Confidential - Attorneys' Eyes Only", the parties may seek

further protections against public disclosure from the Court.

12. Any party may request a change in the designation of any information designated

"Confidential" and/or "Confidential - Attorneys' Eyes Only". Any such document shall be

treated as designated until the change is completed. If the requested change in

designation is not agreed to, the party seeking the change may move the Court for

appropriate relief, providing notice to any third party whose designation of produced

documents as "Confidential" and/or "Confidential - Attorneys' Eyes Only" in the action

may be affected. The party asserting that the material is Confidential shall have the

burden of proving that the information in question is within the scope of protection

afforded by Fed. R. Civ. P. 26(c).

13. Within 60 days of the termination of this action, including any appeals, each party

shall either destroy or return to the opposing party all documents designated by the

opposing party as "Confidential" , and all copies of such documents, and shall destroy

all extracts and/or data taken from such documents. Each party shall provide a

certification as to such return or destruction as within the 60-day period. Attorneys shall

be entitled to retain, however, a set of all documents filed with the Court and all

correspondence generated in connection with the action.

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14. Any party may apply to the Court for a modification of the Protective Order, and

nothing in the Protective Order shall be construed to prevent a party from seeking such

further provisions enhancing or limiting confidentiality as may be appropriate.

15. No action taken in accordance with the Protective Order shall be construed as a

waiver of any claim or defense in the action or of any position as to discoverability or

admissibility of evidence.

16. The obligations imposed by the Protective Order shall survive the termination of

this action. Within 60 days following the expiration of the last period for appeal from any

order issued in connection with this action, the parties shall remove any materials

designated "Confidential" from the office of the Clerk of Court. Following that 60-day

period, the Clerk of Court shall destroy all "Confidential" materials.

Stipulated to:

Date: By

Date: By

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EXHIBIT A

WRITTEN ASSURANCE declares that:

I reside at ____________________________in the city of ________________ ,

county _______________ , state of ________________________ ;

I am currently employed by ___________________ located at

___________________and my current job title is __________________________.

I have read and believe I understand the terms of the Protective Order dated

_______ , filed in Civil Action No. _______, pending in the United States District Court

for the District of Minnesota. I agree to comply with and be bound by the provisions of

the Protective Order. I understand that any violation of the Protective Order may

subject me to sanctions by the Court.

I shall not divulge any documents, or copies of documents, designated "Confidential"

or "Confidential - Attorneys' Eyes Only" obtained pursuant to such Protective Order, or

the contents of such documents, to any person other than those specifically authorized

by the Protective Order. I shall not copy or use such documents except for the

purposes of this action and pursuant to the terms of the Protective Order.

As soon as practical, but no later than 30 days after final termination of this action, I

shall return to the attorney from whom I have received them, any documents in my

possession designated "Confidential" or "Confidential - Attorneys' Eyes Only", and all

copies, excerpts, summaries, notes, digests, abstracts, and indices relating to such

documents.

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I submit myself to the jurisdiction of the United States District Court for the District of

Minnesota for the purpose of enforcing or otherwise providing relief relating to the

Protective Order.

I declare under penalty of perjury that the foregoing is true and correct.

Executed on

(Date) (Signature)

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FORM 6. STIPULATION FOR PROTECTIVE ORDER

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

) [NAME OF PARTY], ) Case No. ___________ ) Plaintiff, ) ) STIPULATION FOR v. ) PROTECTIVE ORDER ) [NAME OF PARTY], ) ) Defendant. ) ) ) Upon stipulation of the parties for an order pursuant to Fed. R.Civ. P. 26(c) that confidential information be disclosed only in designated ways: 1. As used in the Protective Order, these terms have the following meanings:

“Attorneys” means counsel of record;

“Confidential” documents are documents designated pursuant to paragraph 2;

“Documents” are all materials within the scope of Fed. R. Civ. P. 34; “Outside Vendors” means messenger, copy, coding, and other clerical-services

vendors not employed by a party or its Attorneys; and

“Written Assurance” means an executed document in the form attached as

Exhibit A.

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2. A Party may designate a document “Confidential”, to protect information within

the scope of Fed. R. Civ. P. 26(c).

3. All Confidential documents, along with the information contained in the

documents, shall be used solely for the purpose of this action, and no person receiving

such documents shall, directly or indirectly, use, transfer, disclose, or communicate in

any way the documents or their contents to any person other than those specified in

paragraph. Any other use is prohibited.

4. Access to any Confidential document shall be limited to:

(a) the Court and its staff;

(b) Attorneys, their law firms, and their Outside Vendors;

(c) persons shown on the face of the document to have authored or

received it;

(d) court reporters retained to transcribe testimony;

(e) the parties;

(f) outside independent persons (i.e., persons not currently or formerly

employed by, consulting with, or otherwise associated with any party) who

are retained by a party or its Attorneys to provide assistance as mock

jurors or focus group members or the like, or to furnish technical or expert

services, and/or to give testimony in this action.

5. Third parties producing documents in the course of this action may also designate

documents as “Confidential”, subject to the same protections and constraints as the

parties to the action. A copy of the Protective Order shall be served along with any

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subpoena served in connection with this action. All documents produced by such third

parties shall be treated as “Confidential” for a period of 14 days from the date of their

production, and during that period any party may designate such documents as

“Confidential” pursuant to the terms of the Protective Order.

6. Each person appropriately designated pursuant to paragraphs 4(f) to receive

Confidential information shall execute a “Written Assurance” in the form attached as

Exhibit A. Opposing counsel shall be notified at least 14 days prior to disclosure to any

such person who is known to be an employee or agent of, or consultant to, any

competitor of the party whose designated documents are sought to be disclosed. Such

notice shall provide a reasonable description of the outside independent person to

whom disclosure is sought sufficient to permit objection to be made. If a party objects in

writing to such disclosure within 14 days after receipt of notice, no disclosure shall be

made until the party seeking disclosure obtains the prior approval of the Court or the

objecting party.

7. All depositions or portions of depositions taken in this action that contain

confidential information may be designated “Confidential” and thereby obtain the

protections accorded other “Confidential” documents. Confidentiality designations for

depositions shall be made either on the record or by written notice to the other party

within 14 days of receipt of the transcript. Unless otherwise agreed, depositions shall

be treated as “Confidential” during the 14-day period following receipt of the transcript.

The deposition of any witness (or any portion of such deposition) that encompasses

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Confidential information shall be taken only in the presence of persons who are qualified

to have access to such information.

8. Any party who inadvertently fails to identify documents as “Confidential” shall,

promptly upon discovery of its oversight, provide written notice of the error and

substitute appropriately-designated documents. Any party receiving such improperly-

designated documents shall retrieve such documents from persons not entitled to

receive those documents and, upon receipt of the substitute documents, shall return or

destroy the improperly-designated documents.

9. If a party files a document containing Confidential information with the Court, it

shall do so in compliance with the Electronic Case Filing Procedures for the District of

Minnesota. Prior to disclosure at trial or a hearing of materials or information

designated “Confidential”, the parties may seek further protections against public

disclosure from the Court.


“Confidential”. Any such document shall be treated as designated until the change is

completed. If the requested change in designation is not agreed to, the party seeking

the change may move the Court for appropriate relief, providing notice to any third party

whose designation of produced documents as “Confidential” in the action may be

affected. The party asserting that the material is Confidential shall have the burden of

proving that the information in question is within the scope of protection afforded by

Fed. R. Civ. P. 26(c).

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shall either destroy or return to the opposing party all documents designated by the

opposing party as “Confidential”, and all copies of such documents, and shall destroy all

extracts and/or data taken from such documents. Each party shall provide a

certification as to such return or destruction within the 60-day period. However,

Attorneys shall be entitled to retain a set of all documents filed with the Court and all

correspondence generated in connection with the action.


nothing in this Protective Order shall be construed to prevent a party from seeking such

further provisions enhancing or limiting confidentiality as may be appropriate.





this action.

Stipulated to:

Date: ___________________ By _____________________________ Date: ___________________ By _____________________________

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EXHIBIT A WRITTEN ASSURANCE

_________________________________________ declares that:

I reside at _______________________________________ in the City of

__________________, County of , State of

. My telephone number is __________________________________.

I am currently employed by ___________________________________, located

at _____________________________________________________, and my current

job title is ____________________________________________________.

I have read and I understand the terms of the Protective Order dated

________________, filed in Case No. __________, pending in the United States

District Court for the District of Minnesota. I agree to comply with and be bound by the

provisions of the Protective Order. I understand that any violation of the Protective

Order may subject me to sanctions by the Court.

I shall not divulge any documents, or copies of documents, designated

“Confidential” obtained pursuant to such Protective Order, or the contents of such

documents, to any person other than those specifically authorized by the Protective

Order. I shall not copy or use such documents except for the purposes of this action

and pursuant to the terms of the Protective Order.

As soon as practical, but no later than 30 days after final termination of this

action, I shall return to the attorney from whom I have received them, any documents in

my possession designated “Confidential”, and all copies, excerpts, summaries, notes,

digests, abstracts, and indices relating to such documents.

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I submit myself to the jurisdiction of the United States District Court for the District

of Minnesota for the purpose of enforcing or otherwise providing relief relating to the

Protective Order.

Executed on ______________________ ____________________________ (Date) (Signature)

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UNITED STATES DISTRICT COURT, EASTERN DISTRICT OF MISSOURI PATENT RULES TABLE OF CONTENTS 1. SCOPE OF RULES

1-1. Title 1-2. Scope and Construction


2-1. Governing Procedure 2-2. Confidentiality 2-3. Relationship to Federal Rules of Civil Procedure


3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions 3-2. Document Production Accompanying Disclosure of Asserted Claims and Preliminary Infringement Contentions 3-3. Preliminary Counter-Infringement Contentions 3-4. Preliminary Invalidity Contentions 3-5. Document Production Accompanying Preliminary Invalidity Contentions 3-6. Disclosure Requirement in Patent Cases for Declaratory Judgment 3-7. Final Contentions 3-8. Amendment to Contentions 3-9. Willfulness


4-1. Exchange of Proposed Terms and Claim Elements for Construction 4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence 4-3. Joint Claim Construction and Joint Prehearing Statement 4-4. Completion of Claim Construction Discovery 4-5. Claim Construction Briefs

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UNITED STATES DISTRICT COURT, EASTERN DISTRICT OF MISSOURI PATENT RULES

1. SCOPE OF RULES

1-1. Title.

These are the Rules of Practice for Patent Cases pending in the United States District Court for the Eastern District of Missouri. They should be cited as “Local Patent R. -.”

1-2. Scope and Construction.

(a) Utility Patents. These rules apply to all civil actions filed in or transferred to this Court which allege infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. The Court may accelerate, extend, eliminate, or modify the obligations or deadlines set forth in these Local Patent Rules based on the circumstances of any particular case. The Local Rules of this Court shall also apply to these actions, except to the extent they are inconsistent with these Local Patent Rules.

(b) Design Patents. These rules do not specifically apply to civil actions filed in or transferred to this Court which allege infringement of a design patent. The parties in a design patent litigation may, however, consider whether some or all of the below Local Patent Rules should be adopted to address infringement contentions, invalidity contentions, or claim construction matters in cases involving one or more design patents. These considerations shall be addressed by the parties when they confer pursuant to Fed. R. Civ. P. 26(f) and raised with the Court at the Rule 16 Scheduling Conference.


2-1. Governing Procedure.

Rule 16 Scheduling Conference. When the parties confer pursuant to Fed. R. Civ. P. 26(f), in addition to the matters covered by Rule 26, the parties must discuss and address the following topics in the Joint Proposed Scheduling Plan filed pursuant to Fed. R. Civ. P. 26(f):

(a) Any proposed modification of the deadlines provided for in the Local Patent Rules, and the effect of any such modification on the date and time of any claim construction hearing;

(b) Whether the Court will hold a claim construction hearing and, if so, whether it will receive live testimony, deposition testimony, or other evidence at the hearing;

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(c) If applicable, the scheduling of any claim construction prehearing conference to be held after the Joint Claim Construction Chart and Joint Prehearing Statement provided for in Local Patent R. 4-3 has been filed;

(d) The need for and any specific limits on discovery relating to claim construction, including depositions of fact witnesses and expert witnesses;

(e) Whether discovery should be conducted in stages, for example, whether only claim construction discovery should be taken before the Court’s Claim Construction Ruling or whether discovery should otherwise be limited prior to such a ruling;

(f) Whether the parties should provide a tutorial to the Court concerning the technology at issue, including whether any such tutorial should be provided before any claim construction hearing; and

(g) The content of any protective order that should govern the case, including whether the Court’s Form Protective Order (Appendix A) should be adopted in whole or in part; and what, if any, disputes exist regarding the final content of any such protective order.

2-2. Confidentiality.

If any document or information produced in Patent Litigation is deemed confidential by the producing party and if the Court has not entered a protective order, the producing party shall mark the document Confidential--Outside Attorneys’ Eyes Only and, until such time as the Court enters a protective order, disclosure of the confidential document or information shall be limited to each party’s outside attorney(s) of record, the employees of such outside attorney(s), and necessary outside document services, unless the parties agree to the contrary. The person(s) to whom disclosure of a confidential document or information is made under this rule shall keep it confidential and use it only for the purpose of litigating the case.

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2-3. Relationship to Federal Rules of Civil Procedure.

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


(b) Requests seeking to elicit from a party claiming patent infringement (“Patent Claimant”) a comparison of the asserted claims and the accused apparatus, product, device, process, method, act, or other instrumentality, or counter-invalidity contentions;

(c) Requests seeking to elicit from a party opposing a claim of patent infringement (“Alleged Infringer”) a comparison of the asserted claims and the prior art, invalidity contentions, or counter-infringement contentions; and

(d) Requests seeking to elicit from an Alleged Infringer the identification of any opinions of counsel, and related documents, that it intends to rely upon as a defense to an allegation of willful infringement.

Where a party properly objects to a discovery request (or declines to provide information in its initial disclosures under Fed. R. Civ. P. 26(a)(1)) as set forth in this subsection 2-3, that party shall provide the requested information on the date on which it is required to provide the requested information to an opposing party under these Local Patent Rules, unless there exists another legitimate ground for objection.

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

(a) Not later than 21 days after the initial Rule 16 Scheduling Conference, a Patent Claimant must serve on all parties a Disclosure of Asserted Claims and Preliminary Infringement Contentions. Separately for each Alleged Infringer, the Disclosure of Asserted Claims and Preliminary Infringement Contentions shall contain the following information:

(i) Each claim of each patent-in-suit that is allegedly infringed by each Alleged Infringer;

(ii) Separately for each asserted claim, a specific identification of each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each Alleged Infringer of which the party is aware. 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, allegedly results in the practice of the claimed method or process;

(iii) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;

(iv) Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;

(v) For each claim that is alleged to be indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. If the alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described; (vi) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled;

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(vii) If a Patent Claimant wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party must identify and produce documents sufficient to show, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim; and

(viii) In patent cases arising under 21 U.S.C. § 355, at or before the initial Rule 16 Scheduling Conference, the Alleged Infringer shall produce to the Patent Claimant the entire Abbreviated New Drug Application or New Drug Application that is the basis of the case. The Court recognizes that, in cases brought under 21 U.S.C. § 355, scheduling and sequencing provisions distinct from those set forth in these Local Patent Rules may be appropriate.

(b) Not later than 28 days after service upon it of documents accompanying the Preliminary Invalidity Contentions pursuant to Rule 3-5 below, a Patent Claimant may amend its Disclosure of Asserted Claims and Preliminary Infringement Contentions if the Patent Claimant believes in good faith that the documents produced by the Alleged Infringer necessitate such an amendment. The Patent Claimant shall serve on the Alleged Infringer a Notice of Amended Preliminary Infringement Contentions, including a statement of reasons why the Patent Claimant believes such amendment is warranted under this subsection.

3-2. Document Production Accompanying Disclosure of Asserted Claims and

Preliminary Infringement Contentions.

With the Disclosure of Asserted Claims and Preliminary Infringement Contentions, the Patent Claimant must produce to each Alleged Infringer or make available for inspection and copying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third party or joint development agreements) sufficient to evidence (i) each discussion with, disclosure to, or other manner of providing to a third party the claimed invention prior to the date of application for the patent(s)-in-suit, or (ii) the sale of or offer to sell the claimed invention prior to the date of application for the patent(s)–in-suit and/or the priority date identified pursuant to Local Patent R. 3-1(vi), whichever is earlier. A party’s production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;

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(b) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent(s)-in-suit and/or the priority date identified pursuant to Local Patent R. 3-1(vi), whichever is earlier; and

(c) A copy of the file history for each patent-in-suit.

The Patent Claimant shall separately identify by production number which documents correspond to each of the above categories. The Patent Claimant shall timely supplement document production under this Local Patent R. 3-2 as required by the Federal Rules of Civil Procedure; however, the act of supplementation does not of itself permit amendment of the Patent Claimant’s Disclosure of Asserted Claims and Preliminary Infringement Contentions, which amendment shall instead be governed by Local Patent R. 3-1(b) and 3-7(a).

3-3. Preliminary Counter-Infringement Contentions.

Not later than 28 days after service upon it of the Disclosure of Asserted Claims and Preliminary lnfringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Counter-Infringement Contentions, indicating which elements from each asserted patent claim that it admits are present in any Accused Instrumentality, and which it contends are absent. As to absent elements, the Alleged Infringer shall set forth in detail the basis for its contention that the element is absent.

3-4. Preliminary Invalidity Contentions.

Not later than 49 days after service upon it of the Disclosure of Asserted Claims and Preliminary lnfringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Invalidity Contentions, which must contain the following information:

(a) The identity of each item of prior art, including patents, printed publications, prior public use, and prior on sale activity, that allegedly anticipate(s) each asserted claim or render(s) it obvious. Each prior art patent shall be identified by its number, country of origin, and date of issuance. Each prior art publication must be identified by its title, date of publication, and where feasible, author and publisher. Prior use under 35 U.S.C. § 102(a) or (b), or on sale activity under 35 U.S.C. § 102(b), shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity 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 made known. Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identity of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);

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(b) On a claim-by-claim basis, whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the basis for such allegation, must be identified;

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

(d) Any grounds of invalidity under 35 U.S.C. § 102(c) shall be identified by providing a description of the facts supporting the allegation of abandonment; any grounds of invalidity under 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived; and

(e) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or enablement, written description, or failure to describe the best mode under 35 U.S.C. § 112(1) of any of the asserted claims.

3-5. Document Production Accompanying Preliminary Invalidity Contentions.

With the Preliminary Invalidity Contentions, the Alleged Infringer must produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the Patent Claimant in its Local Patent R. 3-1(a)(iii) chart. If the Patent Claimant contends that compliance with this section requires the production of particular documentation (e.g., source code), the Alleged Infringer may request, and the Patent Claimant is obliged to produce, the same information as to any apparatus, product, device, process, method, act or other instrumentality that it has identified pursuant to Local Patent R. 3-1(a)(vii), above; and

(b) A copy of each item of prior art identified pursuant to Local Patent R. 3-4(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

(c) The Alleged Infringer shall timely supplement document production under this Local Patent R. 3-5 as required by the Federal Rules of Civil Procedure; however, the act of supplementation does not of itself permit amendment of the Alleged Infringer’s Preliminary Counter-Infringement Contentions or Preliminary Invalidity Contentions, which amendment shall instead be governed by Local Patent R. 3-7(a) and (b).

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3-6. Disclosure Requirement in Patent Cases for Declaratory Judgment.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, Local Patent R. 3-1 and 3-2 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant in such a declaratory judgment lawsuit does not assert a claim for patent infringement in its answer to the complaint, no later than 14 days after the defendant serves its answer, or 14 days after the initial Rule 16 Scheduling Conference, whichever is later, the party seeking a declaratory judgment of invalidity (on that basis alone or among other bases) must serve upon each opposing party its Preliminary Invalidity Contentions that conform to Local Patent R. 3-4 and produce or make available for inspection and copying the documents described in Local Patent R. 3-5. The parties shall meet and confer within 14 days of service of the Preliminary Invalidity Contentions for the purpose of determining the date on which the plaintiff will file its Final Invalidity Contentions, which shall be no later than 49 days after filing by the Court of its Claim Construction Ruling.

(b) Inapplicability of Rule. This Local Patent R. 3-6 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in response to a claim alleging infringement of the same patent.

3-7. Final Contentions.

The Disclosure of Asserted Claims and Preliminary Infringement Contentions and Preliminary Invalidity Contentions shall be deemed to be that party’s final contentions, except as set forth below.

(a) If a Patent Claimant believes in good faith that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position, that party may serve Final Infringement Contentions without leave of Court that amend its Disclosure of Asserted Claims and Preliminary Infringement Contentions with respect to the information required by Local Patent R. 3-1(a)(iii), (iv) and (v). The Patent Claimant may seek leave of Court, for good cause shown, to assert infringement with respect to an Accused Instrumentality not disclosed in the Disclosure of Asserted Claims and Preliminary Infringement Contentions. Any Final Infringement Contentions must be served no later than 28 days after the Court files its Claim Construction Ruling. Any Alleged Infringer may serve Final Counter-Infringement Contentions without leave of Court that amend its Preliminary Counter-Infringement Contentions served previously pursuant to Local Patent. R. 3-3 not later than (i) 21 days after service upon it of any Final Infringement Contentions pursuant to this Local Patent R. 3-7(a), or (ii) in the absence of Final Infringement Contentions, and upon a good faith belief that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position, not later than 49 days after the Court files its Claim Construction Ruling.

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(b) Not later than 49 days after the Court files its Claim Construction Ruling, each Alleged Infringer may serve Final Invalidity Contentions without leave of Court that amend its Preliminary Invalidity Contentions with respect to the information required by Local Patent R. 3-4 if: (i) a Patent Claimant has served Final Infringement Contentions pursuant to Local Patent R. 3-7(a), or (ii) the Alleged Infringer believes in good faith that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position. Leave of Court upon good cause shown is required to the extent the Alleged Infringer seeks to rely on prior art not disclosed in the Preliminary Invalidity Contentions.

(c) Not later than 77 days after the Court files its Claim Construction Ruling, each Patent Claimant must serve on all parties its Counter-Invalidity Contentions, which must state in detail its position on: (i) whether the purported prior art relied upon by an Alleged Infringer does indeed constitute statutory prior art, (ii) whether and how its interpretation of the prior art differs from that of the party opposing a claim of patent infringement, and (iii) its position on why the prior art does not invalidate any of the claims at issue. Notwithstanding the requirements of this Local Patent R. 3-7(c), a Patent Claimant may include the contentions that are otherwise required by this Rule in a Written Report that complies with Fed. R. Civ. P. 26(a)(2)(B) by the deadline set forth in the Case Management Order for service of rebuttal expert reports.

3-8. Amendment to Contentions.

Amendment or modification of (i) the Disclosure of Asserted Claims and Preliminary Infringement Contentions, Preliminary Counter-Infringement Contentions, or the Preliminary Invalidity Contentions (other than as expressly permitted by Local Patent R. 3-1(b) or 3-7, above), or (ii) the Final Infringement Contentions, Final Counter-Infringement Contentions, or the Final Invalidity Contentions, may only be made by order of the Court, upon a showing of good cause. The application for amendment shall disclose whether the adverse party consents or objects.

3-9. Willfulness.

Not later than 49 days after filing by the Court of its Claim Construction Ruling, each Alleged Infringer that will rely on an opinion of counsel as part of a defense to a claim of willful infringement shall:

(a) Produce or make available for inspection and copying the opinion(s) and any other documents relating to the opinion(s) as to which the attorney-client privilege or work product rule has been waived;

(b) Detail in writing any oral advice and produce or make available for inspection and copying documents related thereto for which the attorney-client privilege or work product rule has been waived; and

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(c) Serve a privilege log identifying any other documents, except those authored by counsel who has acted solely as litigation counsel, relating to the subject matter of the opinion(s) which the party is withholding on the grounds of attorney-client privilege or work product rule.

An Alleged Infringer that does not comply with the requirements of this Rule shall not be permitted to rely on an opinion of counsel as part of a defense to willful infringement, (i) absent a stipulation of all parties, or (ii) by order of the Court, which shall be entered only upon a showing of good cause.

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4-1. Exchange of Proposed Terms and Claim Elements for Construction.

(a) Not later than 42 days after service of the Preliminary Invalidity Contentions pursuant to Local Patent R. 3-4, the parties shall simultaneously exchange Proposed Terms and Claim Elements for Construction, which shall include (i) a list of claim terms, phrases, or clauses which that party contends should be construed by the Court, and (ii) the identification of any claim element which that party contends should be governed by 35 U.S.C. § 112(6). (b) Within 7 days thereafter, the parties shall meet and confer in good faith for the purpose of narrowing the claim terms to be construed, narrowing or resolving differences, and facilitating the ultimate preparation of a Joint Claim Construction Chart and Joint Prehearing Statement, as set forth in Subsection 4-3, below.

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

(a) Not later than 21 days after the exchange of Proposed Terms and Claim Elements for Construction pursuant to Local Patent R. 4-1, the parties shall simultaneously exchange a preliminary proposed construction (“Preliminary Claim Construction”) that shall address each claim term, phrase, or clause that the parties have identified for claim construction purposes. Each such Preliminary Claim Construction shall also, for each element which any party contends is governed by 35 U. S. C. § 112(6), specifically identify the asserted function and shall also identify by column: line number and specific description, the structure(s), act(s), or material(s) corresponding to that element. (b) At the same time the parties exchange their respective Preliminary Claim Constructions, they shall each also provide a preliminary identification of extrinsic evidence, including without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of fact and expert witnesses they intend to advance in support of their respective claim constructions. The parties shall identify each such item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness -- fact or expert -- the parties shall also provide a brief description of the substance of that witness’ proposed testimony. (c) Within 7 days thereafter, the parties shall meet and confer in good faith to discuss, among other topics, each of the claim elements the parties have identified in their Proposed Terms and Claim Elements for Construction, for the purpose of narrowing the issues and preparing a Joint Claim Construction Chart and Joint Prehearing Statement, as set forth in Local Patent R. 4-3, below.

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4-3. Joint Claim Construction Chart and Joint Prehearing Statement.

Unless the Court has ordered that no claim construction hearing will be held, the parties shall, not later than 49 days after the exchange of the Proposed Terms and Claim Elements for Construction pursuant to Local Patent R. 4-1, complete and file a Joint Claim Construction Chart and Joint Prehearing Statement, which shall contain the following information: (a) The Joint Claim Construction Chart shall be in the format set forth in Appendix B, containing: (i) a column listing complete language of disputed claims with the disputed terms in bold type and separate columns for each party’s proposed construction of each disputed term; (ii) a column to be used for indicating whether the parties agree on the claim construction for a disputed term; and (iii) a column for each party’s proposed construction of each disputed claim term, phrase, or clause, including all references from the specification or prosecution history that support that construction, and identifying any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction of the claim or to oppose any party’s proposed construction of the claim, including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises, and prior art, and testimony of percipient and expert witnesses. (b) The Joint Prehearing Statement must set forth: (i) the anticipated length of time necessary for a claim construction hearing; (ii) whether any party proposes to call any witnesses, including experts, at the claim construction hearing, (iii) the identity of each such witness, (iv) for each witness, a summary of anticipated testimony in sufficient detail to permit a meaningful deposition of that witness and, as to witnesses who may present evidence under Fed. R. Evid. 702, 703 or 705, a report complying with the provisions of Fed. R. Civ. P. 26(a)(2)(B); (v) the order of presentation at the claim construction hearing; and (vi) a list of any other issues which might appropriately be taken up at a prehearing conference prior to the claim construction hearing, and proposed dates, if not previously set, for any such prehearing conference.

4-4. Completion of Claim Construction Discovery.

Not later than 28 days after service and filing of the Joint Claim Construction Chart and Joint Prehearing Statement, the parties shall complete all discovery relating to claim construction, including any depositions with respect to claim construction of any witnesses, including experts, identified in the Joint Claim Construction Chart and Joint Prehearing Statement.

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4-5. Claim Construction Briefs.

(a) Not later than 49 days after serving and filing the Joint Claim Construction Chart and Joint Prehearing Statement, each party shall serve and file a motion for claim construction, a memorandum in support, and any evidence supporting its claim construction. (b) Not later than 14 days after service upon it of a motion for claim construction, each party shall serve and file its responsive memorandum and supporting evidence.

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APPENDIX A

FORM PROTECTIVE ORDER

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MISSOURI

[NAME OF PARTY] ) ) Plaintiff, ) Case No.: ) vs. ) ) [NAME OF PARTY] ) STIPULATION FOR ) PROTECTIVE ORDER Defendant. ) Upon stipulation of the parties for an Order pursuant to Fed. R. Civ. P. 26(c) that trade

secret or other confidential information be disclosed only in designated ways:

1. As used in the Protective Order, these terms have the following meanings:

(a) “Attorneys” means counsel of record;

(b) “Confidential – Attorneys’ Eyes Only” documents are the subset of confidential documents designated pursuant to Paragraph 5;

(c) “Documents” are all materials within the scope of Fed. R. Civ. 34;

(d) “Written Assurance” means an executed document in the form attached as Exhibit A.

2. By identifying a document as “Confidential,” a party may designate any

document, including interrogatory response, other discovery response, and/or transcript, that it,

in good faith, contends constitutes or contains trade secret or other confidential information.

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3. All confidential documents, along with the information contained in the

documents, shall be used solely for the purpose of this action, and no person receiving such

documents shall, directly or indirectly, transfer, disclose, or communicate in any way the

contents of the documents to any person other than those specified in Paragraph 4. Prohibited

purposes include, but are not limited to, use for competitive purposes or the prosecution of

additional intellectual property rights.

4. Access to any confidential document shall be limited to:

(a) The Court and its personnel;

(b) Attorneys of record and their office associates, legal assistants, and stenographic and clerical employees;

(c) Persons shown on the face of the document to have authored or received

it;

(d) Court reporters retained to transcribe testimony;

[Optional: (e) These inside counsel: [names]:]

[Optional: (f) These employees of the parties: [names]:]

(g) Outside independent persons (i.e., persons not currently or formerly employed by, consulting with, or otherwise associated with any party) who are used by a party or its attorneys to furnish technical or expert services, or to provide assistance as mock jurors or focus group members or the like, and/or to give testimony in this action.

5. The parties shall have the right to further designate confidential documents or

portions of documents [optional: in the areas of [identify]] as “Confidential – Attorneys’ Eyes

Only.” Disclosure of such information shall be limited to the persons designated in Paragraphs

4(a), (b), (c), (d), and (g).

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6. Third parties producing documents in the course of this action may also

Designate documents as “Confidential” or “Confidential – Attorneys’ Eyes Only,” subject to the

same protections and constraints as the parties to the action. A copy of the Protective Order shall

be served along with any subpoena served in connection with this action. All documents

produced by such third parties, even if not designated by such third parties as “Confidential” or

“Confidential – Attorneys’ Eyes Only,” shall be treated by the parties to this action as

“Confidential – Attorneys’ Eyes Only” for a period of 15 days from the date of their production.

During that 15 day period, any party may designate such documents as “Confidential” or

“Confidential – Attorneys’ Eyes Only” pursuant to the terms of the Protective Order.

7. Each person who is to receive confidential information, pursuant to Paragraph

4(g), shall execute a “Written Assurance” in the form attached as Exhibit A. Opposing counsel

shall be notified at least 11 days prior to disclosure to any such person who is known to be an

employee or agent of, or consultant to, any competitor of the party whose designated documents

are sought to be disclosed. Such notice shall provide a reasonable description of the outside

independent person to whom disclosure is sought sufficient to permit objection to be made. If a

party objects in writing to such disclosure within 10 days after receipt of notice, no disclosure

shall be made until the party seeking disclosure obtains the prior approval of the Court or the

objecting party.

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8. All depositions or portions of depositions taken in this action that contain trade

secret or other confidential information may be designated “Confidential” or “Confidential –

Attorneys’ Eyes Only” and thereby obtain the protections accorded other “Confidential” or

“Confidential – Attorneys’ Eyes Only” documents. Confidentiality designations for depositions

shall be made either on the record or by written notice to the other party within 10 days of receipt

of the final transcript. Unless otherwise agreed depositions shall be treated as “Confidential –

Attorneys’ Eyes Only” until 10 days after receipt of the final transcript. The deposition of any

witness (or any portion of such deposition) that includes confidential information shall be taken

only in the presence of persons who are qualified to have access to such information.

9. Any party who inadvertently fails to identify documents as “Confidential” or

“Confidential-Attorneys’ Eyes Only” shall have 10 days from the discovery of its oversight to

correct its failure. Such failure shall be corrected by providing written notice of the error and

substituting copies of the inadvertently produced documents bearing appropriate confidentiality

designations. Any party receiving such inadvertently unmarked documents shall make

reasonable efforts to retrieve documents distributed to persons not entitled to receive documents

with the corrected designation.

10. Any party who inadvertently discloses documents that are privileged or otherwise

immune from discovery shall, promptly upon discovery of such inadvertent disclosure, so advise

the receiving party and request that the documents be returned. The receiving party shall return

such inadvertently produced documents, including all copies, within 10 days of receiving such a

written request. The party returning such inadvertently produced documents may thereafter seek

reproduction of any such documents pursuant to applicable law.

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11. If a party intends to file a document containing confidential information with the

Court, this Protective Order grants leave to make such filing under seal in compliance with Local

Rule 13.05(A) and/or the Electronic Case Filing/Case Management procedures manual. Prior to

disclosure at trial or a hearing of materials or information designated “Confidential” or

“Confidential-Attorneys’ Eyes Only,” the parties may seek further protections against public

disclosure from the Court.


“Confidential” and/or “Confidential-Attorneys’ Eyes Only.” Any such document shall be treated

as designated until the change is completed. If the requested change in designation is not agreed

to, the party seeking the change may move the Court for appropriate relief, providing notice to

any third party whose designation of produced documents as “Confidential” and/or

“Confidential-Attorneys’ Eyes Only” in the action may be affected. The party asserting that the

material is Confidential shall have the burden of proving that the information in question is

within the scope of protection afforded by Fed. R. Civ. P. 26(c).


shall either destroy or return to the opposing party all documents designated by the opposing

party as “Confidential,” and all copies of such documents, and shall destroy all extracts and/or

data taken from such documents. Each party shall provide a certification in writing to the

disclosing party as to such return or destruction within the 60-day period. Attorneys shall be

entitled to retain, however, a set of all documents filed with the Court and all correspondence

generated in connection with the action, including one copy of documents designated as

“Confidential” and/or “Confidential-Attorneys’ Eyes Only.”

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nothing in the Protective Order shall be construed to prevent a party from seeking such further

provisions enhancing or limiting confidentiality as may be appropriate.





this action.

17. Not later than ________[INSERT DATE], the parties shall file a motion seeking

leave to remove any physical materials designated “Confidential” or “Confidential – Attorneys’

Eyes Only” from the office of the Clerk of Court.

Stipulated to: Date: _____________________ By: _______________________ Date: _____________________ By: _______________________

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EXHIBIT A WRITTEN ASSURANCE

I, _________________________________________________, declare that:

l. My address is ___________________________________________, and the address of my present employer is ________________________________.

2. My present occupation or job description is _______________________

____________________________________________________________________.

3. My present relationship to plaintiff(s)/defendant(s) is __________________ ____________________________________________________________________.

4. I have received a copy of the Stipulation for Protective Order (the “Protective Order”) in this action.

5. I have carefully read and understand the provisions of the Protective Order, agree to

be bound by it, and specifically agree I will not use or disclose to anyone any of the contents of any Confidential information received under the protection of the Protective Order.

6. I understand that I am to retain all copies of any of the materials that I receive which

have been so designated as Confidential in a container, cabinet, drawer, room, or other safe place in a manner consistent with the Protective Order and that all copies are to remain in my custody until I have completed my assigned or legal duties. I will destroy or return to counsel all confidential documents and things that come into my possession. I acknowledge that such return or the subsequent destruction of such materials shall not relieve me from any of the continuing obligations imposed upon me by the Protective Order.

I declare under penalty of perjury under the laws of the state where executed that the foregoing is true and correct.

Executed this ________day of _______________________, 20__, in the State of

_____________________________. ________________________ Signature 60653202.1

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APPENDIX B. JOINT CLAIM CONSTRUCTION CHART

PATENT CLAIM AGREED PROPOSED CONSTRUCTION

PLAINTIFF’S PROPOSED CONSTRUCTION

DEFENDANT’S PROPOSED CONSTRUCTION

1. Claim language as it appears in the patent with terms and phrases to be construed in bold.

Proposed construction if the parties agree.

Plaintiff’s proposed construction if the parties disagree. Citation to Intrinsic Evidence. Citation to Extrinsic Evidence, if any.

Defendant’s proposed construction if the parties disagree. Citation to Intrinsic Evidence. Citation to Extrinsic Evidence, if any.









60716498.1

131

60715817.1

Narrow Issues for Joint Claim Construction

Chart and Joint Prehearing Statement

Rule 4-2(c)

Disclosure of Asserted Claims and Preliminary Infringement Contentions Rule 3-1(a)

Joint Claim Construction

Chart and Joint Prehearing

Statement Due Rule 4-3

Exchange of Proposed Terms and Claim Elements to

be Construed Rule 4-1(a)

If appropriate, Amended

Preliminary Infringement Contentions Rule 3-1(b)

Meet and Confer to Narrow Terms to be

Construed or Resolve Differences

Rule 4-1(b)

Exchange of Preliminary Claim Constructions and Extrinsic Evidence

Rule 4-2(a)

Complete Claim

Construction Discovery Rule 4-4

Motion for Claim

Construction Rule 4-5(a)

Disclosure of Preliminary

Counter-Infringement Contentions

Rule 3-3

Disclosure of Preliminary Invalidity

Contentions Rule 3-4

21 Days 28 Days 21 Days 28 Days 14 Days 7 Days 14 Days 7 Days 21 Days 28 Days 21 Days 14 Days

Rule 16 Conference

Responsive Claim

Construction Brief Rule

4-5(b)

APPENDIX C. TIMELINE OF EXCHANGE AND FILING DATES

UNITED STATES DISTRICT COURT DISTRICT OF NEVADA

IN THE MATTER OF: ) )THE LOCAL RULES OF ) )PRACTICE FOR THE ) )UNITED STATES DISTRICT ) General Order 2011-02 )COURT FOR THE DISTRICT ) )OF NEVADA ) )

ORDER ADOPTING AMENDMENTS TO THE LOCAL RULES OF PRACTICE

IT IS ORDERED that the Local Rules of Practice for the United States District Court for theDistrict of Nevada effective June 1, 1995, as amended effective May 1, 1998; December 1, 2000and May 1, 2006 are hereby further amended effective August 1, 2011.

Dated this 27th day of July, 2011.

ROBERT C. JONES

CHIEF UNITED STATES DISTRICT JUDGE

LR 16.1-1. PATENT PRACTICE.

LR 16.1-1. TITLE.

These are the Local Rules of Practice for Patent Cases before the United States District Courtfor the District of Nevada.

LR 16.1-2. SCOPE AND CONSTRUCTION.

These Rules apply to all civil actions filed in or transferred to this Court, which allegeinfringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, orwhich seek a declaratory judgment that a patent is not infringed, is invalid or is unenforceable.The Local Rules of Civil Practice for this Court shall also apply to such actions, except to theextent that they are inconsistent with these Patent Local Rules.

LR 16.1-3. MODIFICATION OF RULES.

The Court may apply all or part of these Rules to any case already pending on the effectivedate of these Rules. The Court may modify the obligations and deadlines of these Rules based onthe circumstances of any particular case, including, without limitation, the simplicity orcomplexity of the case as shown by the patents, claims, products, or parties involved.Modifications may be proposed by one or more parties at the mandatory Fed. R. Civ. P. 26 (f)meeting (“Initial Scheduling Conference”), and then submitted in the stipulated discovery planand scheduling order. Modifications also may be proposed by request upon a showing of goodcause. In advance of submission of any request for a modification, the parties shall meet andconfer for purposes of reaching an agreement, if possible, upon any modification.

LR 16.1-4. CONFIDENTIALITY.

Discovery and initial disclosures under these Rules cannot be withheld on the basis ofconfidentiality absent Court order. Not later than fourteen (14) days after the Initial SchedulingConference, the parties shall file a proposed protective order. Pending entry of a discoveryconfidentiality protective order, disclosures deemed confidential by a party shall be producedwith a confidential designation (e.g., “Confidential—Attorneys Eyes Only”), and the disclosureof the information will be limited to each party’s outside counsel of record, including employeesof outside counsel of record, and used only for litigation purposes.

LR 16.1-5. CERTIFICATION OF DISCLOSURES.

All statements, disclosures, or charts filed or served in accordance with these Rules shall bedated and signed by counsel of record. Counsel’s signature shall attest that, to the best of his orher knowledge, information, and belief, formed after an inquiry that is reasonable under thecircumstances, the disclosure is made in good faith and the information contained in thestatement, disclosure, or chart is correct at the time it is made, and provides a complete statementof the information presently known to the party. Disclosures required by these Rules are inaddition to others required under the Federal Rules of Civil Procedure.

APPENDIX B

SUPPLEMENTAL RULESFOR PATENT CASES

Incorporated as Supplement to Local Rules December 1, 2011

TABLE OF CONTENTS

1.1 SCOPE OF SUPPLEMENTAL RULES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(a) Title and Citation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(b) Court Discretion to Depart from Rules. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(c) Compliance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(d) Relationship to Other Rules. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

2.1 PLEADING PATENT INFRINGEMENT CLAIMS OR COUNTERCLAIMS . . . . . . . 1(a) Special Pleading Requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(b) Scope of Discovery. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

3.1 SCHEDULING CONFERENCE, DISCOVERY PLAN, AND DISCOVERY ORDER . . 1(a) Scheduling Conference/Discovery Plan. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1(b) Protective Order. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2(c) Discovery Order. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2(d) Confidential Disclosures Pending Entry of Protective Order. . . . . . . . . . . . . . 2

4.1 GENERAL PROVISIONS GOVERNING PATENT DISCLOSURES . . . . . . . . . . . . . 2(a) Certification of Disclosures. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2(b) Admissibility of Disclosures. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2(c) Declaratory Judgment Actions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

5.1 PRELIMINARY PATENT DISCLOSURES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3(a) Preliminary Infringement Contentions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3(b) Document Production Accompanying Preliminary Infringement Contentions. . . 4(c) Preliminary Invalidity Contentions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4(d) Document Production Accompanying Preliminary Invalidity Contentions. . . . . 5

6.1 CLAIM CONSTRUCTION PROCEEDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5(a) Exchange of Proposed Terms for Construction. . . . . . . . . . . . . . . . . . . . . . . 5(b) Exchange of Preliminary Claim Constructions and Extrinsic Evidence, and

Conference of the Parties. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6(c) Joint Claim Construction and Prehearing Statement. . . . . . . . . . . . . . . . . . . 6

(d) Completion of Claim Construction Discovery. . . . . . . . . . . . . . . . . . . . . . . . 7(e) Claim Construction Briefs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7(f) Claim Construction Hearing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

7.1 FINAL PATENT DISCLOSURES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7(a) Final Infringement Contentions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7(b) Final Invalidity Contentions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

8.1 EXPERT DISCOVERY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8(a) Expert Reports. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8(b) Completion of Expert Depositions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

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1.1 SCOPE OF SUPPLEMENTAL RULES

(a) Title and Citation. The procedures governing all patent cases in which jurisdiction isbased, in whole or in part, on 28 U.S.C. § 1338, shall be known as the "Supplemental PatentRules." They shall be cited as "SPR ___."

(b) Court Discretion to Depart from Rules. The court shall have the discretion to departfrom the specific provisions of the Supplemental Patent Rules to the extent a particular casepresents exceptional circumstances warranting such departure.

(c) Compliance. In cases in which the Supplemental Patent Rules apply, the provisionsherein shall bind the parties, and the parties may not seek to circumvent these provisions (e.g.,by pursuing discovery into infringement and invalidity contentions through discovery requestsseeking responses prior to the contentions process set out herein).

(d) Relationship to Other Rules. For all matters not addressed by the SupplementalPatent Rules, the Federal Rules of Civil Procedure, other applicable Local Rules, and anyapplicable judicial orders shall govern.

2.1 PLEADING PATENT INFRINGEMENT CLAIMS OR COUNTERCLAIMS

(a) Special Pleading Requirements. Any pleading containing patent infringement claimsor counterclaims must contain:

(1) a list of all products or processes (by model number, trade name, or other specificidentifying characteristic) for which the claimant or counterclaimant has developed agood-faith basis for alleging infringement, as of the time of filing the pleading; and

(2) at least one illustrative asserted patent claim (per asserted patent) for each accusedproduct or process.

(b) Scope of Discovery. Discovery shall not be limited to the products and processesnamed in the complaint. The party asserting infringement may also engage in discovery intoother products with reasonably similar features or other processes with reasonably similarsteps.

3.1 SCHEDULING CONFERENCE, DISCOVERY PLAN, AND DISCOVERY ORDER

(a) Scheduling Conference/Discovery Plan. In the absence of exceptional circumstances,not later than thirty (30) days after service of the last filed answer, the court will hold a patentcase scheduling conference. Pursuant to the process set forth in Federal Rule of CivilProcedure 26(f), the parties shall meet and confer in advance of this conference. The parties'Rule 26(f) "Discovery Plan" shall address the following sections contained in the Civil Form 2,

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Sample Discovery Plan: Date/Place of Conference; Counsel Present/Representing; CaseSummary; Jurisdictional Questions; Type of Trial; Discovery Needed; Electronic InformationDisclosures; Stipulation Regarding Claims of Privilege/Protection of Trial PreparationMaterials; Interrogatories; Requests for Admission; Depositions; Disclosures of ClaimsAgainst Unnamed Parties; Joinder of Additional Parties; Amendment of Pleadings; SettlementPossibilities; Joint Statement Re Mediation; Trial Estimate; and Trial Date.

(b) Protective Order. Contemporaneous with the filing of the Discovery Plan, the partiesmay also submit:

(1) a jointly proposed protective order, or

(2) competing proposed protective orders accompanied by memoranda (5 pages orless) explaining the differences between the proposed orders and each party'sjustification for its proposal.

Jointly proposed protective orders are strongly preferred by the court.

(c) Discovery Order. The court will issue a discovery order promptly after theconference, which shall include a trial date. Subject to the demands of the court's docket, trialshould be scheduled for no later than two (2) years after the date the complaint was filed. Thecourt will also rule promptly after the conference on any proposed protective order(s).

(d) Confidential Disclosures Pending Entry of Protective Order. Prior to entry of aprotective order, no party may delay disclosures under the Supplemental Patent Rules, orresponses to discovery, on the ground of confidentiality. Confidential disclosures anddiscovery responses may be designated (by the producing party) as "outside attorneys' eyesonly" until the entry of a protective order, at which point all information must be treated inaccord with the terms of the protective order.

4.1 GENERAL PROVISIONS GOVERNING PATENT DISCLOSURES

(a) Certification of Disclosures. All statements, disclosures, or charts filed or served inaccordance with the Supplemental Patent Rules shall be dated and signed by counsel of record. Counsel's signature shall constitute a certification that to the best of his or her knowledge,information, and belief, formed after an inquiry that is reasonable under the circumstances, theinformation contained in the statement, disclosure, or chart was complete and correct at thetime it was made.

(b) Admissibility of Disclosures. Statements, disclosures, or charts governed by theSupplemental Patent Rules are admissible evidence to the extent permitted by the Federal Rulesof Evidence or Procedure and any applicable judicial orders (e.g., orders adjudicating motionsin limine). The statements, disclosures, or charts are also admissible in separate proceedings(e.g., Patent Office proceedings) to the extent permitted by the rules governing suchproceedings.

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(c) Declaratory Judgment Actions. The same disclosure process (including the samesequence of disclosures) shall apply in declaratory judgment actions in which the plaintiff isasserting noninfringement and/or invalidity and/or unenforceability of the patent(s)-in-suit. Forexample, in such actions the defendant-patentee will assert Preliminary InfringementContentions pursuant to the schedule set out below. If infringement is not contested, theparties shall follow the same disclosure process, but shall limit their contentions andaccompanying document productions to those issues that are in dispute.

5.1 PRELIMINARY PATENT DISCLOSURES

(a) Preliminary Infringement Contentions. Not later than forty-five (45) days afterservice of the last filed answer, a party claiming patent infringement shall serve on all partiesits "Preliminary Infringement Contentions." The "Preliminary Infringement Contentions" shallinclude an infringement claim chart for each accused product or process ("AccusedInstrumentality"). However, if certain Accused Instrumentalities have the same relevantcharacteristics, they can be grouped together in the same chart.

(1) Each claim chart shall contain the following contentions:

(A) Each claim of each patent in suit that is allegedly infringed by suchAccused Instrumentality;

(B) For each claim, an identification of the subsection(s) of 35 U.S.C. § 271that are asserted;

(C) A specific identification of where each limitation of the claim is foundwithin each Accused Instrumentality, including for each limitation that suchparty contends is governed by 35 U.S.C. § 112(6), the identity of thestructure(s), act(s), or material(s) in the Accused Instrumentality that performsthe claimed function; and

(D) Whether each limitation of each asserted claim is alleged to be literallypresent or present under the doctrine of equivalents in the AccusedInstrumentality.

(2) In addition to the claim chart(s), the "Preliminary Infringement Contentions" shallalso include the following contentions:

(A) For each claim which is alleged to have been indirectly infringed, anidentification of any direct infringement, the identity of the known directinfringer(s), and a description of the acts of the alleged indirect infringer thatcontribute to or are inducing that direct infringement;

(B) To the extent that the alleged direct infringement is based on joint acts ofmultiple parties, the identity of each such party and the role of each such partyin the direct infringement;

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

(D) If a party claiming patent infringement wishes to preserve the right to rely,for any purpose, on the assertion that it practices (or practiced) the claimedinvention, the party shall identify, separately for each asserted claim, each suchapparatus, product, device, process, method, act, or other instrumentality thatpractices (or practiced) that particular claim, and the date(s) that the partybegan and (if completed) ended such practicing of the claimed invention.

(b) Document Production Accompanying Preliminary Infringement Contentions. With the Preliminary Infringement Contentions, the party asserting patent infringement shallproduce to each opposing party or make available for inspection and copying:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketingmaterials, 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 useof, the claimed invention prior to the date of application for each patent in suit. Aparty's production of a document as required herein shall not constitute an admissionthat such document evidences or is prior art under 35 U.S.C. § 102;

(2) All documents evidencing the conception, reduction to practice, design, anddevelopment of each claimed invention, which were created on or before the date ofapplication for each patent in suit or the priority date identified pursuant to SPR 5.1(a),whichever is earlier;

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

(4) All documents evidencing ownership of the patent rights by the party assertingpatent infringement; and

(5) If a party identifies its own practicing instrumentalities pursuant to SPR 5.1(a),documents sufficient to show the operation of any aspects or elements of suchinstrumentalities the patent claimant relies upon as embodying any asserted claims.

The producing party shall separately identify by production number(s) which documentscorrespond to each category.

(c) Preliminary Invalidity Contentions. Not later than forty-five (45) days after serviceof the Preliminary Infringement Contentions, each party opposing a claim of patentinfringement shall serve on all parties its "Preliminary Invalidity Contentions," which shallcontain the following contentions:

(1) The identity of each item of prior art that allegedly anticipates each asserted claimor renders it obvious. Each prior art patent shall be identified by its number, country

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of origin, and date of issue. Each prior art publication shall be identified by its title,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 publiclyused or known, the date the offer or use took place or the information became known,and the identity of the person or entity which made the use or which made and receivedthe offer, or the person or entity which made the information known or to whom it wasmade known. Prior art under 35 U.S.C. § 102(f) shall be identified by providing thename of the person(s) from whom and the circumstances under which the invention orany part of it was derived. Prior art under 35 U.S.C. § 102(g) shall be identified byproviding the identities of the person(s) or entities involved in, and the circumstancessurrounding, the making of the invention before the patent applicant(s);

(2) Whether each item of prior art anticipates each asserted claim or renders it obviousand, if obviousness is alleged, an explanation of why the prior art renders the assertedclaim obvious, including an identification of combinations of prior art showingobviousness, and an explanation of why a person of skill in the art would find obviousthe asserted claim(s) in light of such combinations (e.g., reasons for combiningreferences);

(3) A chart (or charts) identifying where specifically in each alleged item of prior arteach limitation of each asserted claim is found, including for each limitation that suchparty contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s),act(s), or material(s) in each item of prior art that performs the claimed function; and

(4) Any other asserted grounds of invalidity of any asserted claim(s), includingcontentions based on 35 U.S.C. § 101 or 35 U.S.C. § 112.

(d) Document Production Accompanying Preliminary Invalidity Contentions. With thePreliminary Invalidity Contentions, the party opposing a claim of patent infringement shallproduce or make available for inspection and copying:

(1) Documents sufficient to show the operation of any aspects or elements of anAccused Instrumentality identified by the patent claimant in its SPR 5.1(a) chart(s); and

(2) A copy or sample of the prior art identified pursuant to SPR 5.1(c) which does notappear in the file history of the patent(s) at issue. To the extent any such item is not inEnglish, an English translation of the portion(s) relied upon shall be produced.

The producing party shall separately identify by production number(s) which documentscorrespond to each category.

6.1 CLAIM CONSTRUCTION PROCEEDINGS

(a) Exchange of Proposed Terms for Construction. Not later than fourteen (14) daysafter service of the Preliminary Invalidity Contentions, or not later than sixty (60) days after

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service of the Preliminary Infringement Contentions in those actions in which validity is not atissue (and SPR 5.1(c) does not apply), each party shall serve on all other parties a list of claimterms which that party contends should be construed by the court, and identify any claim termwhich that party contends should be governed by 35 U.S.C. § 112(6).

(b) Exchange of Preliminary Claim Constructions and Extrinsic Evidence, andConference of the Parties.

(1) Not later than fourteen (14) days after the exchange of the proposed terms forconstruction pursuant to SPR 6.1(a), the parties shall simultaneously exchangeproposed constructions of each term identified by either party for claim construction. Each such "Preliminary Claim Construction" shall also, for each term which any partycontends is governed by 35 U.S.C. § 112(6), identify the function of that term and thestructure(s), act(s), or material(s) corresponding to that term's function;

(2) 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 tolearned treatises and prior art, and testimony of percipient and expert witnesses. Extrinsic evidence shall be identified by production number or by producing a copy ifnot previously produced. With respect to any supporting witness, percipient or expert,the identifying 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;

(3) Not later than fourteen (14) days after the exchange of the Preliminary ClaimConstructions, the parties shall thereafter meet and confer for the purposes of limitingthe terms in dispute by narrowing or resolving differences and facilitating the ultimatepreparation of a Joint Claim Construction and Prehearing Statement. The parties shallalso jointly identify no more than ten (10) disputed terms per patent in suit, forinclusion in the Joint Claim Construction and Prehearing Statement. In the event of adispute as to which terms to include in the Joint Claim Construction and PrehearingStatement, each side shall be presumptively limited to five (5) disputed terms per patentin suit, which limit can only be altered by leave of court.

(c) Joint Claim Construction and Prehearing Statement. Not later than fourteen (14)days after they meet and confer pursuant to SPR 6.1(b)(3), the parties shall complete and file aJoint Claim Construction and Prehearing Statement. This statement shall address no more thanten (10) disputed terms per patent in suit, and shall contain the following information:

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

(2) 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 on

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which it intends to rely either to support its proposed construction or to oppose anyother party'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;

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

(4) Whether any party proposes to call one or more witnesses at the ClaimConstruction Hearing, the identity of each such witness, and for each witness, asummary of his or her testimony including, for any expert, each opinion to be offeredrelated to claim construction.

(d) Completion of Claim Construction Discovery. Not later than twenty-one (21) daysafter the filing of the Joint Claim Construction and Prehearing Statement, the parties shallcomplete all discovery relating to claim construction, including any depositions with respect toclaim construction of any witnesses, including experts, identified in the Joint ClaimConstruction and Prehearing Statement.

(e) Claim Construction Briefs.

(1) Not later than twenty-one (21) days after the deadline for completion of claimconstruction discovery as set forth in section (d) above, the parties shall file theirrespective opening briefs and any evidence supporting their claim constructions. Eachparty's opening brief may not exceed thirty (30) pages absent prior leave of court;

(2) Not later than fourteen (14) days after service of an opening brief, each opposingparty shall file its responsive brief and supporting evidence. Each party's responsivebrief may not exceed twenty (20) pages absent prior leave of court;

(3) Further briefing (including reply and surreply briefing) is not permitted withoutprior leave of court.

(f) Claim Construction Hearing. Not later than sixty (60) days after service ofresponsive briefs, and subject to the convenience of the court's calendar, the court will conducta claim construction hearing if the court believes a hearing is necessary for construction of theclaims at issue. The court may also order in its discretion a tutorial hearing, to occur before,or on the date of, the claim construction hearing. The court will work expeditiously to issue aprompt claim construction order after the hearing.

7.1 FINAL PATENT DISCLOSURES

(a) Final Infringement Contentions.

(1) Not later than twenty-one (21) days after service of the court's claim constructionorder, any party asserting infringement must serve on all parties its "Final Infringement

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Contentions," which shall include the party's final statement of all contentions requiredby SPR 5.1(a). A party may not assert at trial any infringement contentions not set outin its Final Infringement Contentions;

(2) To the extent the Final Infringement Contentions identify additional accusedproducts or processes not set out in the Preliminary Infringement Contentions, suchamendment must be supported by good cause (e.g., discovery of previously unavailableinformation) and the party asserting infringement must include a separate statementproviding the specific grounds establishing such good cause. The accused infringermay move to exclude such amendment on the ground that good cause does not exist. Such motion must be filed within fourteen (14) days after service of the FinalInfringement Contentions. If such motion is filed (or if filed not granted), theamendment will be effective.

(b) Final Invalidity Contentions.

(1) Not later than twenty-one (21) days after service of the Final InfringementContentions, each accused infringer must serve on all parties its "Final InvalidityContentions," which must include that party's final statement of all contentionsrequired by SPR 5.1(c). The party may not assert at trial any invalidity contentions notset out in its Final Invalidity Contentions;

(2) To the extent the Final Invalidity Contentions identify additional prior art, suchamendment must be supported by good cause (e.g., discovery of previously unavailableinformation) and the accused infringer must include a separate statement providing thespecific grounds establishing such good cause. The party asserting infringement maymove to exclude such amendment on the ground that good cause does not exist. Suchmotion must be filed within fourteen (14) days after service of the Final InvalidityContentions. If such motion is not filed (or if filed not granted), the amendment willbe effective.

8.1 EXPERT DISCOVERY

Expert discovery on issues other than claim construction will proceed as follows:

(a) Expert Reports.

(1) Opening expert reports on issues for which the parties will bear the burden ofproof at trial will be due forty-five (45) days after service of the Final InvalidityContentions, or, in cases in which invalidity is not at issue, forty-five (45) days afterservice of the Final Infringement Contentions;

(2) Rebuttal expert reports will be due forty-five (45) days after service of the openingexpert reports.

(b) Completion of Expert Depositions. Completion of expert depositions will occur nolater than forty-five (45) days after service of the rebuttal expert reports.

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LR 16.1-6. INITIAL DISCLOSURE OF ASSERTED CLAIMS ANDINFRINGEMENT CONTENTIONS.

Within fourteen (14) days after the Initial Scheduling Conference pursuant to Fed. R.Civ. P. 26(f), a party claiming patent infringement shall serve on all parties a “Disclosure ofAsserted Claims and Infringement Contentions.” Separately for each opposing party, theDisclosure of Asserted Claims and Infringement Contentions shall contain the followinginformation:

(a) 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;

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

(c) A chart identifying specifically where each limitation of each asserted claim is foundwithin each Accused Instrumentality, including for each limitation that such party contends isgoverned by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in theAccused Instrumentality that performs the claimed function;

(d) For each claim which is alleged to have been indirectly infringed, an identification of anydirect infringement and a description of the acts of the alleged indirect infringer that contributeto or are inducing that direct infringement. Insofar as alleged direct infringement is based onjoint acts of multiple parties, the role of each such party in the direct infringement must bedescribed;

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

(f) For any patent that claims priority to an earlier application, the priority date to which eachasserted claim allegedly is entitled;

(g) If a party claiming patent infringement wishes to preserve the right to rely, for anypurpose, on the assertion that is own apparatus, product, device, process, method, act, or otherinstrumentality practices the claimed invention, the party shall identify, separately for eachasserted claim, each such apparatus, product, device, process, method, act, or otherinstrumentality that incorporates or reflects that particular claim; and,

(h) If a party claiming patent infringement alleges willful infringement, the basis for suchallegation.

LR 16.1-7. DOCUMENT PRODUCTION ACCOMPANYING ASSERTEDCLAIMS AND INFRINGEMENT CONTENTIONS.

With the Disclosure of Asserted Claims and Infringement Contentions, the party claimingpatent infringement shall produce to each opposing party or make available for inspection andcopying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketingmaterials, offer letters, beta site testing agreements, and third party or joint developmentagreements) sufficient to evidence each discussion with, disclosure to, or other manner ofproviding to a third party, or sale of or offer to sell, or any public use of, the claimed inventionprior to the date of application for the patent in suit. A party’s production of a document asrequired herein shall not constitute an admission that such document evidences or is prior artunder 35 U.S.C. § 102;

(b) All documents evidencing the conception, reduction to practice, design and developmentof each claimed invention, which were created on or before the date of application for the patentin suit or the priority date identified pursuant to LR 16.1- 6(f), whichever is earlier;

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

(d) All documents evidencing ownership of the patent rights by the party asserting patentinfringement; and,

(e) If a party identifies instrumentalities pursuant to LR 6.1-6(g), documents sufficient toshow the operation of any aspects or elements of such instrumentalities the patent claimant reliesupon as embodying any asserted claims. The producing party shall separately identify byproduction number which documents correspond to each category.

LR 16.1-8. INITIAL DISCLOSURE OF NON-INFRINGEMENT, INVALIDITY,AND UNENFORCEABILITY CONTENTIONS.

Within forty-five (45) days after service of the Initial Infringement Contentions, each partyopposing a claim of patent infringement shall serve on all other parties “Non-Infringement,Invalidity and Unenforceability Contentions” which shall include:

(a) A detailed description of the factual and legal grounds for contentions ofnon-infringement, if any, including a clear identification of each limitation of each assertedclaim alleged not to be present in the Accused Instrumentality;

(b) A detailed description of the factual and legal grounds for contentions of invalidity, ifany, including an identification of the prior art relied upon and where in the prior art eachelement of each asserted claim is found. 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, dateof publication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) shallbe identified by specifying the item offered for sale or publicly used or known, the date the offer

or use took place or the information became known, and the identity of the person or entitywhich made the use or which made and received the offer, or the person or entity which madethe information known or to whom it was made known. Prior art under 35 U.S.C. § 102(f) shallbe identified by providing the name of the person(s) from whom and the circumstances underwhich the invention or any part of it was derived. Prior art under 35 U.S.C. § 102(g) shall beidentified by providing the identities of the person(s) or entities involved in and thecircumstances surrounding the making of the invention before the patent applicant(s);

(c) Whether each item of prior art anticipates each asserted claim or renders it obvious. Ifobviousness is alleged, an explanation of why the prior art renders the asserted claim obvious,including an identification of any combinations of prior art showing obviousness;

(d) A chart identifying where specifically in each alleged item of prior art each limitation ofeach asserted claim is found, including for each limitation that such party contends is governedby 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of priorart that performs the claimed function;

(e) A detailed statement of any grounds of invalidity based on 35 U.S.C. § 101,indefiniteness under 35 U.S.C. § 112(2) or failure of enablement, best mode, or writtendescription requirements under 35 U.S.C. § 112(1); and

(f) A detailed description of the factual and legal grounds for contentions of unenforceability,if any, including the identification of all dates, conduct, persons involved, and circumstancesrelied upon for the contention, and where unenforceability is based upon any alleged affirmativemisrepresentation or omission of material fact committed before the United States Patent andTrademark Office, the identification of all prior art, dates of the prior art, dates of relevantconduct, and persons responsible for the alleged affirmative misrepresentation or omission ofmaterial fact.

LR 16.1-9. DOCUMENT PRODUCTION ACCOMPANYING INVALIDITYCONTENTIONS.

At the time of service of the Non-Infringement, Invalidity, and Unenforceability Contentions,each party defending against patent infringement shall also produce to each opposing party ormake available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or otherdocumentation sufficient to show the operation of any aspects or elements of an AccusedInstrumentality identified by the patent claimant in its LR 16.1-6(c) chart; and,

(b) A copy or sample of the prior art identified pursuant to LR 16.1-6(b), which does notappear in the file history of the patent(s) at issue. To the extent any such item is not in English,an English translation of the portion(s) relied upon shall be produced. The producing party shallseparately identify by production number which documents correspond to each category.

LR 16.1-10. RESPONSE TO INITIAL NON-INFRINGEMENT, INVALIDITY ANDUNENFORCEABLITY CONTENTIONS.

Within fourteen (14) days after service of the initial Non-Infringement, Invalidity andUnenforceability Contentions, each party claiming patent infringement shall serve on all otherparties its response to Non-Infringement, Invalidity and Unenforceability Contentions. Theresponse shall include a detailed description of the factual and legal grounds responding to eachcontention of non-infringement, invalidity, including whether the party admits to the identity ofelements in asserted prior art and, if not, the reason for such denial; and unenforceability.

LR 16.1-11. DISCLOSURE REQUIREMENT IN PATENT CASES FORDECLARATORY JUDGMENT OF INVALIDITY.

In all cases in which a party files a complaint seeking a declaratory judgment that a patent isnot infringed, is invalid, or is unenforceable, each party seeking a declaratory judgment shallserve on all other parties its initial Non-Infringement, Invalidity and UnenforceabilityContentions and corresponding LR 16.1-9 document production within fourteen (14) days afterthe Initial Scheduling Conference. Within forty-five (45) days after service of the initialNon-Infringement, Invalidity and Unenforceability Contentions, each party opposing thedeclaratory judgment shall serve on all other parties its response to these initial contentions, andif the opposing party asserts a claim for patent infringement, its initial Disclosure of AssertedClaims and Infringement Contentions, including corresponding LR 16.1-7 document production.This LR 16.1-11 shall not apply to cases in which a request for a declaratory judgment that apatent is invalid is filed in response to a complaint for infringement of the same patent.

LR 16.1-12. AMENDMENT TO DISCLOSURES.

Amendment of initial disclosures required by these Rules may be made for good causewithout leave of Court anytime before the discovery cut-off date. Thereafter, the disclosuresshall be final and amendment of the disclosures may be made only by order of the Court upon atimely showing of good cause. Non-exhaustive examples of circumstances that may, absentundue prejudice to the non-moving party, support a finding of good cause, include: (a) a claimconstruction by the Court different from that proposed by the party seeking amendment; (b)recent discovery of material prior art despite earlier diligent search; and, (c) recent discovery ofnonpublic information about the Accused Instrumentality despite earlier diligent search. Theduty to supplement discovery response does not excuse the need to obtain leave of Court toamend contentions.

LR 16.1-13. EXCHANGE OF PROPOSED TERMS FOR CONSTRUCTION.

Not later than ninety (90) days after the Initial Scheduling Conference pursuant to Fed. R.Civ. P. 26(f), each party shall serve on each other party a list of patent claim terms, which thatthe party contends should be construed by the Court, and identify any claim term which the partycontends should be governed by 35 U.S.C. § 112(6). The parties shall thereafter meet and conferfor the purposes of limiting the terms in dispute by narrowing or resolving differences andfacilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement. The

parties shall jointly identify the terms likely to be most significant to resolving the parties’dispute, including those terms for which construction may be case or claim dispositive.

LR 16.1-14. EXCHANGE OF PRELIMINARY CLAIM CONSTRUCTIONS ANDEXTRINSIC EVIDENCE.

Not later than thirty (30) days after the exchange of lists pursuant to LR 16. 1-13, the partiesshall simultaneously exchange proposed constructions of each term identified by either party forclaim construction. Each such “Preliminary Claim Construction” shall also, for each term whichany party contends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), ormaterial(s) corresponding to that term’s function.

At the same time the parties exchange their respective Preliminary Claim Constructions, eachparty shall also:

(a) Identify all references from the specifications or prosecution history that support itsproposed construction and designate any supporting extrinsic evidence including, withoutlimitation, dictionary definitions, citations to learned treatises and prior art, and testimony ofpercipient and expert witnesses. Extrinsic evidence shall be identified by production number orby producing a copy if not previously produced. With respect to any supporting witness,percipient or expert, the identifying party shall also provide a description of the substance of thatwitness’ proposed testimony that includes a listing of any opinions to be rendered in connectionwith claim construction; and,

(b) Schedule a time for counsel to meet and confer for the purposes of narrowing the issuesand finalizing preparation of a Joint Claim Construction and Prehearing Statement.

LR 16.1-15. JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT.

Not later than forty-five (45) days after the exchange of lists pursuant to LR 16.1-13, theparties shall prepare and submit to the Court a Joint Claim Construction and PrehearingStatement, which shall contain the following information:

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

(b) Each party’s proposed construction of each disputed term, together with an identificationof all references from the specification or prosecution history that support that construction, andan identification of any extrinsic evidence known to the party on which it intends to rely either tosupport its proposed construction or to oppose any other party’s proposed construction,including, but not limited to, as permitted by law, dictionary definitions, citations to learnedtreatises and prior art, and testimony of percipient and expert witnesses;

(c) An identification of the terms whose construction will be most significant to theresolution of the case. The parties shall also identify any term whose construction will be case orclaim dispositive;

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

(e) Whether any party proposes to call one or more witnesses at the Claim ConstructionHearing, the identity of each such witness, and for each witness, a summary of his or hertestimony including, for any expert, each opinion to be offered related to claim construction.Terms to be construed by the Court shall be included in a chart that sets forth the claim languageas it appears in the patent with terms and phrases to be construed in bold and include eachparties’ proposed construction and any agreed proposed construction.

LR 16.1-16. CLAIM CONSTRUCTION BRIEFING.

Not later than thirty (30) days after submitting to the Court the Joint Claim Construction andPrehearing Statement, the party claiming patent infringement, or the party asserting invalidity ifthere is no infringement issue present in the case, shall serve and file an opening claimconstruction brief and any evidence supporting its claim construction.

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

Not later than seven (7) days after service upon it of a responsive brief, the party claimingpatent infringement, or the party asserting invalidity if there is no infringement issue present inthe case, shall serve and file any reply brief and any evidence directly rebutting the supportingevidence contained in an opposing party’s response.

LR 16.1-17. CLAIM CONSTRUCTION HEARING.

The Court may conduct a claim construction hearing, if it believes a hearing is necessary forconstruction of the claims. A party may request a hearing at the time of its briefing pursuant toLR 16.1-16.

LR 16.1-18. AMENDING CLAIM CONSTRUCTION SCHEDULE.

The claim construction schedule under this Rule may be amended with leave of Court ascircumstances warrant, including the Court’s decision to adjudicate issues regarding patentvalidity, patent enforceability or both before claim construction is necessary.

LR 16.1-19. MANDATORY SETTLEMENT CONFERENCES FOR PATENTCASES.

Mandatory settlement conferences for patent cases shall be conducted by the magistratejudge assigned to the case as follows:

(a) A Pre-Claim Construction Settlement Conference shall be held within thirty (30) daysafter the parties have submitted all initial disclosures and responses thereto as required under LR16.1-6 through LR 16.1-12;

(b) A Post-Claim Construction Order Settlement conference shall be held within thirty (30)days after entry of the claim construction order;

(c) A Pretrial Settlement Conference shall be held within thirty (30) days after filing thePretrial Order or further order of the Court.

LR 16.1-20. STAY OF FEDERAL COURT PROCEEDINGS.

The Court may order a stay of litigation pending the outcome of a reexamination proceedingbefore the United States Patent and Trademark Office that concerns a patent at issue in thefederal court litigation. Whether the Court stays litigation upon the request of a party will dependon the circumstances of each particular case, including without limitation: (1) whether a stay willunduly prejudice or present a clear tactical disadvantage to the nonmoving party, (2) whether astay will simplify the issues in question and the trial of the case, (3) whether discovery iscomplete, and (4) whether a trial date has been set.

LR 16.1-21. GOOD FAITH PARTICIPATION.

A failure to make a good faith effort to provide initial disclosures, narrow the instances ofdisputed claim construction terms, participate in the meet and confer process, or comply withany other of the obligations under these Rules may expose counsel to sanctions, including under28 U.S.C. § 1927.

LOCAL CIVIL AND CRIMINAL RULES

OF THE


FOR THE

DISTRICT OF NEW JERSEY

With Revisions as of November 1, 2011

(e) Time and Procedure for Objection to Sale. An interested person may object to the sale byfiling a written objection with the Clerk within seven days following the sale, serving theobjection on all parties of record, the successful bidder, and the Marshal, and depositing suchsum with the Marshal as determined by him or her to be sufficient to pay the expense of keepingthe property for at least seven days. Payment to the Marshal shall be in cash, certified check orcashier's check.

(f) Confirmation of Sale. A sale shall be confirmed by order of the Court within seven days, butno sooner than three days, after the sale. If an objection to the sale has been filed, the Court shallhold a hearing on the confirmation of the sale. The Marshal shall transfer title to the purchaserupon the order of the Court.

(g) Disposition of Deposits.

(1) Objection Sustained. If an objection is sustained, sums deposited by the successful bidderwill be returned to the bidder forthwith. The sum deposited by the objector will be applied to paythe fees and expenses incurred by the Marshal in keeping the property until it is resold, and anybalance remaining shall be returned to the objector. The objector will be reimbursed for theexpense of keeping the property from the proceeds of a subsequent sale.

(2) Objection Overruled. If the objection is overruled, the sum deposited by the objector will beapplied to pay the expense of keeping the property from the day the objection was filed until theday the sale is confirmed, and any balance remaining will be returned to the objector forthwith.

LAMR (e)(13) Discharge of Stipulations for Value and Other Security. When an order isentered in any cause marking the case dismissed or settled, the entry shall operate as acancellation of all stipulations for value or other security provided to release the property seizedthat were filed in the case, unless otherwise provided in the order or by the Court.

LOCAL ADMIRALTY AND MARITIME RULE (f). LIMITATION OF LIABILITY

LAMR (f) Security for Costs. The amount of security for costs under Supplemental Rule F(1)shall be $250, and it may be combined with the security for value and interest, unless otherwiseordered.

Source: G.R. 5.

L. Civ. R. 9.3 -- LOCAL PATENT RULES

TABLE OF CONTENTS EXPLANATORY NOTES FOR 2011 AMENDMENTS

1. SCOPE OF RULES1.1. Title

1.2. Scope and Construction1.3. Modification of these Rules1.4. Effective Date1.5. Patent Pilot Project

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2. GENERAL PROVISIONS2.1. Governing Procedure

(a) Initial Scheduling Conference2.2. Confidentiality2.3. Relationship to Federal Rules of Civil

Procedure2.4. Exchange of Expert Materials

3. PATENT DISCLOSURES3.1. Disclosure of Asserted Claims and Infringement Contentions3.2. Document Production Accompanying Disclosure3.2A. Non-Infringement Contentions and Responses3.3. Invalidity Contentions3.4. Document Production Accompanying Invalidity Contentions

3.4A. Responses to Invalidity Contentions3.5. Disclosure Requirement in Patent Cases for Declaratory Judgment

of Invalidity

(a) Invalidity Contentions If No Claimof Infringement

(b) Inapplicability of Rule3.6. Disclosure Requirements for Patent Cases Arising Under 21

U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”)3.7. Amendments3.8. Advice of Counsel

4. CLAIM CONSTRUCTION PROCEEDINGS4.1. Exchange of Proposed Terms for Construction4.2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence4.3. Joint Claim Construction and Prehearing Statement4.4. Completion of Claim Construction Discovery4.5. Claim Construction Submissions4.6. Claim Construction Hearing

UNITED STATES DISTRICT COURTDISTRICT OF NEW JERSEY

REPORT OF THE LOCAL PATENT RULES COMMITTEEExplanatory Notes for 2011 Amendments

In September 2010, almost two years after the Local Patent Rules had been adopted, theCommittee reconvened to assess the impact and effectiveness of the Local Patent Rules. Basedon the experiences of members of the Committee from the Judiciary and the Bar, there was anunanimous view that the Local Patent Rules have served to benefit the Court and the parties inpatent litigation.

Notwithstanding those positive experiences, the Committee also believed that certainamendments might be warranted. Those areas of proposed changes include: (a) design patents;(b) certain disclosure obligations; (c) clarifying disclosure of evidence in connection with aMarkman hearing; (d) need for responses to infringement and invalidity contentions; (e) specificmodifications for disclosures exclusive to Hatch-Waxman cases; (f) amendments to requiredsubmissions or filings; and clarification in the language of rules.

Subcommittees were appointed for each of the subject areas and shortly thereafterrecommendations were proposed to the full Committee, which discussed them at length.

With regard to design patents, shortly after the Committee had submitted its proposedpatent rules in 2008, the Court of Appeals for the Federal Circuit issued its en banc ruling inEgyptian Goddess v. Swisa, 543 F.3d 665 (2008), which held, in part, that a trial court should notprovide a detailed verbal description of the claimed design. This holding is in tension withcertain of the Local Patent Rules which call for a narrative claims chart, claim constructioncontentions and a claim construction hearing. The Committee determined that in light of theFederal Circuit authority modifications were appropriate to better suit the needs of designpatents. See L. Pat. R. 3.1(c) and (e); 3.3(c); 3.4A(c); 4.1(c); 4.2(e); 4.3(g); 4.4; and 4.5(d).

While the Local Patent Rules expressly reference obligations regarding infringement andinvalidity, the Committee noted that in cases outside of Hatch-Waxman matters, no provisionpresently exists that requires the allegedly infringing party to provide its non-infringementcontentions. Accordingly, the Committee proposed disclosure obligations for non-infringementsimilar to those required for assertion of infringement and invalidity. See L. Pat. R. 3.2A(a) and(b); and 3.4(c).

As to invalidity contentions, while there are disclosure obligations by a party assertinginvalidity, the Committee determined that a requirement that mandates that the patent holderrespond in kind to invalidity contentions will provide parity between the parties and serve tofocus the invalidity challenge. See L. Pat. R. 3.4A(a),(b) and (c); and 3.5 (a).

To help ensure that the spirit of the disclosure obligations is fully appreciated, theCommittee recommended various rules requiring parties to disclose all materials that they intendto rely upon in connection with infringement, non-infringement, and invalidity contentions and orresponses thereto. See L. Pat. R. 3.2(f); 3.2A(c); 3.4(c); and 3.4A(d).

In the area of Hatch-Waxman actions under L. Pat. R. 3.6, the Committee concluded thatin order to help narrow the focus of a generic’s invalidity contentions, the patent holder should berequired to provide early disclosure of each patent and patent claim for infringement to which itsinfringement contentions would be limited. This eliminates speculation and added work by thegenerics in formulating their non-infringement and invalidity contentions. Changesrecommended to disclosure obligations in non-Hatch-Waxman cases as they would apply in the

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Hatch-Waxman context were also proposed. In addition, the Committee determined that theANDA filer should produce its Abbreviated New Drug Application or New Drug Applicationshortly after filing an answer or motion as this is a fundamental element of the Hatch-Waxmanaction. It was also recommended that the ANDA filer be required to advise the Food and DrugAdministration (“FDA”) of any motion for injunctive relief and supply the parties with relevantcommunications with the FDA which concern the subject matter filed in the District Court. Thisis intended to keep the FDA and parties apprised of any proceedings that may impact the ongoinglitigation. See L. Pat. R. 3.6(a), (b), (c), (i) and (j).

In an effort to avoid potential misunderstandings as to the scope of permittedamendments to obligations under the Local Patent Rules, the Committee sought to clarify thatamendments apply to all filings with the Court or exchanges between the parties as may berequired by the Local Patent Rules. The proposed rule also makes plain that any amendmentsrequire the approval of the Court, notwithstanding consent by the parties. See L. Pat. R. 3.7.

Finally, as to claim construction and claim construction proceedings, the Committeeproposed adding language to clarify that evidence to be used must be disclosed in a timelyfashion. See L. Pat. R. 4.2(b) and (c); and 4.3(f).

In December 2010, the Committee submitted the proposed amendments to the Board ofJudges for their consideration.

Local Patent Rules Committee

Hon. Jerome B. Simandle, U.S.D.J., ChairHon. Stanley R. Chesler, U.S.D.J.Hon. Mary L. Cooper, U.S.D.J.Hon. Faith S. Hochberg, U.S.D.J.Hon. Peter G. Sheridan, U.S.D.J.Hon. Tonianne J. Bongiovanni, U.S. M.J.Hon. Joel Schneider, U.S.M.J.Hon. Mark Falk, U.S.M.J.Hon. Patty Shwartz, U.S.M.J.John T. O’Brien, Legal CoordinatorArnold B. Calmann, Esq.Thomas Curtin, Esq.David De Lorenzi, Esq.Marc S. Friedman, Esq.Dennis F. Gleason, Esq.Mary Sue Henifin, Esq.Norman E. Lehrer, Esq.Peter Menell, Prof. of Law, Univ. of Calif., Berkeley School of LawWilliam L. Mentlik, Esq.George F. Pappas, Esq.Matthew D. Powers, Esq.Donald Robinson, Esq.Robert G. Shepherd Esq.December 2, 2010

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L. Civ. R. 9.3 -- LOCAL PATENT RULES1. SCOPE OF RULES

1.1. Title.These are the Local Patent Rules for the United States District Court for the District of

New Jersey. They should be cited as “L. Pat. R. .”

1.2. Scope and Construction.These rules apply to all civil actions filed in or transferred to this Court which allege

infringement of a patent in a complaint, counterclaim, cross-claim or third party claim, or whichseek a declaratory judgment that a patent is not infringed, is invalid or is unenforceable. TheLocal Civil Rules of this Court shall also apply to such actions, except to the extent that they areinconsistent with these Local Patent Rules. If the filings or actions in a case do not trigger theapplication of these Local Patent Rules under the terms set forth herein, the parties shall, as soonas such circumstances become known, meet and confer for the purpose of agreeing on theapplication of these Local Patent Rules to the case and promptly report the results of the meetand confer to the Court.

1.3. Modification of these Rules.The Court may modify the obligations or deadlines set forth in these Local Patent Rules

based on the circumstances of any particular case, including, without limitation, the simplicity orcomplexity of the case as shown by the patents, claims, products, or parties involved. Suchmodifications shall, in most cases, be made at the initial Scheduling Conference, but may bemade at other times by the Court sua sponte or upon a showing of good cause. In advance ofsubmission of any request for a modification, the parties shall meet and confer for purposes ofreaching an agreement, if possible, upon any modification.

1.4. Effective Date.These Local Patent Rules take effect on January 1, 2009. They govern patent cases filed,

transferred or removed on or after that date. For actions pending prior to the effective date, theCourt will confer with the parties and apply these rules as the Court deems practicable.

1.5. Patent Pilot Project.Procedures for allocation and assignment of patent cases under the Patent Pilot Project

pursuant to Pub. L. No. 111-349, § 1, are provided in L. Civ. R. 40.1(f) and Appendix T to theLocal Civil Rules.


2.1. Governing Procedure.

(a) Initial Scheduling Conference. When the parties confer pursuant to Fed. R. Civ.P. 26(f), the parties shall discuss and address in the Discovery Plan submitted pursuant to Fed. R.Civ. P. 26(f) and L. Civ. R. 26.1(b)(2) the topics set forth in those rules and the following topics:

(1) Proposed modification of the obligations or deadlines set forth in theseLocal Patent Rules to ensure that they are suitable for the circumstances of theparticular case (see L. Pat. R. 1.3);

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(2) The scope and timing of any claim construction discovery includingdisclosure of and discovery from any expert witness permitted by the court;

(3) The format of the Claim Construction Hearing, including whether theCourt will hear live testimony, the order of presentation, and the estimated lengthof the hearing;

(4) How the parties intend to educate the Court on the patent(s) at issue;and

(5) The need for any discovery confidentiality order and a schedule forpresenting certification(s) required by L. Civ. R. 5.3(b)(2).

2.2. Confidentiality.

Discovery cannot be withheld or delayed on the basis of confidentiality absent Courtorder. Pending entry of a discovery confidentiality order, discovery and disclosures deemedconfidential by a party shall be produced to the adverse party for outside counsel’s Attorney’sEyes Only, solely for purposes of the pending case and shall not be disclosed to the client or anyother person.

Within 30 days after the initial Scheduling Conference, (a) the parties shall present aconsent discovery confidentiality order, supported by a sufficient certification under L. Civ. R.5.3(b)(2), or (b) in the absence of consent, a party shall, supported by a sufficient certification,apply for entry of a discovery confidentiality order under L. Civ. R. 5.3(b)(5) and L. Civ. R.37.1(a)(1). The Court will decide those issues and enter the appropriate order, or the Court mayenter the District’s approved Discovery Confidentiality Order as set forth in Appendix S to theseRules if appropriate, in whole or in part.

With respect to all issues of discovery confidentiality, the parties shall comply with allterms of L. Civ. R. 5.3.

2.3. Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it shall not be a ground forobjecting to an opposing party's discovery request (e.g., interrogatory, document request, requestfor admission, deposition question) or declining to provide information otherwise required to bedisclosed pursuant to Fed. R. Civ. P. 26(a)(1) that the discovery request or disclosurerequirement is premature in light of, or otherwise conflicts with, these Local Patent Rules, absentother legitimate objection. A party may object, however, to responding to the followingcategories of discovery requests (or decline to provide information in its initial disclosures underFed. R. Civ. P. 26(a)( 1 )) on the ground that they are premature in light of the timetable providedin the Local Patent Rules:

(a) Requests seeking to elicit a party's claim construction position;(b) Requests seeking to elicit a comparison of the asserted claims and the accused

apparatus, product, device, process, method, act, or other instrumentality;(c) Requests seeking to elicit a comparison of the asserted claims and the prior art; and(d) Requests seeking to elicit the identification of any advice of counsel, and related

documents.Where a party properly objects to a discovery request (or declines to provide information

in its initial disclosures under Fed. R. Civ. P. 26(a)(1)) as set forth above, that party shall provide

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the requested information on the date on which it is required to be provided to an opposing partyunder these Local Patent Rules or as set by the Court, unless there exists another legitimateground for objection.

2.4. Exchange of Expert Materials.

(a) Disclosures of claim construction expert materials and depositions of such experts aregoverned by L. Pat. R. 4.1, et seq., unless otherwise ordered by the Court.

(b) Upon a sufficient showing that expert reports related to issues other than claimconstruction cannot be rendered until after a claim construction ruling has been entered by theCourt, the disclosure of expert materials related to issues other than claim construction will notbe required until claim construction issues have been decided.

3. PATENT DISCLOSURES

3.l. Disclosure of Asserted Claims and Infringement Contentions.

Not later than 14 days after the initial Scheduling Conference, a party asserting patentinfringement shall serve on all parties a “Disclosure of Asserted Claims and InfringementContentions.” Separately for each opposing party, the “Disclosure of Asserted Claims andInfringement Contentions" shall contain the following information: (a) 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;

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

(c) Other than for design patents, a chart identifying specifically where each limitation ofeach asserted claim is found within each Accused Instrumentality, including for each limitationthat such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s),or material(s) in the Accused Instrumentality that performs the claimed function;

(d) For each claim which is alleged to have been indirectly infringed, an identification ofany direct infringement and a description of the acts of the alleged indirect infringer thatcontribute to or are inducing that direct infringement. Insofar as alleged direct infringement isbased on joint acts of multiple parties, the role of each such party in the direct infringement mustbe described;

(e) Other than for design patents, whether each limitation of each asserted claim is allegedto be literally present or present under the doctrine of equivalents in the Accused Instrumentality;

(f) For any patent that claims priority to an earlier application, the priority date to whicheach asserted claim allegedly is entitled;

(g) If a party asserting patent infringement wishes to preserve the right to rely, for anypurpose, on the assertion that its own apparatus, product, device, process, method, act, or otherinstrumentality practices the claimed invention, the party shall identify, separately for each

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asserted claim, each such apparatus, product, device, process, method, act, or otherinstrumentality that incorporates or reflects that particular claim; and (h) If a party asserting patent infringement alleges willful infringement, the basis for suchallegation.

3.2. Document Production Accompanying Disclosure.

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

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketingmaterials, offer letters, beta site testing agreements, and third party or joint developmentagreements) sufficient to evidence each discussion with, disclosure to, or other manner ofproviding to a third party, or sale of or offer to sell, or any public use of, the claimed inventionprior to the date of application for the patent in suit. A party's production of a document asrequired herein shall not constitute an admission that such document evidences or is prior artunder 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 of applicationfor the patent in suit or the priority date identified pursuant to L. Pat. R. 3.1(f), whichever isearlier;

(c) A copy of the file history for each patent in suit (or so much thereof as is in thepossession of the party asserting patent infringement);

(d) All documents evidencing ownership of the patent rights by the party asserting patentinfringement;

(e) If a party identifies instrumentalities pursuant to L. Pat. R. 3.1(g), documentssufficient to show the operation of any aspects or elements of such instrumentalities the partyasserting patent infringement relies upon as embodying any asserted claims; and

(f) All documents or things that a party asserting patent infringement intends to rely on insupport of any of its infringement contentions under these Rules.

(g) With respect to each of the above document productions, the producing party shallseparately identify by production number which documents correspond to each category.

3.2A Non-Infringement Contentions and Responses.

Not later than 45 days after service upon it of the “Disclosure of Asserted Claims andInfringement Contentions,” each party opposing an assertion of patent infringement shall serveon all parties its “Non-infringement Contentions and Responses” to Infringement Contentionswhich shall include the following:

(a) The written basis for its Non-Infringement Contentions and responses;(b) The party's responses shall follow the order of the infringement claims chart that is

required under L. Pat. R. 3.1(c), and shall set forth the party's agreement or disagreement witheach allegation therein, including any additional or different claims at issue;

(c) The production or the making available for inspection of any document or thing that itintends to rely on in defense against any such Infringement Contentions.

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3.3. Invalidity Contentions.

Not later than 45 days after service upon it of the “Disclosure of Asserted Claims andInfringement Contentions,” each party opposing an assertion of patent infringement, shall serveon all parties its "Invalidity Contentions” which shall contain the following information: (a) The identity of each item of prior art that allegedly anticipates each asserted claim orrenders it obvious. Each prior art patent shall be identified by its number, country of origin, anddate of issue. Each prior art publication shall be identified by its title, date of publication, andwhere feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) shall be identified byspecifying the item offered for sale or publicly used or known, the date the offer or use took placeor the information became known, and the identity of the person or entity which made the use orwhich made and received the offer, or the person or entity which made the information known orto whom it was made known. Prior art under 35 U.S.C. § 102(f) shall be identified by providingthe name of the person(s) from whom and the circumstances under which the invention or anypart of it 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 the makingof the invention before the patent applicant(s);

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

(c) Other than for design patents, a chart identifying where specifically in each allegeditem of prior art each limitation of each asserted claim is found, including for each limitation thatsuch party contends 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 35 U.S.C. §112(2) or enablement or written description under 35 U.S.C. § 112(1) of any of the assertedclaims.

3.4. Document Production Accompanying Invalidity Contentions.

With the “Invalidity Contentions," the party opposing an assertion of patent infringementshall produce or make available for inspection and copying: (a) Source code, specifications, schematics, flow charts, artwork, formulas, or otherdocumentation sufficient to show the operation, composition, or structure of any aspects orelements of an Accused Instrumentality identified by the party asserting patent infringement in itsL. Pat. R. 3.1(c) chart; and

(b) A copy or sample of the prior art identified pursuant to L. Pat. R. 3.3(a) which doesnot appear in the file history of the patent(s) at issue. To the extent any such item is not inEnglish, an English translation of the portion(s) relied upon shall be produced.

(c) A party asserting invalidity shall also produce any other document or thing on which itintends to rely in support of its assertion.

(d) With respect to each of the above document productions, the producing party shallseparately identify by production number which documents correspond to each category.

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3.4A Responses to Invalidity Contentions.

Not later than 14 days after service upon it of the “Invalidity Contentions,” each partydefending the validity of the patent shall serve on all parties its “Responses to InvalidityContentions” which shall include the following:

(a) For each item of asserted prior art, the identification of each limitation of eachasserted claim that the party believes is absent from the prior art, except for design patents, wherethe party shall supply an explanation why the prior art does not anticipate the claim;

(b) If obviousness is alleged, an explanation of why the prior art does not render theasserted claim obvious;

(c) The party's responses shall follow the order of the invalidity chart required under L.Pat. R. 3.3(c), and shall set forth the party's agreement or disagreement with each allegationtherein and the written basis thereof; and

(d) The production or the making available for inspection and copying of any documentor thing that the party intends to rely on in support of its Responses herein.

3.5. Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a partyfiles a complaint or other pleading seeking a declaratory judgment that a patent is invalid, L. Pat.R. 3.1 and 3.2 shall not apply unless and until a claim for patent infringement is made by a party. If the declaratory defendant does not assert a claim for patent infringement in its answer to thecomplaint, or within 14 days after the Initial Scheduling Conference, whichever is later, the partyseeking a declaratory judgment of invalidity shall serve upon each opposing party its InvalidityContentions that conform to L. Pat. R. 3.3 and produce or make available for inspection andcopying the documents described in L. Pat. R. 3.4. Each party opposing the declaratory plaintiff'scomplaint seeking a declaratory judgment of invalidity shall serve its “Responses to InvalidityContentions” as required under L. Pat. R. 3.4A.

(b) Inapplicability of Rule. This L. Pat. R. 3.5 shall not apply to cases in which arequest for a declaratory judgment that a patent is invalid is filed in response to a complaint forinfringement of the same patent, in which case the provisions of L. Pat. R. 3.3 and 3.4 shallgovern.

3.6. Disclosure Requirements for Patent Cases Arising Under 21 U.S.C. § 355(commonly referred to as “the Hatch-Waxman Act”).

The following applies to all patents subject to a Paragraph IV certification in cases arisingunder 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). This rule takesprecedence over any conflicting provisions in L. Pat. R. 3.1 to 3.5 for all cases arising under 21U.S.C. § 355.

(a) On the date a party answers, moves, or otherwise responds, each party who is anANDA filer shall produce to each party asserting patent infringement the entire Abbreviated NewDrug Application or New Drug Application that is the basis of the case in question.

(b) Not more than seven days after the initial Scheduling Conference, each party assertingpatent infringement shall serve on all parties a “Disclosure of Asserted Claims” that lists each

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claim of each patent that is allegedly infringed by each opposing party, including for each claimthe applicable statutory subsections of 35 U.S.C. § 271 asserted.

(c) Not more than 14 days after the initial Scheduling Conference, each party opposing anassertion of patent infringement shall provide to each party asserting patent infringement thewritten basis for its “Invalidity Contentions,” for any patents referred to in the opposing party'sParagraph IV Certification, which shall contain all disclosures required by L. Pat. R. 3.3.

(d) Any “Invalidity Contentions” disclosed under L. Pat. R. 3.6(c), shall be accompaniedby the production of documents required under L. Pat. R. 3.4(b) and (c).

(e) Not more than 14 days after the initial Scheduling Conference, each party opposing anassertion of patent infringement shall provide to each party asserting patent infringement thewritten basis for its “Non-Infringement Contentions,” for any patents referred to in the opposingparty's Paragraph IV Certification which shall include a claim chart identifying each claim atissue in the case and each limitation of each claim at issue. The claim chart shall specificallyidentify for each claim which claim limitation(s) is/(are) literally absent from each opposingparty's allegedly infringing Abbreviated New Drug Application or New Drug Application.

(f) Any “Non-Infringement Contentions” disclosed under L. Pat. R. 3.6(e), shall beaccompanied by the production of any document or thing that each party who is an ANDA filerintends to rely on in defense against any infringement contentions by each party asserting patentinfringement.

(g) Not more than 45 days after the disclosure of the “Non-InfringementContentions” as required by L. Pat. R. 3.6(e), each party asserting patent infringement shallprovide each opposing party with a “Disclosure of Infringement Contentions,” for all patentsreferred to in each opposing party's Paragraph IV Certification, which shall contain alldisclosures required by L. Pat. R. 3.1. The infringement contentions shall be limited to theclaims identified in L. Pat. R. 3.6(b).

(h) Any “Disclosure of Asserted Claims and Infringement Contentions” disclosed underL. Pat. R. 3.6(g), shall be accompanied by the production of documents required under L. Pat. R.3.2.

(i) Not more than 45 days after the disclosure of “Invalidity Contentions” as required byL. Pat. R. 3.6(c), the party defending the validity of the patent shall serve on each other party its“Responses to Invalidity Contentions” as required under L. Pat. R. 3.4A.

(j) Each party that has an ANDA application pending with the Food and DrugAdministration (“FDA”) that is the basis of the pending case shall: (1) notify the FDA of anyand all motions for injunctive relief no later than three business days after the date on which sucha motion is filed; and (2) provide a copy of all correspondence between itself and the FDApertaining to the ANDA application to each party asserting infringement, or set forth the basis ofany claim of privilege for such correspondence pursuant to L. Civ. R. 34.1, no later than sevendays after the date it sends same to the FDA or receives same from the FDA.

3.7. Amendments.

Amendment of any contentions, disclosures, or other documents required to be filed orexchanged pursuant to these Local Patent Rules may be made only by order of the Court upon atimely application and showing of good cause. The application shall disclose whether parties

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consent or object. Non-exhaustive examples of circumstances that may, absent undue prejudiceto the adverse 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 discovery ofmaterial prior art despite earlier diligent search; (c) recent discovery of nonpublic informationabout the Accused Instrumentality which was not discovered, despite diligent efforts, before theservice of the Infringement Contention; (d) disclosure of an infringement contention by a Hatch-Waxman Act party asserting infringement under L. Pat. R. 3.6(g) that requires response by theadverse party because it was not previously presented or reasonably anticipated; and (e) consentby the parties in interest to the amendment and a showing that it will not lead to an enlargementof time or impact other scheduled deadlines. The duty to supplement discovery responses underFed. R. Civ. P. 26(e) does not excuse the need to obtain leave of Court to amend contentions,disclosures, or other documents required to be filed or exchanged pursuant to these Local PatentRules.

3.8. Advice of Counsel.

Unless otherwise ordered by the Court, not later than 30 days after entry of the Court’sclaim construction order, or upon such other date as set by the Court, each party relying uponadvice of counsel as part of a patent-related claim or defense for any 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 have beenwaived; (b) Provide a written summary of any oral advice and produce or make available forinspection and copying that summary and documents related thereto for which the attorney-clientand work product protection have been waived; and (c) Serve a privilege log identifying any documents other than those identified in subpart(a) above, except those authored by counsel acting solely as trial counsel, relating to the subjectmatter of the advice which the party is withholding on the grounds of attorney-client privilege orwork product protection.

A party who does not comply with the requirements of this L. Pat. R. 3.8 shall not bepermitted to rely on advice of counsel for any purpose absent a stipulation of all parties or byorder of the Court.


4.1. Exchange of Proposed Terms for Construction.

(a) Not later than 14 days after service of the “Responses to Invalidity Contentions”pursuant to L. Pat. R. 3.4A, not later than 45 days after service upon it of the “Non-InfringementContentions and Responses” pursuant to L. Pat. R. 3.2A in those actions where validity is not atissue (and L. Pat. R. 3.3 does not apply), or, in all cases in which a party files a complaint orother pleading seeking a declaratory judgment not based on validity, not later than 14 days afterthe defendant serves an answer that does not assert a claim for patent infringement (and L. Pat. R.3.1 does not apply), each party shall serve on each other party a list of claim terms which thatparty contends should be construed by the Court, and identify any claim term which that partycontends should be governed by 35 U.S.C. § 112(6).

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(b) The parties shall thereafter meet and confer for the purposes of limiting the terms indispute by narrowing or resolving differences and facilitating the ultimate preparation of a JointClaim Construction and Prehearing Statement.

(c) This rule does not apply to design patents.

4.2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

(a) Not later than 21 days after the exchange of the lists pursuant to L. Pat. R. 4.1, theparties shall simultaneously exchange preliminary proposed constructions of each term identifiedby any party for claim construction. Each such “Preliminary Claim Construction” shall also, foreach 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's function.

(b) At the same time the parties exchange their respective “Preliminary ClaimConstructions,” each party shall also identify all intrinsic evidence, all references from thespecification or prosecution history that support its preliminary proposed construction anddesignate any supporting extrinsic evidence including, without limitation, dictionary definitions,citations to learned treatises and prior art and testimony of all witnesses including expertwitnesses. Extrinsic evidence shall be identified by production number or by producing a copy ifnot previously produced. With respect to all witnesses including experts, the identifying partyshall also provide a description of the substance of that witness' proposed testimony that includesa listing of any opinions to be rendered in connection with claim construction.

(c) Not later than 14 days after the parties exchange the “Preliminary ClaimConstructions” under this rule, the parties shall exchange an identification of all intrinsicevidence and extrinsic evidence that each party intends to rely upon to oppose any other party'sproposed construction, including without limitation, the evidence referenced in L. Pat. R. 4.2(b).

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

(e) This rule does not apply to design patents.

4.3. Joint Claim Construction and Prehearing Statement.

Not later than 30 days after the exchange of “Preliminary Claim Constructions” under L.Pat. R. 4.2(a), the parties shall complete and file a Joint Claim Construction and PrehearingStatement, which shall contain 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 an

identification of all references from the intrinsic evidence that support that construction, and anidentification of any extrinsic evidence known to the party on which it intends to rely either tosupport its proposed construction or to oppose any other party's proposed construction, including,but not limited to, as permitted by law, dictionary definitions, citations to learned treatises andprior art, and testimony of all witnesses including experts;

(c) An identification of the terms whose construction will be most significant to theresolution of the case. The parties shall also identify any term whose construction will be case orclaim dispositive or substantially conducive to promoting settlement, and the reasons therefor;

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

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(e) Whether any party proposes to call one or more witnesses at the Claim ConstructionHearing, the identity of each such witness, and for each witness, a summary of his or hertestimony including, for any expert, each opinion to be offered related to claim construction.

(f) Any evidence that is not identified under L. Pat. R. 4.2(a) through 4.2(c) inclusiveshall not be included in the Joint Claim Construction and Prehearing Statement.

(g) This rule does not apply to design patents.

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 claim construction,including any depositions with respect to claim construction of any witnesses, other than experts,identified in the Preliminary Claim Construction statement (L. Pat. R. 4.2) or Joint ClaimConstruction and Prehearing Statement (L. Pat. R. 4.3). This rule does not apply to designpatents.

4.5. Claim Construction Submissions.

(a) Not later than 45 days after serving and filing the Joint Claim Construction andPrehearing Statement, the parties shall contemporaneously file and serve their opening Markmanbriefs and any evidence supporting claim construction, including experts’ certifications ordeclarations (“Opening Markman Submissions”).

(b) Unless otherwise ordered by the Court, any discovery from an expert witness whosubmitted a certification or declaration under L. Pat. R. 4.5(a) shall be concluded within 30 daysafter filing the Opening Markman Submissions.

(c) Not later than 60 days after the filing of the Opening Markman Submissions, theparties shall contemporaneously file and serve responding Markman briefs and any evidencesupporting claim construction, including any responding experts’ certifications or declarations.

(d) With regard to design patents only, subsections (a), (b), and (c) shall not apply. Where a design patent is at issue, not later than 45 days after the submission of “Non-Infringement Contentions and Responses” under L. Pat. R. 3.2A and/or “Responses to InvalidityContentions” under L. Pat. R. 3.4A, the parties shall contemporaneously file and serve openingMarkman briefs and any evidence supporting claim construction. Not more than 30 days afterthe filing of the opening Markman briefs, the parties shall contemporaneously file and serveresponding Markman briefs and any evidence supporting claim construction.

4.6. Claim Construction Hearing.

Within two weeks following submission of the briefs and evidence specified in L. Pat. R.4.5(c) and (d), counsel shall confer and propose to the Court a schedule for a Claim ConstructionHearing, to the extent the parties or the Court believe a hearing is necessary for construction ofthe claims at issue.

Adopted December 11, 2008, Effective January 1, 2009, Amended March 18, 2011, October 4,2011.

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ED North Carolina(published July 2011)

Rule 301.1 TITLE

These are the local rules of practice for Patent Cases before the United States District Court forthe Eastern District of North Carolina. They should be cited as "Local Civil Rule ___".

Rule 301.2 PURPOSE, SCOPE AND CONSTRUCTION

(a) These rules are intended to supplement the Local Civil Rules of this District to facilitate thespeedy, fair and efficient resolution of patent disputes.

(b) These rules apply to all civil actions filed in or transferred to this Court which allegeinfringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, orwhich seek a declaratory judgment that a utility patent is not infringed, is invalid or isunenforceable.

(c) The Court may accelerate, extend, eliminate, or modify the obligations or deadlines set forthin these Local Patent Rules based on the circumstances of any particular case, including, withoutlimitation, the complexity of the case or the number of patents, claims, products, or partiesinvolved. If any motion filed prior to the Claim Construction Hearing provided for in LocalPatent Rule 304.6 raises claim construction issues, the Court may, for good cause shown, deferthe motion until after completion of the disclosures, filings, or ruling following the ClaimConstruction Hearing.

Rule 301.3 EFFECTIVE DATE

Local Civil Rules 301.1305.2 shall apply to any case filed or transferred to this Court thereafter.Relevant provisions of these rules may be applied to any pending case by the Court, on its ownmotion or on motion by any party.

Rule 302.1 GOVERNING PROCEDURE

(a) Initial Rule 26(f) Scheduling Conference (“Initial Scheduling Conference”). When theparties confer with each other pursuant to FED. R. CIV. P. 26(f), in addition to the matterscovered by FED. R. CIV. P. 26, the parties must discuss and address in the Discovery Plan filedpursuant to FED. R. CIV. P. 26(f) and Local Civil Rule 26.1(e)(2):

(1) Proposed modification of the deadlines provided for in the local patent rules, and theeffect of any such modification on the date and time of the Claim Construction Hearingprovided for in Local Civil Rule 304.6, if any;

(2) Whether the Court will hear live testimony at the Claim Construction Hearing;

(3) The need for and any specific limits on discovery relating to claim construction,

including depositions of witnesses, including expert witnesses; and

(4) The order of presentation at the Claim Construction Hearing.

(b) Further Scheduling Conferences. To the extent that some or all of the matters provided forin Local Patent Rule 302.1(a)(1)-(4) are not resolved or decided at the Initial SchedulingConference, the parties shall propose dates for further Scheduling Conferences at which suchmatters shall be decided.

Rule 302.2 CONFIDENTIALITY

(a) If any document or information produced under these Local Civil Rules is deemedconfidential by the producing party and if the Court has not entered a protective order orotherwise ruled on the confidentiality of the document or information, then until a protectiveorder is issued by the Court, the document shall be marked “confidential” or with some otherconfidential designation (such as “Confidential Outside Attorneys Eyes Only”) by the disclosingparty and disclosure of the confidential document or information shall be limited to each party'soutside attorney(s) of record and the employees of such outside attorney(s). If a party is notrepresented by an outside attorney, disclosure of the confidential document or information shallbe limited to one (1) designated “in house” attorney, whose identity and job functions shall bedisclosed to the producing party seven (7) days prior to any such disclosure, in order to permitany motion for protective order or other relief regarding such disclosure. The person(s) to whomdisclosure of a confidential document or information is made under this Local Patent Rule shallkeep it confidential and use it only for purposes of litigating the case, unless and until the Courtissues a ruling to the contrary.

(b) If a party wishes to file with the Court any document or information that has been designatedas confidential pursuant to subsection (a) and as to which the Court has not ruled, that party mustcomply with the provisions of Local Civil Rule 79.2 by filing a motion to seal the document. Ifthe party proffering the document or information designated as confidential does not agree it isentitled to be sealed, then the party shall so state in its motion to seal and the party that made the“confidential” designation shall be entitled, in its responsive brief, to explain its position. Theprovisions of Local Civil Rule 79.2 shall thereafter determine the status and handling of thematerial with respect to such filing.

Rule 302.3 CERTIFICATION OF INITIAL DISCLOSURES

All statements, disclosures, or charts filed or served in accordance with these Local Civil Rulesmust be dated and signed by counsel of record. Counsel's signature shall constitute a certificationthat to the best of his or her knowledge, information, and belief, formed after an inquiry that isreasonable under the circumstances, the information contained in the statement, disclosure, orchart is complete and correct at the time it is made.

Rule 302.4 ADMISSIBILITY OF DISCLOSURES

Statements, disclosures, or charts governed by these Local Civil Rules are admissible to theextent permitted by the Federal Rules of Evidence or Federal Rules of Civil Procedure.However, the statements or disclosures provided for in Local Civil Rules 304.1 and 304.2 are notadmissible for any purpose other than in connection with motions seeking an extension ormodification of the time periods within which actions contemplated by these Local Civil Rulesmust be taken.

Rule 302.5 RELATIONSHIP TO FEDERAL RULES OF CIVIL PROCEDURE

Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate groundfor objecting to an opposing party's discovery request (e.g., interrogatory, document request,request for admission, deposition question) or declining to provide information otherwiserequired to be disclosed pursuant to FED. R. CIV. P. 26(a)(1) that the discovery request ordisclosure requirement is premature in light of, or otherwise conflicts with, these Local CivilRules. A party may object, however, to responding to the following categories of discoveryrequests (or decline to provide information in its initial disclosures under FED. R. CIV. P.26(a)(1)) on the ground that they are premature in light of the timetable provided in the LocalPatent Rules:

(a) Requests seeking to elicit a party's claim construction position;(b) Requests seeking to elicit from the patent claimant a comparison of the assertedclaims and the accused apparatus, product, device, process, method, act, or otherinstrumentality;(c) Requests seeking to elicit from an accused infringer a comparison of the assertedclaims and the prior art; and(d) Requests seeking to elicit from an accused infringer the identification of any opinionsof counsel, and related documents, that it intends to rely upon as a defense to anallegation of willful infringement.

Where a party properly objects to a discovery request (or declines to provide information in itsinitial disclosures under FED. R. CIV. P. 26(a)(1)) as set forth above, that party shall provide therequested information on the date on which it is required to provide the requested information toan opposing party under these Local Patent Rules, unless there exists another legitimate groundfor objection.

Rule 303.1 DISCLOSURE OF ASSERTED CLAIMS AND PRELIMINARYINFRINGEMENT CONTENTIONS

Not later than thirty (30) days after the Initial Scheduling Conference, a party claiming patentinfringement must serve on all parties a “Disclosure of Asserted Claims and PreliminaryInfringement Contentions.” Separately for each opposing party, the “Disclosure of AssertedClaims and Preliminary Infringement Contentions” shall contain the following information:

(a) Each claim of each patent in suit that is allegedly infringed by each opposing party;

(b) Separately for each asserted claim, each accused apparatus, product, device, process,

method, act, or other instrumentality (“Accused Instrumentality”) of each opposing partyof which the party is aware. This identification shall be as specific as possible. Eachproduct, 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, allegedly results in the practice of the claimed method orprocess;

(c) A chart identifying specifically where each element of each asserted claim is foundwithin each Accused Instrumentality, including each element that such party contends isgoverned by the sixth paragraph of 35 U.S.C. § 112, and the identity of the structure(s),act(s), or material(s) in the Accused Instrumentality that performs the claimed function;

(d) Whether each element of each asserted claim is claimed to be literally present orpresent under the doctrine of equivalents in the Accused Instrumentality; (e) For any patent that claims priority to an earlier application, the priority date to whicheach asserted claim allegedly is entitled; and

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

Rule 303.2 DOCUMENT PRODUCTION ACCOMPANYING DISCLOSURE

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

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketingmaterials, offer letters, beta site testing agreements, and third party or joint developmentagreements) sufficient to evidence each discussion with, disclosure to, or other manner ofproviding to a third party, or sale of or offer to sell, the claimed invention prior to thedate of application for the patent in suit. A party's production of a document as requiredherein shall not constitute an admission that such document evidences or is prior artunder 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 Local PatentRule 303.1(e), whichever is earlier; and (c) A copy of the file history for each patent in suit.



Rule 303.3 PRELIMINARY NON-INFRINGEMENT AND INVALIDITYCONTENTIONS

Not later than forty-five (45) days after service upon it of the “Disclosure of Asserted Claims andPreliminary Infringement Contentions,” each party opposing a claim of patent infringement,shall serve on all parties its “Preliminary Non-Infringement and Invalidity Contentions.”

(a) Non-Infringement Contentions shall contain a chart, responsive to the chart requiredby Local Patent Rule 303.1(c), that states as to each identified element in each assertedclaim, whether such element is present literally or under the doctrine of equivalents ineach Accused Instrumentality, and, if not, the reason for such denial and the relevantdistinctions.

(b) Invalidity Contentions must contain the following information:

(1) 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 must be identifiedby its title, date of publication, and where feasible, author and publisher. Prior artunder 35 U.S.C. § 102(b) shall be identified by specifying the item offered forsale or publicly used or known, the date the offer or use took place or theinformation became known, and the identity of the person or entity which madethe use or which made and received the offer, or the person or entity which madethe information known or to whom it was made known. Prior art under 35 U.S.C.§ 102(f) shall be identified by providing the name of the person(s) from whomand the circumstances under which the invention or any part of it was derived.Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identitiesof the person(s) or entities involved in and the circumstances surrounding themaking of the invention before the patent applicant(s); (2) Whether each item of prior art anticipates each asserted claim or renders itobvious. If a combination of items of prior art makes a claim obvious, each suchcombination, and the motivation to combine such items, must be identified;

(3) A chart identifying where specifically in each alleged item of prior art eachelement of each asserted claim is found, including for each element that suchparty contends is governed by the sixth paragraph of 35 U.S.C. § 112, the identityof the structure(s), act(s), or material(s) in each item of prior art that performs theclaimed function; and (4) Any grounds of invalidity based on any applicable provision of 35 U.S.C. §112.

Rule 303.4 DOCUMENT PRODUCTION ACCOMPANYING PRELIMINARY

NON-INFRINGEMENT AND INVALIDITY CONTENTIONS

With the “Preliminary Non-Infringement and Invalidity Contentions,” the party opposing a claimof patent infringement must produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or otherdocumentation sufficient to show the operation of any aspects or elements of an AccusedInstrumentality identified by the patent claimant in its Local Civil Rule 303.1(c) chart;and

(b) A copy of each item of prior art identified pursuant to Local Civil Rule 303.3(b)(1)that 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 must beproduced.

Rule 303.5 DISCLOSURE REQUIREMENT IN PATENT CASES FOR DECLARATORYJUDGMENT

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files acomplaint or other pleading seeking a declaratory judgment that a patent is not infringed, isinvalid, or is unenforceable, Local Civil Rule 303.1 and 303.2 shall not apply unless and until aclaim for patent infringement is made by a party. If the defendant does not assert a claim forpatent infringement in its answer to the complaint, no later than fourteen (14) days after thedefendant serves its answer, or fourteen (14) days after the Initial Scheduling Conference,whichever is later, the party seeking a declaratory judgment must serve upon each opposingparty its Preliminary Invalidity Contentions that conform to Local Civil Rule 303.3 and produceor make available for inspection and copying the documents described in Local Civil Rule 303.4.The parties shall meet and confer within fourteen (14) days of the service of the PreliminaryInvalidity Contentions for the purpose of determining the date on which the plaintiff will file itsFinal Invalidity Contentions which shall be no later than fifty (50) days after service by the Courtof its Claim Construction Ruling. (b) Applications of Rules When No Specified Triggering Event. If the filings or actions in acase do not trigger the application of these Local Civil Rules 301.1305.2 under the terms setforth herein, the parties shall, as soon as such circumstances become known, meet and confer forthe purpose of agreeing on the application of these such rules to the case. (c) Inapplicability of Rule. This Local Civil Rule 303.5 shall not apply to cases in which arequest for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable isfiled in response to a complaint for infringement of the same patent.

Rule 303.6 FINAL CONTENTIONS

Each party’s “Preliminary Infringement Contentions” and “Preliminary Non-Infringement andInvalidity Contentions” shall be deemed to be that party's final contentions, except as set forthbelow.

(a) If a party claiming patent infringement believes in good faith that (1) the Court's ClaimConstruction Ruling or (2) the documents produced pursuant to Local Civil Rule 303.4 sorequires, not later than thirty (30) days after service by the Court of its Claim ConstructionRuling, that party may serve “Final Infringement Contentions” without leave of court that amendits “Preliminary Infringement Contentions” with respect to the information required by LocalCivil Rule 303.1(c) and (d). (b) Not later than fifty (50) days after service by the Court of its Claim Construction Ruling,each party opposing a claim of patent infringement may serve “Final Non-Infringement andInvalidity Contentions” without leave of court that amend its “Preliminary Non-Infringementand Invalidity Contentions” with respect to the information required by Local Civil Rule 303.3if:

(1) a party claiming patent infringement has served “Final Infringement Contentions”pursuant to Local Civil Rule 303.6(a), or(2) the party opposing a claim of patent infringement believes in good faith that theCourt's Claim Construction Ruling so requires.

Rule 303.7 AMENDMENT TO CONTENTIONS

Amendment or modification of the Preliminary or Final Infringement Contentions or thePreliminary or Final Non-Infringement and Invalidity Contentions, other than as expresslypermitted in Local Civil Rule 303.6, may be made only as expressly permitted by Local CivilRule 303.6, or within thirty (30) days of the discovery of new information relevant to the issuesof infringement, noninfringement, or invalidity. Otherwise, amendment or modification shall bemade only by order of the Court, which shall be entered only upon a showing of good cause.

Rule 303.8 WILLFULNESS; DISCOVERY OF OPINIONS OF COUNSEL

(a) The substance of any advice of counsel tendered in defense to a charge of willfulinfringement, and any other information which might be deemed to be within the scope of awaiver attendant to disclosure of such advice, shall not be discoverable until the earlier of:

(1) seven (7) days after a ruling on summary judgment indicating a triable issue of fact towhich willfulness would be relevant; or

(2) thirty (30) days prior to the close of fact discovery under the Scheduling Order.

(b) On the day such willfulness information becomes discoverable, the party relying on suchadvice shall produce the following:

(1) a copy of all written opinions to be relied on by the party opposing the claim ofinfringement;

(2) a copy of all materials or information related to the opinion that were provided to theattorney in the course of preparation of each such opinion; (3) a copy of all written attorney work product related to each such opinion that (i) wasdeveloped in the course of preparation of the opinion and (ii) was disclosed to the client; (4) identification of the date, sender and recipient (but not necessarily the substance) ofall written and oral communications between the party opposing the claim ofinfringement and the attorney or law firm rendering any opinions to be relied on, whichcommunications discuss the same subject matter as such opinion; (5) any other opinion(s) that discuss the same subject matter as such opinion and thatwere provided to the party opposing the claim of infringement by any other attorney orlaw firm, whether or not the party relied on such additional opinions; and (6) identification of the date, sender and recipient (but not necessarily the substance) ofall written and oral communications between the party opposing the claim ofinfringement and the attorney or law firm rendering such opinions that were not reliedon, which communications discuss the same subject matter as such opinion.

(c) After such willfulness information becomes discoverable, a party claiming willfulinfringement shall be entitled (subject to any limitations, including limitations on numbers ofdepositions, otherwise imposed by the Scheduling Order) to take the deposition of any attorneysrendering the advice relied on and any persons who received such advice, including but notlimited to any person who claims to have relied on such advice. (d) A party opposing a claim of patent infringement who does not comply with the requirementsof this Local Civil Rule 303.8 shall not be permitted to rely on an opinion of counsel as part of adefense to willful infringement absent a stipulation of all affected parties or by order of theCourt, which shall be entered only upon a showing of good cause.

Rule 304.1 EXCHANGE OF PROPOSED TERMS AND CLAIM ELEMENTS FORCONSTRUCTION

(a) Not later than twenty-one (21) days after service of the “Preliminary Non-Infringement andInvalidity Contentions” pursuant to Local Civil Rule 303.3, each party shall simultaneouslyexchange a list of claim terms, phrases, or clauses which that party contends should be construedby the Court, and identify any claim element which that party contends should be governed bythe sixth paragraph of 35 U.S.C. § 112.

(b) The parties shall thereafter meet and confer for the purposes of finalizing this list, narrowingor resolving differences, and facilitating the ultimate preparation of a Joint Claim ConstructionStatement in accordance with Local Civil Rule 304.3.

Rule 304.2 EXCHANGE OF PRELIMINARY CLAIM CONSTRUCTIONS ANDEXTRINSIC EVIDENCE

(a) Not later than twenty-one (21) days after the exchange of “Proposed Terms and ClaimElements for Construction” pursuant to Local Civil Rule 304.1, the parties shall simultaneouslyexchange a preliminary proposed construction of each claim term, phrase, or clause which theparties collectively have identified for claim construction purposes. Each such “PreliminaryClaim Construction” shall also, for each element which any party contends is governed by thesixth paragraph of 35 U.S.C. § 112, identify the structure(s), act(s), or material(s) correspondingto that element. (b) At the same time the parties exchange their respective “Preliminary Claim Constructions,”they shall each also provide a preliminary identification of extrinsic evidence, including withoutlimitation, dictionary definitions, citations to learned treatises and prior art, and testimony ofpercipient and expert witnesses they contend support their respective claim constructions. Theparties shall identify each such item of extrinsic evidence by production number or produce acopy of any such item not previously produced. With respect to any such witness, percipient orexpert, the parties shall also provide a brief description of the substance of that witness' proposedtestimony.

(c) The parties shall thereafter meet and confer for the purposes of narrowing the issues andfinalizing preparation of a Joint Claim Construction Statement in accordance with Local CivilRule 304.3.

Rule 304.3 JOINT CLAIM CONSTRUCTION STATEMENT

Not later than sixty (60) days after service of the “Preliminary Non-Infringement and InvalidityContentions,” the parties shall complete and file a Joint Claim Construction Statement, whichshall contain the following information:

(a) The construction of those claim terms, phrases, or clauses on which the parties agree.

(b) Each party's proposed construction of each disputed claim term, phrase, or clause,together with an identification of all references from the specification or prosecutionhistory that support that construction, and an identification of any extrinsic evidenceknown to the party on which it intends to rely either to support its proposed constructionof the claim or to oppose any other party's proposed construction of the claim, including,but not limited to, as permitted by law, dictionary definitions, citations to learnedtreatises and prior art, and testimony of percipient and expert witnesses.

(c) The anticipated length of time necessary for the Claim Construction Hearing.

(d) Whether any party proposes to call one or more witnesses, including experts, at theClaim Construction Hearing, the identity of each such witness, and for each expert, asummary of each opinion to be offered in sufficient detail to permit a meaningfuldeposition of that expert.

No other FED. R. CIV. P. 26 report or disclosure shall be required for testimony directed solelytowards claim construction.

Rule 304.4 COMPLETION OF CLAIM CONSTRUCTION DISCOVERY

Not later than thirty (30) days after service and filing of the Joint Claim Construction Statement,the parties shall complete all discovery relating to claim construction, including any depositionswith respect to claim construction of any witnesses, including experts, identified in the JointClaim Construction Statement.

Rule 304.5 CLAIM CONSTRUCTION BRIEFS

(a) Not later than forty-five (45) days after serving and filing the Joint Claim ConstructionStatement, each party shall serve and file and opening brief and any evidence supporting itsclaim construction. (b) Not later than twenty-one (21) days after service upon it of an opening brief, the opposingparty shall serve and file its responsive brief and supporting evidence.

(c) Prior to the Claim Construction Hearing, the Court may issue an order stating whether it willreceive extrinsic evidence, and if so, the particular evidence that it will exclude and that it willreceive, and any other matter the Court deems appropriate concerning the conduct of the hearing.

Rule 304.6 CLAIM CONSTRUCTION HEARING

Subject to the convenience of the Court's calendar, the Court shall conduct a Claim ConstructionHearing to the extent the Court believes a hearing is necessary for construction of the claims atissue.

Rule 305.1 DISCLOSURE OF EXPERTS AND EXPERT REPORTS

(a) For issues other than claim construction to which expert testimony shall be directed, expertwitness disclosures and depositions shall be governed by this rule.

(b) No later than thirty (30) days after (1) the normal close of discovery pursuant to theScheduling Order, or (2) the close of discovery after claim construction, whichever is later, eachparty shall make its initial expert witness disclosures required by FED. R. CIV. P. 26 on theissues on which each bears the burden of proof;

(c) No later than thirty (30) days after the first round of disclosures, each party shall make itsinitial expert witness disclosures required by FED. R. CIV. P. 26 on the issues on which theopposing party bears the burden of proof; (d) No later than fourteen (14) days after the second round of disclosures, each party shall makeany rebuttal expert witness disclosures permitted by FED. R. CIV. P.26.

Rule 305.2 DEPOSITIONS OF EXPERTS

Depositions of expert witnesses disclosed under this Rule shall commence within seven (7) days

of the deadline service of rebuttal reports and shall be completed within thirty (30) days aftercommencement of the deposition period.

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LOCAL PATENT RULESUNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF OHIO

October 22, 2009

I. Scope of the Rules

1.1 Title

These are the Local Patent Rules for the United States District Court for the NorthernDistrict of Ohio. They should be cited as “L. P. R. ___.”

1.2 Scope and Construction

These rules apply to all civil actions filed in, removed, or transferred to this Court whichallege infringement of a patent in a complaint, counterclaim, cross-claim, or third party claim, orwhich seek a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable. TheLocal Civil Rules of this Court shall also apply to such actions, except to the extent that they areinconsistent with these Local Patent Rules. If the filings or actions in a case do not trigger theapplication of these Local Patent Rules under the terms set forth herein, the parties shall, as soon assuch circumstances become known, meet and confer for the purpose of agreeing on the applicationof these Local Patent Rules to the case and promptly report the results of the meeting to the Court.

1.3 Commencing Discovery

For all actions to the Local Patent Rules, discovery is permitted to begin upon the filing ofthe Answer or a motion under Fed. R. Civ. P. 12 (each, a “Responsive Pleading”) absent an orderfrom the Court stating otherwise.

1.4 Cases Received After the Responsive Pleading

If the Court obtains jurisdiction over an action subject to the Local Patent Rules after aResponsive Pleading has been filed, the time for serving disclosures set forth in L. P. R. 1.4, 3.1,3.5, 3.8, and 4.1 shall commence from the day the Court acquires jurisdiction, rather than the datethe Responsive Pleading is filed.

1.5 Modification of Obligations; Case Management Notice

The Court may modify the obligations or deadlines set forth in these Local Patent Rulesbased on the circumstances of any particular case, including, without limitation, the simplicity orcomplexity of the case as shown by the patents, claims, products, or parties involved. Suchmodifications shall, in most cases, be made at the Case Management Conference, but may be madeat other times by the Court sua sponte or upon a showing of good cause.

Local Patent Rules - Northern District of Ohio

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No later than five (5) business days after the filing of the Responsive Pleading, the partiesshall jointly file a Notice via the Court’s Electronic Filing System (the “Case Management Notice”)informing the Court whether (a) the action is ripe to be scheduled for a Case ManagementConference at the Court’s earliest convenience, (b) the requirements under these Local Patent Rulesshould be modified in any way and the requested modifications, and (c) any other case managementissues identified that would impact any party’s ability to conform to these Local Patent Rules.

Before submitting the Case Management Notice, the parties shall meet and confer to try toreach an agreement upon any issues to be raised with the court in the Case Management Notice.

1.6 Effective Date

These Local Patent Rules take effect on October 22, 2009. For actions pending before the effective date, the Court will confer with the parties and apply these rules as the Court deemspracticable.

II. General Provisions

2.1 Governing Procedure

(a) Planning Meeting. The parties shall confer no less than ten days before the CaseManagement Conference to discuss and address in the Joint Planning Report the topics set forth inFed. R. Civ. P. 26(f) and LR 16.3(b)(3), as well as the following topics:

(1) Any modification to the deadlines set by these Local Patent Rules;(2) Any anticipated motions that might affect the deadlines set by these Local Patent

Rules, including motions for preliminary injunction and to add or substitute parties,and a proposed briefing schedule;

(3) Any issues that might be the proper subject of an early motion for summaryjudgment or partial summary judgment;

(4) The field of the claimed invention(s), claims asserted, number of claim terms to beconstrued, and the allegedly infringing activity or product;

(5) Any modification to the limits on interrogatories and/or depositions set forth in theFederal Rules of Civil Procedure;

(6) Any deviations from the form Patent Protective Order set forth in Appendix A tothese Local Patent Rules;

(7) The format of the Claim Construction Hearing, including whether the Court will hearlive testimony, the order of presentation, and the estimated length of the hearing;

(8) Whether the parties will agree to the electronic exchange of pleadings, notices,discovery, and other mandated disclosures not otherwise served electronically via theCourt’s electronic filing system;

(9) The susceptibility of this action to resolution by Alternative Dispute Resolution; and(10) The appointment of a Special Master.


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(b) Joint Planning Report. No later than five days before the Case ManagementConference, the plaintiff, on behalf of all parties, must file with the Court a Joint Planning Report inthe form provided in Appendix B to these Local Patent Rules or in any other form ordered by theCourt. Statements made by the parties in the Joint Planning Report will be used for casemanagement purposes only and shall not be used to limit or otherwise restrict a party’s ability toseek relief from the Court at a later date with respect to issues addressed or not addressed in theJoint Planning Report.

(c) Case Management Conference.

(1) Agenda. The general agenda for the Case Management Conference is set byLR 16.3(b). The parties also should be prepared to discuss with the Court all of thematters addressed in the parties’ Joint Planning Report, including the status ofsettlement discussions and the utilization of Alternative Dispute Resolution methodsunder L.R. 16.4-16.10.

(2) Technology At Issue. Each party should be prepared to discuss thetechnology at issue during the Case Management Conference. This includes thegeneral technology at issue, the patent(s) in suit, and each accused apparatus,product, device, process, method, act, or other instrumentality of each opposing partythat is accused of infringing (each, an “Accused Instrumentality”). In addition to theforegoing, each party opposing a claim of infringement is expected to bring a sampleor representation (e.g., photographs, video, specifications, etc.) of each AccusedInstrumentality.

(3) Master. The parties should be prepared to discuss with the Court whetherthey would consent to the appointment of a master (a Magistrate Judge or otherwise)who would provide assistance to the parties and the Court. Cases for which a masteris appointed shall be considered for expedited treatment.

(4) Attendance by Parties. All parties, lead counsel, and a representative withfull authority for settlement purposes shall attend the Case Management Conference. “Parties” means either the named individuals or, in the case of a corporation orsimilar legal entity, a person familiar with the facts of the case, including thepatented technology or allegedly infringing technology.

2.2 Confidentiality

Discovery cannot be withheld on the basis of confidentiality absent Court order. Pendingentry of a protective order, discovery and disclosures deemed confidential by a party shall beproduced to the adverse party for the eyes of outside counsel of record only, marked “Attorney'sEyes Only – Subject to Protective Order.” The discovery and disclosures so marked shall be usedsolely for purposes of the pending case and shall not be disclosed to the client or any other person.


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Should the parties desire to have a protective order entered in a patent case, they shallpresent a stipulated protective order for the Court's consideration and entry at the case managementconference. In the absence of a stipulated protective order, a party that has designated discovery ordisclosures for protection under this Rule or that desires to have a protective order entered in thecase shall move the Court for the entry of the Patent Case Protective Order attached as Appendix Ato these Rules. Upon entry of a protective order, discovery and disclosures previously designatedfor protection under this Rule may be redesignated, disclosed, and used in accordance with theprovisions of the protective order entered by the Court.

Should a party desire to file materials designated for protection under this Rule with theCourt before the entry of a protective order, the materials shall be filed under seal and this Ruleshall authorize the Clerk of Court to accept the sealed filing.

2.3 Relationship to Federal Rules of Civil Procedure and Local Civil Rules for the UnitedStates District Court, Northern District of Ohio

A party may not object to discovery on the ground that it conflicts with or is prematureunder the Local Patent Rules, except to the following categories of requests and disclosures:

(a) Requests for a party’s claim construction position;(b) Requests for the same information required to be disclosed under Local Patent Rules

3.1-3.7; and(f) Requesting that an accused infringer identify whether it intends to rely upon the

opinion(s) of counsel as a defense against an allegation of willful infringement.Federal Rule of Civil Procedure 26(e)’s requirements concerning the supplementation of disclosure and discovery responses apply to all disclosures required under the Local Patent Rules.

III. Patent Disclosures

3.1. Initial Infringement Contentions.

Not later than fifteen (15) calendar days after the date the Answer or a motion under Fed. R.Civ. P. 12 (“Responsive Pleading”) is filed, a party claiming patent infringement shall serve on allparties Infringement Contentions containing at least the following information:

(a) 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. § 271asserted;

(b) Separately for each asserted claim, each Accused Instrumentality that each partyclaiming infringement contends infringes, including the name or model number ifknown;

(c) A chart identifying specifically where each limitation of each asserted claim is foundwithin each Accused Instrumentality, including for each limitation that such party


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contends is governed by 35 U.S.C. § 112(6), the identity of the correspondingstructure and function and where such structure and function is found in the AccusedInstrumentality;

(d) For each claim which is alleged to have been indirectly infringed, an identification ofany direct infringement and a description of the acts of the alleged indirectinfringer(s) that contribute to or that are inducing direct infringement, including adescription of the role of each relevant party if direct infringement is based on thejoint acts of multiple parties;

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

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

(g) If a party claiming patent infringement alleges willful infringement, the basis forsuch allegation.

3.2. Document Production Accompanying Initial Infringement Contentions.

With the Infringement Contentions, the party claiming patent infringement shall produce toeach opposing party or make available for inspection and copying:

(a) All documents concerning any disclosure, sale or transfer, or offer to sell or transferof the claimed invention prior to the bar date under 35 U.S.C. § 102(b) and/or thedate of invention for the patent in suit;

(b) All documents evidencing the conception and first reduction to practice of eachclaimed invention, which were created on or before the date of application for thepatent in suit or the priority date identified pursuant to L. P. R. 3.1(f), whichever isearlier;

(c) A copy of the file history for each patent in suit (or so much thereof as is in thepossession of the patentee) and any patent(s) or application(s) to which each patentin suit claims priority; and

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

Nothing in these required disclosures shall be considered an admission that such disclosures are prior art or evidence of prior art under 35 U.S.C. § 102 or § 103.

3.3. Initial Noninfringement Contentions.

Not later than thirty (30) days after service upon it of the Infringement Contentions, eachparty opposing a claim of patent infringement, shall serve on all parties NoninfringementContentions which shall contain the following information:

(a) A chart, responsive to the chart required by L. P. R. 3.1(c), that identifies as to each


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identified element in each asserted claim (1) whether such element is present literallyor under the doctrine of equivalents in each Accused Instrumentality and, if not, thereason for such denial and the relevant distinctions, and (2) for each limitation thatsuch party contends is governed by 35 U.S.C. § 112(6), the corresponding structureand function, (if different from that identified in L. P. R. 3.1(c)), whether or not suchstructure and function are found in the Accused Instrumentality, and/or any basis forclaiming that such limitation is invalid for indefiniteness; and

(b) A statement that the proper parties have been served or, if the proper parties have notbeen served, a statement indentifying the proper parties to the extent they are known.

3.4. Document Production Accompanying Initial Noninfringement Contentions.

With its Noninfringement Contentions, the party opposing a claim of patent infringementshall produce or make available for inspection and copying:

(a) Documents sufficient to support the statement(s) made in the chart required by L. P.R. 3.3(a);

(b) Document sufficient to evidence the actual parties that make and sell the AccusedInstrumentality or any other documents sufficient to support the statement(s) made inresponse to L. P. R. 3.3(b); and

(c) Documents sufficient to describe the structure, composition, and/or operation of theAccused Instrumentality.

3.5. Invalidity and Unenforceability Contentions

Not later than eighty (80) days after service of the Responsive Pleading, each party assertingthat a claim of a patent is invalid or unenforceable, shall serve on all parties its Invalidity andUnenforceability Contentions which shall contain at least the following information:

(a) The identity of each item of prior art that allegedly anticipates each asserted claim orrenders it obvious. Each prior art patent shall be identified by its number, country oforigin, and date of issue. Each prior art publication shall be identified by its title,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 publiclyused or known, the date the offer or use took place or the information becameknown, and the identity of the person or entity which made the use or which madeand received the offer, or the person or entity which made the information known orto whom it was made known. Prior art under 35 U.S.C. § 102(f) shall be identifiedby providing the name of the person(s) from whom and the circumstances underwhich the invention or any part of it was derived. Prior art under 35 U.S.C. § 102(g)shall be identified by providing the identities of the person(s) or entities involved inand the circumstances surrounding the making of the invention before the patentapplicant(s);


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(b) Whether each item of prior art anticipates each asserted claim or renders it obviousunder 35 U.S.C. §102 or §103. If obviousness is alleged, an explanation of why theprior art renders the asserted claim obvious, including an identification of anycombinations of prior art showing obviousness;

(c) For each alleged item of prior art, a chart identifying specifically where eachlimitation of each asserted claims are found, including for each limitation that suchparty contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s),act(s), or material(s) in each item of prior art that performs the claimed function;

(d) Any grounds of invalidity based on 35 U.S.C. § 101, or 35 U.S.C. § 112, includinginvalidity contentions based on written description, enablement, indefiniteness,and/or best mode.

(e) The grounds for any charge that any of the asserted claims are unenforceable forinequitable conduct, including the identification of any information alleged to havebeen withheld, misstated, or otherwise misrepresented to the United States PatentOffice, the basis for claiming such information was material to patentability, and thebasis for claiming that the patentee withheld, misstated, or misrepresented suchinformation with the requisite intent.

3.6. Document Production Accompanying Invalidity and Unenforceability Contentions.

With its Invalidity and Unenforceability Contentions, any party opposing a claim of patentinfringement shall produce or make available for inspection and copying:

(a) A copy or sample of the prior art identified pursuant to L. P. R. 3.5(a). To the extentany such item is not in English, an English translation of the portion(s) relied uponshall be produced. The producing party shall separately identify by productionnumber which documents correspond to each invalidity category; and

(b) All documents supporting any statement made in response to L. P. R. 3.5(e).

3.7 Validity and Enforceability Contentions.

Not later than twenty (20) days after service upon it of the Invalidity and UnenforceabilityContentions, each party opposing a claim of inequitable conduct and/or invalidity shall serve on allparties Validity and Enforceability Contentions which shall contain the following information:

(a) A chart, responsive to the chart required by L. P. R. 3.5(c) that identifies eachlimitation of each asserted claim that is missing from the asserted prior art;

(b) A responsive statement explaining why the disclosures and statement required by L. P. R. 3.5 (e) do not render the asserted patents unenforceable;

(c) All documents supporting the disclosures made in L. P. R. 3.7 (a)-(b) to the extentthat they have not already been produced.

3.8 Disclosure Requirements for Patent Cases for Declaratory Judgment of Invalidity


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In all cases in which a party files a complaint or other pleading seeking a declaratoryjudgment that a patent is invalid, L. P. R. 3.1-3.4 shall not apply unless and until a claim for patentinfringement is made by a party in the Responsive Pleading. If the defendant does not assert aclaim for patent infringement in its Responsive Pleading, the party seeking a declaratory judgmentof invalidity shall make its required disclosures under L. P. R. 3.5 and 3.6 within thirty (30) days ofthe Responsive Pleading. All other deadlines and requirements under the Local Patent Rules shallremain the same. This L. P. R. 3.8 shall not apply to cases in which a request for a declaratoryjudgment that a patent is invalid is filed in response to a complaint for infringement of the samepatent.

3.9 Disclosure Requirements for Patent Cases Arising Under 21 U.S.C. § 355 (commonlyreferred to as “the Hatch-Waxman Act”).

The following provision applies to all patents subject to a Paragraph IV certification in casesarising under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). This provisiontakes precedence over any conflicting provisions in L. P. R. 3.1 to 3.8 for all cases arising under 21 U.S.C. § 355.

(a) At or before the Case Management Conference, the Defendant(s) shall produce toPlaintiff(s) the entire Abbreviated New Drug Application or New Drug Applicationthat is the basis of the case in question.

(b) Not less than fifteen (15) calendar days after the Case Management Conference, theDefendant(s) shall provide to Plaintiff(s) written Invalidity Contentions, for anypatents referred to in Defendant(s) Paragraph IV Certification. At a minimum, theseInvalidity Contentions should include those items required by L. P. R. 3.5(a-d);

(c) Any Invalidity Contentions disclosed under L. P. R. 3.8(b) shall be accompanied bythe production of any document or thing that each Defendant intends to rely on toshow invalidity. At a minimum, this disclosure should comply with L. P. R. 3.6(a).

(d) Not less than thirty (30) calendar days after the Case Management Conference, theDefendant(s) shall provide to Plaintiff(s) the written basis for their NoninfringementContentions for any patents referred to in Defendant(s) Paragraph IV Certificationwhich shall include a claim chart as required by L. P. R. 3.3(a) identifying eachclaim at issue in the case and each limitation of each claim at issue. The claim chartshall specifically identify for each claim which claim limitation(s) are literally absentfrom the Defendant(s) allegedly infringing Abbreviated New Drug Application orNew Drug Application

(e) Any Noninfringement Contentions disclosed under L. P. R. 3.8(d) shall beaccompanied by the production of any document or thing that the Defendant(s)intend to rely on in defense against any infringement contentions by Plaintiff(s),including those items required by L. P. R. 3.4(a).

(f) Not less than forty-five (45) calendar days after the disclosure of theNoninfringement Contentions as required by L. P. R. 3.8(d), Plaintiff(s) shall provideDefendant(s) with Infringement Contentions for all patents referred to in


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Defendant(s) Paragraph IV Certification, including, at a minimum, those itemsrequired by L. P. R. 3.1.

(g) Any Infringement Contentions disclosed under L. P. R. 3.8(f) shall be accompaniedby the production of documents required under L. P. R. 3.2.

3.10. Amending and Supplementing Contentions; Final Contentions.

(a) Unless otherwise ordered by the Court, the parties’ contentions and responses shallhave the same binding effect on a party as a response to an interrogatory made underRule 33 of the Federal Rules of Civil Procedure. The parties’ disclosures andresponses may be amended or supplemented without leave of court until the FinalContentions are due under L. P. R. 3.10(b)-(d); provided, however, that aftersubmission of the exchange of claim terms under L. P. R. 4.1(c), additional claims inthe patent(s) in suit may not be asserted without obtaining leave from the Court forgood cause shown.

(b) Each party claiming patent infringement must serve on all parties “FinalInfringement Contentions” containing the information required L. P. Rule 3.1 withinfifteen (15) days of the Court’s claim construction ruling.

(c) Each party asserting non-infringement, invalidity or unenforceability of a patentclaim shall serve on all other parties “Final Noninfringement Contentions” and“Final Invalidity and Unenforceability Contentions” containing the informationrequired by L. P. R. 3.3 and 3.5 within thirty (30) calendar days of the Court’s claim constructionruling. With the Final Invalidity Contentions, the party asserting invalidity of anypatent claim shall produce or make available for inspection and copying: a copy orsample of all prior art identified pursuant to L. P. R. 3.6, to the extent not previouslyproduced. If any such item is not in English, an English translation of the portion(s)relied upon shall be produced. The producing party shall separately identify byproduction number which documents correspond to each category.

(d) Each party claiming patent infringement must serve on all parties “Final Validity andEnforceability Contentions” containing the information required by L. P. R. 3.7within forty-five (45) days of the Court’s claim construction ruling.

(e) A party may amend the final contentions required under L. P. R. 3.9(b)-(d) only byorder of the Court upon a showing of good cause and absence of unfair prejudice,made in timely fashion following discovery of the basis for such amendment. Theduty to supplement discovery responses does not excuse the need to obtain leave ofcourt to amend contentions.

3.11. Final Date to Seek Stay Pending Reexamination

Absent exceptional circumstances, no party may file a motion to stay the lawsuit pendingreexamination in the U.S. Patent Office after the due date for service of that party's FinalContentions.


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IV. Claim Construction Proceedings

4.1 Exchange of Proposed Terms for Construction

(a) Not later than ninety-five (95) days after the Responsive Pleading, each party shallserve on each other party a list of claim terms which that party contends should beconstrued by the Court, and identify any claim terms which that party contendsshould be governed by 35 U.S.C. §112(6).

(b) The parties shall thereafter meet and confer for the purposes of limiting the terms indispute by narrowing or resolving differences and facilitating the ultimatepreparation of a Joint Claim Construction and Prehearing Statement.

(c) Not later than one hundred and fifteen (115) days after the Responsive Pleading,each party shall serve on each other party a final list of claim terms which that partycontends should be construed by the Court, including any claim terms which thatparty contends should be governed by 35 U.S.C. §112(6).

4.2 Exchange of Preliminary and Final Claim Constructions and Evidence

(a) Not later than fifteen (15) calendar days after the exchange of the lists pursuant to L. P. R. 4.1(c), the parties shall simultaneously exchange preliminary proposedconstructions of each term identified by any party for claim construction. Each such“Preliminary Claim Construction” shall also, for each term which any party contendsis governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s)corresponding to that term’s function.

(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 preliminary proposed construction and designateany supporting extrinsic evidence including, without limitation, dictionarydefinitions, citations to learned treatises and prior art and testimony of all witnessesincluding expert witnesses. Extrinsic evidence shall be identified by productionnumber or by producing a copy if not previously produced. The parties shall furtheridentify any fact witness including a brief description of the subject matter of eachwitness’ anticipated testimony.

(c) Not later than five (5) days after the completion of expert claim constructiondiscovery pursuant to L. P. R. 4.3(c) or fifty (50) days after the exchange ofPreliminary Claim Constructions pursuant to L. P. R. 4.2(b) in the event that noexpert is identified, the parties shall simultaneously exchange final proposedconstructions of each term identified by any party for claim construction. Each such“Final Claim Construction” shall also, for each term which any party contends isgoverned by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s)corresponding to that term’s function. The parties shall also identify the informationset forth in L.P.R. 4.2(b), as well as any expert testimony the party intends to relyupon in support of its proposed claim construction.


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4.3 Expert Claim Construction Discovery

(a) Not later than fifteen (15) days after the exchange of Preliminary ClaimConstructions pursuant to L.P.R. 4.2(a), any party planning to use an expert witnessat the claim construction hearing shall identify that witness and produce a copy ofthe expert’s curriculum vitae and any expert report or declaration the party intends torely upon.

(b) Not later than fifteen (15) days after the disclosure of initial expert claimconstruction reports pursuant to L.P.R. 4.3(a), any party planning to use a rebuttalexpert witness at the claim construction hearing shall identify that witness andproduce a copy of the expert’s curriculum vitae and any expert report or declarationthe party intends to rely upon.

(c) Not later than fifteen (15) days after the disclosure of rebuttal expert claimconstruction reports pursuant to L. P. R. 4.3(b), the parties shall complete anydepositions of any experts identified under L. P. R. 4.3.

4.4 Claim Construction Submissions

(a) Not later than fifteen (15) days after exchanging Final Claim Constructions pursuantto L. P. R. 4.2(c), the parties shall contemporaneously file and serve their openingclaim construction briefs and any evidence supporting claim construction, includingwitness testimony or declarations (“Opening Claim Construction Submissions”).

(b) Not later than thirty (30) days after the filing of the Opening Claim ConstructionSubmissions, the parties shall contemporaneously file and serve responding claimconstruction briefs and any evidence supporting claim construction, including anyresponding experts’ certifications or declarations.

(c) Without prior approval of the Court, all memoranda related to Claim ConstructionSubmissions shall be limited to twenty-five (25) pages. Appendices of evidentiary,statutory or other materials are excluded from these page limitations and may bebound separately from the memorandum.

4.5 Joint Claim Construction and Prehearing Statement

Not later than five (5) days after the submission of responsive claim construction briefsunder L. P. R. 4.4(c), the parties shall complete and file a Joint Claim Construction and PrehearingStatement, which shall contain 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 an

identification of all references from the intrinsic evidence that supports thatconstruction, 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 anyother party’s proposed construction, including, but not limited to, as permitted by


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law, dictionary definitions, citations to learned treatises and prior art, and testimonyof all witnesses including experts;

(c) An identification of the terms that each of the parties contend (i) would require adisposition of the case in its favor and/or (ii) will be substantially conducive topromoting settlement. For any such terms, each of the parties shall also include abrief statement, not to exceed one page, supporting or refuting the contention that theconstruction of those terms will be dispositive or promote settlement. The Courtmay, at its option, solicit additional briefing regarding the dispositive nature of anyterms prior to the claim construction hearing or upon issuing its claim constructions.

(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 Claim Construction

Hearing, the identity of each such witness, and for each witness a brief description ofthe subject matter of each witness’ anticipated testimony; and

(f) A list of other issues that might appropriately be taken up at a prehearing conferenceprior to the claim construction hearing and, if not previously set, proposed dates forany such prehearing conference.

4.6 Claim Construction Hearing

Subject to the convenience of the Court’s calendar, the Court shall conduct a ClaimConstruction Hearing thirty (30) days following submission of the responsive brief specified in L.R.4.4(b) to the extent the parties or the Court believe a hearing is necessary for construction of theclaims at issue. Prior to the hearing, the parties shall contact the Court to make arrangements forany uses of courtroom technology, such as demonstrations, Powerpoint® presentations or evidencepresentation programs. At the hearing, the parties shall submit the best available specimens ofpatented technology and allegedly infringing activity (e.g. products, schematics, photos, productinformation sheets).

4.7 Close of Fact Discovery; Status Conference

Unless otherwise ordered by the Court, fact discovery for all actions subject to these LocalPatent Rules shall end no later than thirty (30) days after the Court’s claim construction ruling. Theparties shall also appear for a status conference (in person or telephonically, at the option of theCourt) within thirty (30) days of that ruling.

In addition to updating the Court regarding the status of the pending litigation, each partyshall inform the Court whether mediation of the dispute is appropriate during the status hearing. The Court, at its option, may refer any case subject to these rules to mediation as under Local Rule16 upon request of one or both the parties or sua sponte. Any party objecting to its case beingselected for mediation must follow the procedure required by Local Rule 16.6. A failure toparticipate in good faith in the mediation may expose a party and/or its counsel to sanctions.

4.8 Advice of Counsel


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Unless otherwise ordered by the Court, 90 days before the close of fact discovery, eachparty relying upon advice of counsel as part of a patent-related claim or defense for any reason shallproduce or make available for inspection and copying any written advice and documents relatedthereto. Regardless of the deadline for the completion of fact discovery, if a party relies on adviceof counsel, the opposing party shall be afforded an adequate opportunity to obtain discoverypertaining to such advice.

A party who does not comply with the requirements of this L. P. R. 4.8 shall not bepermitted to rely on advice of counsel for any purpose absent a stipulation of all parties or by orderof the Court.

V. Expert Discovery

5.1. Disclosure of Experts and Expert Reports

Unless the Court orders otherwise:

(a) For issues other than claim construction to which expert testimony shall be directed, expert witness disclosures and depositions shall be governed by this Rule;

(b) No later than sixty (60) days after the Court issues its Claim Construction Ruling, each party shall make its initial expert witness disclosures required by Federal Rules of Civil Procedure 26 on issues for which it bears the burden of proof; and

(c) Within thirty (30) days after service of the disclosures required by L. P. R. 5.1(b), each party shall make its rebuttal expert witness disclosures required by Federal Ruleof Civil Procedure 26 on the issues for which the opposing party bears the burden of proof.

5.2. Depositions of Experts

Depositions of expert witnesses shall be completed within forty (40) days after exchange ofexpert rebuttal disclosures.

5.3. Presumption Against Supplementation of Reports

Amendments or supplementation to expert reports after the deadlines provided herein arepresumptively prejudicial and shall not be allowed absent prior leave of court upon a showing ofgood cause that the amendment or supplementation could not reasonably have been made earlierand that the opposing party is not unfairly prejudiced.

VI. Dispositive Motions and Trial

6.1. Filing Dispositive Motions


15

All dispositive motions shall be filed within ten (10) days after the scheduled date for theend of expert discovery.

6.2. Trial

Unless otherwise ordered by the Court, and subject to the convenience of the Court'scalendar, a Trial on all cases subject to these rules shall be conducted within seventy five (75) daysafter the filing date of the last dispositive motion brief allowed by Local Rule.

VII. Appendix

Appendix A -- Stipulated Protective OrderAppendix B -- Report of Parties’ Planning Meeting in Patent CasesAppendix C -- Joint Claim Construction Table


1Counsel should include or delete language in brackets as necessary to the specific case.

16

Appendix A -- Stipulated Protective Order

FORM PROTECTIVE ORDERUNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF OHIO

)) CASE NO.)

Plaintiff, ) JUDGE) [STIPULATED]1 PATENT PROTECTIVE

v. ) ORDER)

Defendant. ))

[If by stipulation.] The parties to this Stipulated Protective Order have agreed to the termsof this Order; accordingly, it is ORDERED:

[If not fully by stipulation.] A party to this action has moved that the Court enter aprotective order. The Court has determined that the terms set forth herein are appropriate to protectthe respective interests of the parties, the public, and the Court. Accordingly, it is ORDERED:

1. Scope. All disclosures, affidavits and declarations and exhibits thereto, depositiontestimony and exhibits, discovery responses, documents, electronically stored information, tangibleobjects, information, and other things produced, provided, or disclosed in the course of this actionwhich may be subject to restrictions on disclosure under this Order, and information deriveddirectly therefrom (hereinafter referred to collectively as "documents"), shall be subject to thisOrder as set forth below. As there is a presumption in favor of open and public judicial proceedingsin the federal courts, this Order shall be strictly construed in favor of public disclosure and openproceedings wherever possible. The Order is also subject to the Local Rules of this District and theFederal Rules of Civil Procedure on matters of procedure and calculation of time periods.

2. Form and Timing of Designation. A party may designate documents asconfidential and restricted in disclosure under this Order by placing or affixing the words"CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER" (hereinafter referred to as"CONFIDENTIAL") or "ATTORNEYS EYES ONLY - SUBJECT TO PROTECTIVE ORDER"(hereinafter referred to as "ATTORNEYS EYES ONLY") on the document in a manner that willnot interfere with the legibility of the document and that will permit complete removal of thedesignation. Documents shall be designated prior to or at the time of the production or disclosureof the documents. When a tangible object is produced for inspection subject to protection underthis Order, a photograph thereof shall be produced at the time of inspection labeled with thedesignation CONFIDENTIAL or ATTORNEYS EYES ONLY. Thereafter any information learned


17

or obtained as a result of the inspection shall be subject to protection under this Order in accordancewith the applicable designation. When electronically stored information is produced which cannotitself be marked with the designation CONFIDENTIAL or ATTORNEYS EYES ONLY, thephysical media on which such electronically stored information is produced shall be marked withthe applicable designation. The party receiving such electronically stored information shall then beresponsible for labeling any copies that it creates thereof, whether electronic or paper, with theapplicable designation. By written stipulation the parties may agree temporarily to designateoriginal documents that are produced for inspection CONFIDENTIAL or ATTORNEYS EYESONLY even though the original documents being produced have not themselves been so labeled. All information learned in the course of such an inspection shall be protected in accordance with thestipulated designation. The copies of documents that are selected for copying during such aninspection shall be marked CONFIDENTIAL or ATTORNEYS EYES ONLY as required underthis Order and thereafter the copies shall be subject to protection under this Order in accordancewith their designation. The designation of documents for protection under this Order does not meanthat the document has any status or protection by statute or otherwise except to the extent and forthe purposes of this Order.

3. Documents Which May be Designated CONFIDENTIAL. Any party maydesignate documents as CONFIDENTIAL upon making a good faith determination that thedocuments contain information protected from disclosure by statute or that should be protectedfrom disclosure as confidential business or personal information, medical or psychiatricinformation, trade secrets, personnel records, or such other sensitive commercial information that isnot publicly available. Public records and documents that are publicly available may not bedesignated for protection under this Order.

4. Documents Which May be Designated ATTORNEYS EYES ONLY. Any partymay designate documents as ATTORNEYS EYES ONLY upon making a good faith determinationthat the documents contain information protected from disclosure by statute or that should beprotected from disclosure as trade secrets or other highly sensitive business or personal information,the disclosure of which is likely to cause significant harm to an individual or to the business orcompetitive position of the designating party.

5. Depositions. Deposition testimony shall be deemed CONFIDENTIAL orATTORNEYS EYES ONLY only if designated as such. Such designation shall be specific as tothe portions of the transcript or any exhibit designated for protection under this Order. Thereafter,the deposition testimony and exhibits so designated shall be protected, pending objection, under theterms of this Order. By stipulation read into the record the parties may agree temporarily todesignate an entire deposition and the exhibits used therein for protection under this Order pendingreceipt and review of the transcript. In such a circumstance, the parties shall review the transcriptwithin thirty days of the receipt thereof and specifically designate the testimony and exhibits thatwill be protected under this Order. Thereafter only the specifically designated testimony andexhibits shall be protected under the terms of this Order.

6. Protection of Confidential Material. (a) Protection of Documents Designated CONFIDENTIAL. Documents designated

CONFIDENTIAL under this Order shall not be used for any purpose whatsoever other than theprosecution or defense of this action, and of any appeal thereof. The parties and counsel for the


18

parties shall not disclose or permit the disclosure of any documents designated CONFIDENTIAL toany third person or entity except as set forth in subparagraphs (1)-(7). Subject to theserequirements, the following categories of persons may be allowed to review documents that havebeen designated CONFIDENTIAL.

(1) Outside Counsel of Record. Outside counsel of record for the parties andemployees and agents of counsel who have responsibility for the preparation andtrial of the action.

(2) Parties. Parties and employees of a party to this Order.(3) The Court. The Court and its personnel.(4) Court Reporters and Recorders. Court reporters and recorders engaged for

depositions.(5) Persons Creating or Receiving Documents. Any person who authored or recorded

the designated document, and any person who has previously seen or was aware ofthe designated document.

(6) Consultants, Investigators and Experts. Consultants, investigators, or expertsemployed by the parties or counsel for the parties to assist in the preparation and trialof this action or proceeding, but only after such persons have completed thecertification contained in Attachment A, Acknowledgment of Understanding andAgreement to Be Bound.

(7) Others by Consent. Other persons only by written consent of the producing partyor upon order of the Court and on such conditions as may be agreed or ordered. Allsuch persons shall execute the certification contained in Attachment A,Acknowledgment of Understanding and Agreement to Be Bound.

(b) Protection of Documents Designated ATTORNEYS EYES ONLY. Documents designated ATTORNEYS EYES ONLY under this Order shall not be used for anypurpose whatsoever other than the prosecution or defense of this action, and of any appeal thereof. The parties and counsel for the parties shall not disclose or permit the disclosure of any documentsdesignated ATTORNEYS EYES ONLY to any third person or entity except as set forth insubparagraphs (1)-(6). Subject to these requirements, the following categories of persons may beallowed to review documents that have been designated ATTORNEYS EYES ONLY.

(1) Outside Counsel of Record. Outside counsel of record for the parties andemployees and agents of counsel who have responsibility for the preparation andtrial of the action.

(2) The Court. The Court and its personnel.(3) Court Reporters and Recorders. Court reporters and recorders engaged for

depositions.(4) Persons Creating or Receiving Documents. Any person who authored or recorded

the designated document, and any person who has previously seen or was previouslyaware of the designated document.

(5) Consultants, Investigators and Experts. Consultants, investigators, or expertsemployed by the parties or counsel for the parties to assist in the preparation and trialof this action or proceeding, but only after such persons have completed the


19

certification contained in Attachment A, Acknowledgment of Understanding andAgreement to Be Bound.

(6) Others by Consent. Other persons only by written consent of the producing partyor upon order of the Court and on such conditions as may be agreed or ordered. Allsuch persons shall execute the certification contained in Attachment A,Acknowledgment of Understanding and Agreement to Be Bound.

(c) Control of Documents. Counsel for the parties shall take reasonable andappropriate measures to prevent unauthorized disclosure of documents designated for protectionunder this Order. Counsel shall maintain the originals of the forms signed by personsacknowledging their obligations under this Order for a period of 1 year after dismissal of the action,the entry of final judgment and/or the conclusion of any appeals arising therefrom.

(d) Copies. All copies of documents designated for protection under this Order, or anyindividual portion of such a document, shall be marked with the designation CONFIDENTIAL orATTORNEYS EYES ONLY if the words do not already appear on the copy. All such copies shallbe entitled to the protection of this Order. The term "copies" shall not include indices, electronicdatabases or lists of documents provided these indices, electronic databases or lists do not containsubstantial portions or images of the text of designated documents or otherwise disclose thesubstance of the designated documents .

(e) Inadvertent Production. Inadvertent production of any document or informationwithout a designation of CONFIDENTIAL or ATTORNEYS EYES ONLY shall be governed byFed. R. Evid. 502.

7. Filing of CONFIDENTIAL or ATTORNEYS EYES ONLY Documents UnderSeal. The Court highly discourages the manual filing of any pleadings or other papers under seal.To the extent that a pleading or other paper references an exhibit designated for protection underthis Order, then the pleading or other paper shall refer the Court to the particular exhibit filed underseal without disclosing the contents of any confidential information.

(a) Before any exhibit designated for protection under this Order is filed under seal withthe Clerk, the filing party shall first consult with the party that originally designated the documentfor protection under this Order to determine whether, with the consent of that party, the exhibit or aredacted version of the exhibit may be filed with the Court not under seal.

(b) Where agreement is not possible or adequate, an exhibit designated for protectionunder this Order shall be filed electronically under seal in accordance with the electronic case filingprocedures of this Court.

(c) Where filing electronically under seal is not possible or adequate, before an exhibitdesignated for protection under this Order is filed with the Clerk, it shall be placed in a sealedenvelope marked CONFIDENTIAL or ATTORNEYS EYES ONLY, which envelope shall alsodisplay the case name, docket number, a designation of what the exhibit is, the name of the party inwhose behalf it is submitted, and the name of the attorney who has filed the exhibit on the front ofthe envelope. A copy of any exhibit filed under seal shall also be delivered to the judicial officer’schambers.

(e) To the extent that it is necessary for a party to discuss the contents of any documentdesignated for protection under this Order in a pleading or other paper filed with this Court, thensuch portion of the pleading or other paper shall be filed under seal. In such circumstances, counsel


20

shall prepare two versions of the pleading or other paper, a public and a sealed version. The publicversion shall contain a redaction of references to CONFIDENTIAL or ATTORNEYS EYES ONLYdocuments. The sealed version shall be a full and complete version of the pleading or other paperand shall be filed with the Clerk under seal as above. A copy of the unredacted pleading or otherpaper also shall be delivered to the judicial officer’s chambers.

8. Challenges by a Party to a Designation for Protection Under this Order. Any CONFIDENTIAL or ATTORNEYS EYES ONLY designation is subject to challenge by any partyor non-party with standing to object (hereafter "party"). Before filing any motions or objections toa designation for protection under this Order with the Court, the objecting party shall have anobligation to meet and confer in a good faith effort to resolve the objection by agreement. Ifagreement is reached confirming or waiving the CONFIDENTIAL or ATTORNEYS EYES ONLYdesignation as to any documents subject to the objection, the designating party shall serve on allparties a notice specifying the documents and the nature of the agreement.

9. Action by the Court. Applications to the Court for an order relating to anydocuments designated for protection under this Order shall be by motion under Local Rule 7.1 andany other procedures set forth in the presiding judge’s standing orders or other relevant orders. Nothing in this Order or any action or agreement of a party under this Order limits the Court’spower to make any orders that may be appropriate with respect to the use and disclosure of anydocuments produced or used in discovery or at trial.

10. Use of Confidential Documents or Information at Trial. Absent order of theCourt, all trials are open to the public and there will be no restrictions on the use at trial of anydocument designated for protection under this Order. If a party intends to present at trial documentsdesignated for protection under this Order, or information derived therefrom, such party shallprovide advance notice to the party designating the documents for protection under this Order leastfive (5) days before the commencement of trial by identifying the documents or information at issueas specifically as possible (i.e., by Bates number, page range, deposition transcript lines, etc.). Upon motion of the party designating the document for protection under this Order, the Court maythereafter make such orders as are necessary to govern the use of such documents or information attrial.

11. Obligations on Conclusion of Litigation. (a) Order Remains in Effect. Unless otherwise agreed or ordered, this Order shall

remain in force after dismissal or entry of final judgment not subject to further appeal.(b) Return of Documents Designated for Protection Under this Order. Within thirty

days after dismissal or entry of final judgment not subject to further appeal, all documentsdesignated for protection under this Order, including copies as defined in ¶6(d), shall be returned tothe producing party unless: (1) the document has been offered into evidence or filed withoutrestriction as to disclosure; (2) the parties agree to destruction in lieu of return; or (3) as todocuments bearing the notations, summations, or other mental impressions of the receiving party,that party elects to destroy the documents and certifies to the producing party that it has done so. Notwithstanding the above requirements to return or destroy documents, counsel may retain copiesof all pleadings, motions, orders, written discovery, and other papers filed with the Court orexchanged by the parties even though they may contain documents designated for protection underthis Order. Counsel may also retain attorney work product, including an index which refers or


21

relates to documents designated for protection under this Order, so long as that work product doesnot duplicate verbatim substantial portions of the text or images of documents designated forprotection under this Order. This work product shall continue to be subject to the protections of thisOrder in accordance with the applicable designation. An attorney may use his or her work productin a subsequent litigation provided that its use does not disclose or use documents designated forprotection under this Order.

(c) Return of Documents Filed under Seal. After dismissal or entry of final judgmentnot subject to further appeal, the Clerk may elect to return to counsel for the parties or, after notice,destroy documents filed or offered at trial under seal or otherwise restricted by the Court as todisclosure.

12. Order Subject to Modification. This Order shall be subject to modification by theCourt on its own motion or on motion of a party or any other person with standing concerning thesubject matter. Motions to modify this Order shall be served and filed under Local Rule 7.1 and thepresiding judge’s standing orders or other relevant orders.

13. No Prior Judicial Determination. This Order is entered based on therepresentations and agreements of the parties and for the purpose of facilitating discovery. Nothingherein shall be construed or presented as a judicial determination that any documents designated forprotection under this Order are entitled to protection under Rule 26(c) of the Federal Rules of CivilProcedure or otherwise until such time as the Court may rule on a specific document or issue.

14. Persons Bound. This Order shall take effect when entered and shall be bindingupon all counsel and their law firms, the parties, and persons made subject to this Order by itsterms.

So Ordered.

Dated: District JudgeMagistrate Judge

[Delete signature blocks if not wholly by consent]

WE SO MOVE/STIPULATEand agree to abide by the terms of this Order.

Counsel for Plaintiff

Counsel for Defendant


22

FORM PROTECTIVE ORDER ATTACHMENT A

UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF OHIO

) CASE NO.Plaintiff, )

) JUDGEv. )

))

Defendant. ))

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

The undersigned hereby acknowledges that he/she has read the Protective Order entered inthe above-captioned action and attached hereto, understands the terms thereof, and agrees to bebound by its terms. The undersigned submits to the jurisdiction of the United States District Courtfor the Northern District of Ohio in matters relating to the Protective Order and understands that theterms of the Protective Order obligate him/her to use documents designated CONFIDENTIAL -SUBJECT TO PROTECTIVE ORDER or ATTORNEYS EYES ONLY – SUBJECT TOPROTECTIVE ORDER in accordance with the Order solely for the purposes of the above-captioned action, and not to disclose any such documents or information derived directly therefromto any other person, firm or concern.

The undersigned acknowledges that violation of the Protective Order may result in penaltiesfor contempt of court.

Name:

Job Title:

Employer:

Business Address:

Date: Signature:


23

Appendix B -- Report of Parties’ Planning Meeting in Patent Cases

UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF OHIO

DIVISION

) CASE NO.Plaintiff, )

)v. ) JUDGE

)) Report of Parties’ Planning Meeting

Defendant. ) Under Fed. R.Civ.P.26(F),LR16.3(b)(3)

) and LPR 2.1

1. Pursuant to Fed. R.Civ. P. 26(f), LR 16.3(b)(3) and LPR 2.1, a meeting was held on[MM/DD/YYYY] and was attended by:

counsel for plaintiff(s) counsel for plaintiff(s) counsel for defendant(s) counsel for defendant(s)

2. The parties do/do not consent to the jurisdiction of the United States Magistrate Judgepursuant to 28 U.S.C. § 636(c).

3. Scheduling

a. Proposed Schedule:

[Counsel shall include dates for all disclosures required by the Local Patent Rules for theNorthern District of Ohio to the extent such disclosures have not already been made.]

b. If the parties are advocating a departure from the dates set forth in the Patent LocalRules, set forth the basis for said departure:

4. Anticipated Motions

a. The parties anticipate filing the following motions:


24

i. __Preliminary injunction. Proposed briefing schedule:

ii. __ Motion to add or substitute parties. Proposed briefing schedule:

iii. __ [Other]. Proposed briefing schedule:

b. The following issues may be the proper subject of an early motion for summaryjudgment or partial summary adjudication:

i. __ Inventorship or Indefiniteness (describe basis) ii. __ Invalidating sale, offer for sale, or display (describe basis) iii. __ Other (describe basis)

5. Nature of Dispute

a. Describe the field of the claimed invention:

b. Claims asserted: c. The parties anticipate requesting that the Court construe claim terms.d. Describe the allegedly infringing activity or product:

e. Describe any potentially non-infringing alternative designs :

f. The parties have/have not stipulated that the above-described designs do not infringethe patents in issue.

6. Discovery

a. If the parties anticipate needing to propound interrogatories and/or take depositionsin excess of the number provided in the Federal Rules of Civil Procedure, set forththe proposed limit and basis for the request:


25

b. The parties have/have not agreed to an electronic discovery plan. Absent agreementby the parties, the default standard for e-discovery set forth in Appendix K to theLocal Rules applies.

c. The parties anticipate the following discovery issues:

7. Protective Order

a. The parties have/have not agreed to the form Patent Protective Order set forth inAppendix C to the Local Patent Rules.

b. The parties do/do not plan to submit an alternative proposed protective order foradoption by the Court.

c. Identify any issues the Court should be aware of with respect to the confidentialityconcerns of the parties:

8. Claim Construction Hearing. The parties propose the following format for the ClaimConstruction Hearing:

a. Order of presentation: b. Anticipated number of witnesses: c. Anticipated length of hearing:

9. The parties have/have not consented, pursuant to Fed. R.Civ. P. 5(b)(2)(E), to the electronicexchange of pleadings, notices, discovery, and other mandated disclosures not otherwiseserved electronically via the Court’s electronic filing system.

10. The parties have/have not discussed settlement and the appropriateness of AlternativeDispute Resolution.

Dated: , 20

Respectfully submitted,

_______________________________Attorney for Plaintiff(s)

_______________________________Attorney for Defendant(s)


26

Appendix C -- Joint Claim Construction Table

CASE CAPTION AND NUMBER

Claim No., Patent No.Disputed Claim

Terms

(Entire ClaimProvided for

Context. OnlyUnderlined

Claim Termsare Discussed by

the Parties)

Plaintiffs’ Proposed Construction/Importa

nce to Outcome

Plaintiffs’Citation toIntrinsic

andExtrinsicEvidence

Defendant’s ProposedConstruction/Importance

to Outcome

Defendant’sCitation to

Intrinsic andExtrinsicEvidence


27

Sample Local Patent Rules Timeline (Detailed Schedule Through Claim Construction)________________________________________________________________________________

1/4/2010 Filing of Complaint

40 2/13/2010 Answer or Motion

45 2/18/2010 LPR 1.4 Case Management Notice and/or Request for Modification ofDeadlines

55 2/28/2010 LPR 3.1-3.2 Infringement Contentions

85 3/30/2010 LPR 3.3-3.4 Non-infringement Contentions

120 5/4/2010 LPR 3.5 Invalidity and Unenforceability Contentions

135 5/19/2010 LPR 4.1(a) Preliminary ID of Claim Terms to be Construed

140 5/24/2010 LPR 3.7 Validity and Enforceability Contentions

155 6/8/2010 LPR 4.1(c) Final ID of Claim Terms

170 6/23/2010 LPR 4.2(a) and (b) Preliminary Claim Constructions and SupportingMaterials

185 7/8/2010 LPR 4.3(a) ID of Claim Construction Expert

200 7/23/2010 LPR 4.3(b) Disclosure of Rebuttal Claim Construction Expert

215 8/7/2010 LPR 4.3(c) Completion of Expert Discovery

220 8/12/2010 LPR 4.2(c) Final Claim Construction

235 8/27/2010 LPR 4.4(a) Opening Claim Construction Submission

265 9/26/2010 LPR 4.4(b) Responsive Claim Construction Submissions

270 10/1/2010 LPR 4.5 File Joint Claim Construction and Prehearing Statement

295 10/26/2010 LPR 4.6 Claim Construction Hearing

All remaining dates are tied to the Court’s claim construction filing

{W1424977.1} 1

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO

LOCAL PATENT RULES

1. SCOPE OF LOCAL PATENT RULES

101.1 Citation.

These are the Local Rules of Practice for Patent Cases before the United States District Court for the Southern District of Ohio. They should be cited as "Pat.L.R." followed by the applicable rule number and subsection.

101.2 Application, Effective Date and Construction.

These Local Patent Rules shall take effect on September 1, 2009 (the “Effective Date”) and shall apply to (1) each civil action filed in this Court on or after the Effective Date, which alleges infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or which seeks a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable (“Patent Case”), (2) each Patent Case transferred to this Court if the initial Rule 26(f) scheduling conference has not yet occurred (in this and the transferring Court) prior to the Effective Date, (3) each pending Patent Case if the initial Rule 26(f) scheduling conference has not yet occurred prior to the Effective Date, and (4) all other pending Patent Cases if just and practicable.

The Court, or the Parties with Court approval may accelerate, extend, eliminate, or modify the obligations or deadlines set forth in these Local Patent Rules based on the circumstances of any particular case, including, without limitation, the complexity of the case or the number of patents, claims, products, or parties involved.

If any motion filed prior to the Claim Construction Hearing provided for in Pat. L.R. 105.5 raises claim construction issues, the Court may, at its discretion, defer the motion until after completion of the disclosures, filings, or ruling following the Claim Construction Hearing.

The Local Civil Rules of this Court shall also apply to these actions, except to the extent that they are inconsistent with these Local Patent Rules.


102.1 Governing Procedure.

(a) Initial Scheduling Conference. When the parties confer with each other pursuant to Fed.R.Civ.P. 26(f), in addition to the matters covered by Fed.R.Civ.P. 26, the parties shall discuss and address in the statement filed pursuant to Fed.R.Civ.P. 26(f), the following topics:

{W1424977.1} 2

(1) Proposed modification of the deadlines provided for in these Local Patent Rules and the effect of any such modification on the date and time of the Claim Construction Hearing, if any;

(2) The scheduling of a Pre-Hearing Conference after the filing of the parties’ opening claim construction briefs to address the format of the claim construction hearing, including such issues as whether the court will hear live testimony, the estimated length of the hearing and how the parties intend to educate the court on the technology issues;

(3) Whether parties are willing to consent to plenary magistrate judge jurisdiction under 28 U.S.C. §636(c). Any reference to this issue in the statement filed pursuant to Fed.R.Civ.P. 26(f) must conform to Rule 73(b) of the Federal Rules of Civil Procedure.

(b) Further Scheduling Conferences. To the extent that some or all of the matters provided for in Pat.L.R. 102.1(a)(1)-(3) are not resolved or decided at the Initial Scheduling Conference, the parties shall propose dates for further Scheduling Conferences at which such matters shall be decided.

102.2 Confidentiality/Default Protective Order.

The production of any document or information and any testimony given in any case governed by these Patent Local Rules shall be governed by the Default Protective Order attached hereto as Appendix A unless and until the Court enters a Protective Order.

102.3 Admissibility of Disclosures.

Except as hereinafter provided, statements, disclosures, or charts governed by these Local Patent Rules are admissible to the extent permitted by the Federal Rules of Evidence or Civil Procedure. However, the statements or disclosures provided for in Pat.L.R. 105.1 and 105.2 are not admissible for any purpose other than in connection with motions seeking an extension or modification of the time periods within which actions contemplated by these Local Patent Rules must be taken.

102.4 Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate ground for objecting to an opposing party's discovery request (e.g., interrogatory, document request, request for admission, deposition question) or declining to provide information otherwise required to be disclosed pursuant to Fed.R.Civ.P. 26(a)(1) that the discovery request or disclosure requirement is premature in light of or otherwise conflicts with, these Local Patent Rules. A party may object, however, to the following categories of discovery requests (or decline to provide information in its initial disclosures under Fed.R.Civ.P. 26(a)(1)) on the ground that they are premature in light of the timetable provided in these Local Patent Rules:

{W1424977.1} 3

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

(2) Requests seeking to elicit from the patent claimant a comparison of the asserted claims and the accused apparatus, product, device, process, method, act, or other instrumentality;

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

(4) Requests seeking to elicit from an accused infringer the identification of any opinions of counsel, and related documents, that it intends to rely upon as a defense to an allegation of willful infringement.

Where a party properly objects to a discovery request (or declines to provide information in its initial disclosures under Fed.R.Civ.P. 26(a)(1)) as set forth above, that party shall provide the requested information on the date on which it is required to provide the requested information to an opposing party under these Local Patent Rules, unless there exists another legitimate ground for objection.

The obligations under Fed.R.Civ.P. 26(e) to supplement disclosure and discovery responses shall apply to all Patent Initial Disclosures and all other discovery responses associated with these Local Patent Rules.


103.1 Initial Disclosures.

(a) Not later than fourteen (14) calendar days before the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Fed.R.Civ.P. 26(a)(1) ("Initial Disclosures").

(b) Not later than fourteen (14) calendar days after the Initial Scheduling Conference, the party asserting a claim of patent infringement shall produce or make available for inspection and copying, subject to agreement of the parties or order of the Court, among other items:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, third party or joint development agreements, and any non privileged correspondence relating to such items and circumstances) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, a sale of or offer to sell or other manner of transfer, a product, system or process embodying the claimed invention prior to the application date of the patent in suit. A party's production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;

{W1424977.1} 4

(2) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the application date of the patent in suit;

(3) Documents sufficient to evidence timing, places, parties and circumstances regarding any known use (whether the use was commercial, public, confidential, third-party or otherwise) of any product, system or process embodying the claimed invention prior to the application date of the patent in suit;

(4) All communications to or from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based; and

(5) All assignment and licensing documents supporting Plaintiff’s standing to sue.

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

(c) Not later than thirty (30) calendar days after the Section 103.2 Disclosure of Asserted Claims and Infringement Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying: Source code, specifications, schematics, flow charts, white-papers, manuals, artwork, formulas, drawings or other documentation, including sales literature, sufficient to show the operation of any aspects or elements of each accused apparatus, product, device, process, method or other instrumentality identified in the Section 103.2 Disclosure of Asserted Claims and Infringement Contentions.

103.2 Disclosure of Asserted Claims and Infringement Contentions.

(a) Not later than thirty (30) calendar days after the Initial Scheduling Conference, a party claiming patent infringement must serve on all parties a "Disclosure of Asserted Claims and Infringement Contentions." Separately for each opposing party, the "Disclosure of Asserted Claims and Infringement Contentions" shall contain the following information:

(1) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsection of 35 U.S.C. 271 asserted;

(2) Separately for each asserted claim, the identity of each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each opposing party of which the party claiming infringement is currently aware. This identification shall be as specific as possible. Each product, device, and apparatus must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;

{W1424977.1} 5

(3) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality. Such charts shall include for each element that such party contends is governed by 35 U.S.C. § 112(6), a description of the claimed function of that element and the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;

(4) Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality, and if present under the doctrine of equivalents, the asserting party shall also explain each function, way, and result that it contends is equivalent, and why it contends that any differences are not substantial;

(5) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.

(6) For any patent that claims priority to an earlier application, the stated priority date to which each asserted claim allegedly is entitled (the Stated Priority Date), and if the patent is the result of a continuation-in-part application or claims priority from a continuation-in-part application a chart shall be provided stating the Stated Priority Date for each element of each asserted claim; and

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

103.3 Document Production Accompanying Disclosure.

With the "Disclosure of Asserted Claims and Infringement Contentions," the party claiming patent infringement shall supplement its Initial Disclosures, if necessary, based upon the Initial Disclosures of the opposing party.

103.4 Invalidity Contentions.

(a) Not later than forty-five (45) calendar days after service upon it of the "Disclosure of Asserted Claims and Infringement Contentions" pursuant to Pat.L.R. 103.2, each party opposing a claim of patent infringement, shall serve upon all parties its "Invalidity Contentions." Invalidity Contentions must contain the following information:

(1) The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious. Each prior art patent shall be identified by

{W1424977.1} 6

its number, country of origin, and date of issue. Each prior art publication shall be identified, to the extent known, by its title, date of publication, author and publisher. Prior art under 35 U.S.C. § 102(b) shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity 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 made known. Prior art under 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived. Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);

(2) Whether each item of prior art allegedly anticipates each asserted claim or renders it obvious. If a combination of items of prior art allegedly makes a claim obvious, each such combination and why it was obvious to make such combination, must be identified;

(3) A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6), a description of the claimed function of that element and the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and

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

103.5 Document Production Accompanying Invalidity Contentions.

With the "Invalidity Contentions," the party opposing a claim of patent infringement shall produce all non-privileged document(s), and/or make available for inspection all products, devices, processes or evidence not readily reproducible, supporting its "Invalidity Contentions," including, but not limited to, a copy of each item of prior art that allegedly anticipates each asserted patent and its related claims or renders them obvious.

103.6 Disclosure Requirements in Patent Cases Initiated by Declaratory Judgment Pleading.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, Pat.L.R. 103.2 and 103.3 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant does not assert a claim for patent infringement in its answer to the complaint, no later than thirty (30) calendar days after the Initial Scheduling Conference, the party seeking

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a declaratory judgment of invalidity must serve upon each opposing party its Invalidity Contentions that conform to Pat.L.R. 103.4 and produce or make available for inspection and copying the documentation described in Pat.L.R. 103.5.

(b) Application of Rules When No Specified Triggering Event Occurs. If the filings or actions in a case do not trigger the application of these Local Patent Rules under the terms set forth herein, the parties shall, as soon as such circumstances become known, meet and confer for the purpose of agreeing on the application of these Local Patent Rules to the case.

103.7 Amendment to Contentions.

Amendments or modifications of the Infringement Contentions or the Invalidity Contentions are permissible without leave of the Court, subject to other applicable rules of procedure and disclosure requirements if made in a timely fashion, asserted in good faith and without purpose of delay. Non-exhaustive examples of circumstances that may, absent undue prejudice to one of the parties, support a finding of good faith under this provision include, inter alia: information discovered or confirmed during fact discovery; information discovered, confirmed or provided by a party's consultant or expert after the party's contentions have been served; new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; information learned from or positions taken by another party during the exchange of contentions process set forth in Pat.L.R. 103; information learned from or positions taken by another party during the claim construction process set forth in Pat.L.R. 105; rulings made by the Court, such as the Court’s Claim Construction ruling; and any circumstance that would support a finding of good cause under this provision.

An amendment or modification made more than sixty (60) days after the Court issues its Claim Construction Order can only be made by order of the Court upon a showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to one of the parties, support a finding of good cause under this provision include, inter alia: a claim construction by the Court different from that proposed by the party seeking amendment; recent discovery of material, prior art despite earlier diligent search; and recent discovery of nonpublic information despite earlier diligent search.

103.8 Discovery regarding Contentions

These rules specifically allow for reasonable discovery of other possible infringing activities or invalidating grounds beyond the specific contentions identified by the patent holder in the Disclosure of Asserted Claims and Infringement Contentions or the accused infringer in the Invalidating Contentions.

4. ALTERNATIVE DISPUTE RESOLUTION

104.1 In addition to any Local Rule requirements of this Court, not later than thirty (30) days after the first Response to Invalidity Contentions is served by any party, counsel and a party representative with full settlement authority for each of the parties to the

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action shall meet and confer to discuss possible mediation or arbitration regarding the claims and defenses pending in the action.


105.1 Exchange of Proposed Claim Terms and Phrases for Construction.

Not later than fourteen (14) calendar days after: (i) service of the Invalidity Contentions pursuant to Pat.L.R. 103.6; or (ii) an agreement of the parties to expedite claim construction following the Initial Scheduling Conference pursuant to Pat.L.R. 102.1(a): the parties shall simultaneously exchange lists of claim terms and phrases which that party contends should be construed by the Court, and identify any claim element which that party contends should be governed by 35 U.S.C. § 112(6). A failure to make a good faith effort to narrow the instances of disputed terms may expose counsel to sanctions, including those provided in 28 U.S.C. § 1927. 105.2 Exchange of Preliminary Claim Constructions, Extrinsic Evidence and Development of Joint Claim Construction and Prehearing Statement.

(a) Not later than twenty-one (21) days after the Pat. L.R. 105.1 exchange, the party which asserts the claim term or phrase needs to be construed by the Court (the “Asserting Party”) shall provide all other parties (the “Receiving Party”) with proposed Preliminary Claim Constructions of each such term or phrase. Each such “Preliminary Claim Construction” shall also, for each term which the Asserting Party contends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that term’s function. The Asserting Party shall identify all references from the specification or prosecution history that support its proposed construction and designate any supporting extrinsic evidence including, without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses. Extrinsic evidence shall be identified by production number or by producing a copy if not previously produced. With respect to any supporting witness, percipient or expert, the Asserting Party shall also provide a general description of the substance of that witness’ proposed testimony that includes a listing of any opinions to be rendered in connection with claim construction.

(b) Not later than forty (40) days after the Pat. L.R. 105.1 exchange, each Receiving Party shall provide all other parties with proposed responsive Preliminary Claim Constructions of each term or phrase originally construed by the Asserting Party. Each such “Preliminary Claim Construction” shall also, for each term which the Receiving Party contends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that term’s function. The Receiving Party shall identify all references from the specification or prosecution history that support its proposed construction and designate any supporting extrinsic evidence including, without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses. Extrinsic evidence shall be identified by production number or by producing a copy if not previously produced. With respect to any supporting witness, percipient or expert, the Receiving Party shall also provide a

{W1424977.1} 9

general description of the substance of that witness’ proposed testimony that includes a listing of any opinions to be rendered in connection with claim construction.

(c) Not later than sixty (60) days after the Pat. L.R. 105.1 exchange, the parties shall meet and confer (i) for the purposes of limiting the terms in dispute by narrowing or resolving differences and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement; (ii) for the purposes of jointly identifying no more than ten (10) terms likely to be most significant to resolving the parties’ dispute, including those terms for which construction may be case or claim dispositive; (iii) regarding whether the Court will hear live testimony at the Claim Construction Hearing; (iv) regarding whether the parties anticipate using expert witnesses for claim construction; (v) regarding the need for and any specific procedures or limits on discovery relating to claim construction, including depositions of witnesses, including expert witnesses; and (vi) regarding the order of presentation at the Claim Construction Hearing.

(d) Not later than eighty (80) days after the Pat. L.R. 105.1 exchange, the parties shall submit to the Court a Joint Claim Construction and Prehearing Statement, which shall contain the following information:

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

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

(iii) An identification of the terms or phrases whose construction will be most significant to the resolution of the case up to a maximum of ten (10). If the parties cannot agree on the ten (10) most significant terms, the parties shall identify the ones which they do agree are most significant and then they may evenly divide the remainder with each party identifying what it believes are the remaining most significant terms. However, the total terms identified by all parties as most significant cannot exceed ten (10). For example, in a case involving two (2) parties, if the parties agree upon the identification of five (5) terms as most significant, each may only identify two (2) additional terms as most significant; if the parties agree upon eight (8) such terms, each party may only identify only one (1) additional term as most significant;

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

(v) Whether any party proposes to call one or more witnesses at the Claim Construction Hearing, the identity of each such witness, and for each

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witness, a general summary of his or her testimony including, for any expert, each opinion to be offered related to claim construction.

The Joint Claim Construction and Prehearing Statement shall be in the format shown in Appendix "B". Each party shall also file with the Joint Claim Construction and Prehearing Statement an appendix containing a copy of each exhibit of intrinsic evidence cited by the party in the Joint Claim Construction and Prehearing Statements.

105.3 Completion of Claim Construction Discovery.

Not later than sixty (60) days after service and filing of the Joint Claim Construction and Prehearing Statement, the parties shall complete all discovery relating to claim construction, including any depositions with respect to claim construction of any witnesses, including experts, identified in the Joint Claim Construction and Prehearing Statement.

105.4 Claim Construction Briefing and Extrinsic Evidence.

(a) Not later than seventy-five (75) calendar days after filing of the Joint Claim Construction and Prehearing Statement pursuant to Pat.L.R. 105.2, each party shall serve and file an Opening Claim Construction Brief concerning the proposed construction of each claim term and phrase which the parties collectively have identified as being in dispute in each patent held by that particular party. Such Opening Claim Construction Brief shall also, for each element which the party contends is governed by 35 U.S.C. § 112(6), describe the claimed function of that element and identify the structure(s), act(s), or material(s) corresponding to that element.

(b) Not later than thirty (30) calendar days after service of the Opening Claim Construction Brief, each party may serve and file a Response to Opening Claim Construction Brief. Such Response shall further include a concise statement not to exceed five (5) pages as to whether the party objects to any another party’s offer of extrinsic evidence.

(c) Prior to the Claim Construction Hearing, the Court may issue an order stating whether it will receive extrinsic evidence and, if so, the particular evidence that it will exclude and that it will receive, and any other matter the Court deems appropriate concerning the conduct of the hearing.

105.5 Claim Construction Hearing.

Subject to the convenience of the Court's calendar, thirty (30) calendar days following submission of the Response to the Claim Construction Brief specified in PAT.L.R. 105.4(b), the Court shall conduct a Claim Construction Hearing.

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6. EXPERT WITNESSES

106.1 Disclosure of Experts and Expert Reports.

For issues other than claim construction to which expert testimony shall be directed, expert witness disclosures and depositions shall be governed by this Rule.

(a) No later than thirty (30) calendar days after the Court's ruling on claim construction each party shall make its initial expert witness disclosures required by F. R. Civ. P. 26 on the issues on which each bears the burden of proof.

(b) No later than thirty (30) calendar days after the first round of disclosures, each party shall make its initial expert witness disclosures required by F. R. Civ. P. 26 on the issues on which the opposing party bears the burden of proof.

(c) Unless otherwise ordered by the Court, no later than fourteen (14) calendar days after the disclosures in Pat.L.R. 106.1(b), each party shall make any rebuttal expert witness disclosures permitted by F. R. Civ. P. 26.

106.2 Depositions of Experts.

Depositions of expert witnesses disclosed under this Rule, if any, shall commence within fourteen (14) calendar days after rebuttal reports are served and shall be completed within sixty (60) calendar days after commencement of the deposition period.

7. TRIALS AND WILLFUL INFRINGEMENT

107.1 Timing of Trial.

Subject to the convenience of the Court's calendar, within eighteen (18) months following the initial Rule 26(f) Scheduling Conference, the Court shall conduct a Trial on all issues except willful infringement.

107.2 Willful Infringement.

If a patent holder has obtained a judgment of patent infringement against an accused infringer of at least one valid claim in the Patent Case, and all other claims of infringement and the accused infringer’s legal and equitable defenses have been fully adjudicated, a scheduling conference will take place within fourteen (14) days to establish a scheduling order setting forth an accelerated schedule for the completion of fact and expert discovery on the issue of willful infringement.

107.3 Stay on Willfulness Discovery

Discovery of any attorney-client or work product privileged documents, information or testimony related to willful infringement in a Patent Case by an accused infringer is automatically stayed in the Patent Case until the patent holder has obtained

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a judgment of patent infringement in the Patent Case against the accused infringer of at least one valid claim, and all other claims of infringement and legal defenses have been fully adjudicated.

8. PATENT LOCAL RULES LAW AND MOTION MEET AND CONFER REQUIREMENTS

108.1 In addition to any Local Rule requirements of this Court, every motion relating to the parties’ obligations under these rules must include a statement that the parties met and conferred in person or by telephone in order to resolve the dispute by agreement or at least narrow the issues.

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APPENDIX A


FOR THE SOUTHERN DISTRICT OF OHIO

PLAINTIFF, V. DEFENDANT.

:::::::::

CASE NO. [JUDGE ]

DEFAULT PROTECTIVE ORDER

The parties to this action recognize that disclosure and discovery activity are

likely to arise that will require the disclosure of trade secrets, confidential research,

development, manufacturing, financial, process, marketing, and business information, or

other commercial information within the meaning of Federal Rule of Civil Procedure

26(c). The parties believe that good cause exists to protect this information from public

disclosure. In the absence of a suitable Protective Order safeguarding the

confidentiality of such information, the parties would be hampered in their ability to

produce such information.

Accordingly, the parties hereby stipulate as follows, subject to the approval of the

Court:

1. DESIGNATION OF PROTECTED MATERIAL

1.1 This Order shall govern all documents and other products of discovery

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obtained by the parties from one another, and from third parties, all information copied

or derived therefrom, as well as all copies, excerpts, summaries or compilations thereof,

including documents produced pursuant to requests authorized by the Federal Rules of

Civil Procedure, answers to interrogatories, deposition transcripts, responses to

requests for admission, affidavits, declarations, expert reports, and other such material

and information as may be produced during the course of this litigation.

1.2 In connection with discovery proceedings in this action, any party or third

party may designate any non-public document, material, or information as

“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY”

(collectively referred to as “Protected Material”).

(a) A party may designate as “CONFIDENTIAL” any information,

document, or thing that the party reasonably and in good faith believes to contain

confidential information within the meaning of Fed. R. Civ. P. 26(c)(7) used by it

in, or pertaining to, its business and that is not generally known, and which that

party would not normally reveal to third parties or, if disclosed, would require

such third parties to maintain in confidence.

(b) A party may designate as “HIGHLY CONFIDENTIAL – ATTORNEY

EYES ONLY” such materials as the party reasonably and in good faith believes

to contain particularly sensitive technical information relating to research for and

production of current products; technical, business, and research information

regarding future products; non-public and highly sensitive financial information;

marketing and sales information, such as marketing plans and forecasts,

customer lists, pricing data, cost data, customer orders, and customer

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quotations; any pending or abandoned patent applications, foreign or domestic;

and such other documents, information, or materials that relate to other

proprietary information that the designating party reasonably believes is of such

nature and character that disclosure of such information would be harmful to the

designating party.

1.3 The following information shall not be designated or protected under this

Protective Order:

(a) Information that is in the public domain at the time of disclosure,

including patent file histories, publicly available prior art publications, catalogs

and other advertising materials, press releases, and publicly-filed financial

statements;

(b) Information that at any time is made public through no act of a non-

designating party;

(c) Information that the designating party has not undertaken with

others to maintain in confidence and that is in the possession of or becomes

available to the receiving party other than through discovery in this action, but

only if the receiving party can show by written documentation that the information

independently came into its rightful possession; or

(d) Information that is independently developed by the receiving party,

as reflected by written documentation demonstrated to be in existence prior to

production by the party claiming confidentiality.

1.4 Any documents or things produced pursuant to a discovery request or

other written materials exchanged by the parties (including discovery responses, letters,

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and briefs) that a party desires to designate as Protected Material shall be so

designated by marking each page of the document, paper or thing CONFIDENTIAL or

HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY, as appropriate, and indicating

the identity of the producing party (e.g., through the use of an identifying prefix to the

document identification (Bates) number).

1.5 In the event a party may make available certain of its files for inspection by

another party, which files may contain non-confidential material as well as material that

may be subject to protection under this Protective Order, with the intent that following

such inspection the inspecting party will designate certain of the inspected documents

to be copied and furnished to it, such files need not be marked with either confidentiality

designation in advance, but shall all be treated as HIGHLY CONFIDENTIAL –

ATTORNEY EYES ONLY materials. Only those persons identified in paragraph 2.2

below as permitted to view HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY

materials may be present at any such inspection. When the producing party copies the

documents to furnish to the inspecting party, the producing party shall mark Protected

Material with the appropriate confidentiality designation to the extent warranted under

paragraph 1.2.

1.6 Whenever a deposition involves a disclosure of Protected Material, the

following procedures shall apply:

(a) Any party may designate any portion or all of a deposition as

CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY by

notifying the other parties on the record during the deposition. The Court

Reporter shall be asked to make the appropriate confidentiality designation on

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each page of the transcript that contains CONFIDENTIAL or HIGHLY

CONFIDENTIAL – ATTORNEY EYES ONLY information. At that time, all

persons not qualified to receive that category of information shall leave the room

prior to continuation of the deposition and until the conclusion of such designated

testimony.

(b) Any party may also designate any portion or all of a deposition as

CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY by

notifying the other parties separately in writing within thirty days of receipt of the

transcript. In such event, the parties shall confer as to the most convenient way

to segregate the designated portions of the transcript. All information disclosed

at a deposition and all information contained in deposition transcripts shall be

treated as HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY for a period of

thirty days after the receipt of the transcript to permit adequate time for review of

the transcript and notice to other counsel regarding any designation as Protected

Material by a designating party.

2. ACCESS TO AND USE OF PROTECTED MATERIAL

2.1 Protected Material, and all summaries, compilations, and derivations

thereof, whether oral or written, shall be maintained in confidence, shall be used solely

in the preparation, prosecution, or trial of this action and not for any other purpose, and

may be disclosed only as provided in the following paragraphs.

2.2 Information which has been designated as HIGHLY CONFIDENTIAL –

ATTORNEY EYES ONLY may be disclosed only to:

(a) The outside attorneys of record and their employees who are

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engaged in assisting in this action; provided that such does not include any

persons participating in the prosecution of any present or future patent

application (including the reexamination or reissue of any present or future

patent) that is a counterpart to or related to the patents-in-suit ("participating" in

such prosecution includes preparing or reviewing patent applications, reviewing

office actions, preparing or reviewing responses to office actions, and engaging

in any discussion or other communication regarding the scope or validity of any

claims in such patent applications or in the patents that are the subject of such

reexamination or reissue); provided that this exclusion does not apply to persons

whose involvement with the prosecution of such patents or patent applications is

limited to administrative oversight for billing or project assignment purposes;

(b) [Optional: The following in-house counsel of a receiving party, (1)

who has no involvement in competitive decision-making or in patent prosecution

involving [specify subject matter areas], (2) to whom disclosure is

reasonably necessary for this litigation, and (3) who has signed the “Agreement

to Be Bound by Protective Order” in Exhibit A, may have access: ; ]

(c) Independent consultants or experts retained by the party or its

attorneys in connection with this action, including technical experts, damage and

industry experts, patent experts, and jury or trial consultants, together with their

employees engaged in assisting in this action (including mock jurors), but only

subject to the provisions of paragraph 2.5 below; provided that such does not

include any persons participating in the prosecution of any present or future

patent application (including the reexamination or reissue of any present or future

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patent) that is a counterpart to or related to the patents-in-suit ("participating" in

such prosecution includes preparing or reviewing patent applications, reviewing

office actions, preparing or reviewing responses to office actions, and engaging

in any discussion or other communication regarding the scope or validity of any

claims in such patent applications or in the patents that are the subject of such

reexamination or reissue); provided that this exclusion does not apply to persons

whose involvement with the prosecution of such patents or patent applications is

limited to administrative oversight for billing or project assignment purposes;

(d) The Court and its personnel;

(e) Court reporters and their personnel engaged in proceedings

incident to preparation for trial or trial;

(f) Professional vendors and their employees, including copy services,

trial graphics services, and translation services, engaged by counsel; and

(g) Any person who is indicated on the face of a document to have

been an author, addressee, or copy recipient of the document, or the original

source of the information.

2.3 Information which has been designated as CONFIDENTIAL may be

disclosed only to:

(a) The persons identified in paragraph 2.2; and

(b) Any party or employee of a party to whom disclosure is reasonably

necessary for this litigant and litigation who has signed the “Agreement to Be

Bound by Protective Order” in Exhibit A.

2.4 [Optional – when 2.2(b) not used: Notwithstanding the provisions of

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paragraph 2.2 above, in order to permit full evaluation of the parties' respective

positions, the following persons shall also be permitted access to all motions for

summary judgment and all supporting, opposition and reply briefs or memoranda filed in

connection with any such motions; all briefs or memoranda filed in connection with claim

construction; all reports of testifying experts; and all exhibits or attachments to any of

the above: .]

2.5 Protected Material shall be disclosed to consultants and experts only upon

the following terms:

(a) Prior to any disclosure, the consultant or expert shall be identified in

writing to the other parties’ counsel by name, address, and corporate, business

or other professional affiliation or employment, together with a copy of the

expert’s curriculum vitae and a list of the expert’s litigation or consulting

engagements for the past three years;

(b) Unless another party notifies the proposing party of any objection

within five business days after notification (by fax, by email, or by overnight mail),

the consultant or expert shall thereafter be allowed to have access to Protected

Material pursuant to the terms and conditions of this Protective Order;

(c) In the event of a timely objection, which objection shall be made in

good faith and on reasonable grounds, the proposing party shall refrain from

disclosure of Protected Material to the consultant or expert until the objection has

been resolved between the parties or ruled upon by the Court;

(d) The parties shall endeavor in good faith to resolve the dispute

without calling upon the intervention of the Court. The burden is on the objecting

{W1424977.1} 21

party to seek the intervention of the Court by appropriate motion to preclude the

proposing party from disclosing Protected Material to the consultant or expert. If

no such motion is filed within ten business days of receipt of the objection, the

proposing party may disclose Protected Material to the consultant or expert as if

no objection had been raised; and

(e) No party shall use its right to object to a proposed consultant or

expert to unreasonably interfere with the ability of another party to prepare for

trial through the use of consultants and experts.

2.6 Prior to receiving any Protected Material, any persons described in

sections (b), (c), (e), or (f) of paragraph 2.2 shall be furnished with a copy of this

Protective Order and shall execute a copy of the “Agreement to Be Bound by Protective

Order” attached as Exhibit A. A copy of the signed Agreement shall be maintained by

counsel for the party providing such access.

2.7 Nothing in this Protective Order shall prevent any counsel of record from

utilizing Protected Material in the examination of any person who is reasonably alleged

to be the author or source of the Protected Material or who is reasonably believed to

have knowledge relating thereto. In addition,

(a) Parties and present employees of the parties, or employees of third

parties, may be examined as a witness at depositions and trial and may testify

concerning all Protected Material produced or designated by that party, or by the

employee's employer if a third party.

(b) Former employees of the parties, or former employees of third

parties, may be examined and may testify concerning all Protected Material

{W1424977.1} 22

produced or designated by the party or third party that formerly employed such

person and which pertains to the period or periods of his/her employment and

prior thereto; and

(c) Former experts of the parties may be examined and may testify

concerning all Protected Material produced or designated by the respective party

which pertains to the subject matter of his/her consultation.

2.8 Nothing in this Protective Order shall preclude any party from introducing

Protected Material into evidence at any evidentiary hearing or at trial. However, if

anyone intends to introduce or refer to Protected Material at any hearing or trial, the

party wishing to make the disclosure shall first notify the producing party and provide

them with an opportunity to object and/or to ask the Court to take appropriate

precautionary procedures (e.g., clearing the Courtroom, sealing the record, etc.).

2.9 Nothing in this Protective Order shall bar or otherwise restrict any attorney

from rendering advice to his or her clients with respect to this litigation and referring to

or relying generally upon his examination of Protected Material, provided that in

rendering such advice and in otherwise communicating with his or her clients, the

attorney shall not disclose the content of such information.

2.10 All persons in possession of Protected Material shall exercise reasonable

and appropriate care with regard to the storage, custody, and use of such information in

order to ensure that the provisions of this Protective Order are observed and the

confidential nature of the information is maintained.

3. CHALLENGES TO CONFIDENTIALITY DESIGNATIONS

3.1 Any party believing that particular information has been improperly

{W1424977.1} 23

marked, i.e., that it is not in fact CONFIDENTIAL or HIGHLY CONFIDENTIAL –

ATTORNEY EYES ONLY, may challenge such designation at any time by raising the

issue, in writing to the designating party, and specifically identifying, by document

identification (Bates) number, by deposition page and line, or by other appropriate

specific identifier, the information whose confidentiality status is challenged. Within ten

business days of receipt of such writing, the designating party shall either remove or

reduce the designation, or respond that it has reviewed the matter and continues to

maintain the designation in good faith.

3.2 The parties shall endeavor in good faith to resolve any such dispute

without calling upon the intervention of the Court. If the designating party maintains its

designation and the parties are unable to reach agreement, the challenging party may

bring the issue to the Court. The party asserting confidentiality shall have the burden of

establishing the appropriateness of the designation, except that a party claiming that

information designated by the other as confidential is in the public domain shall have the

burden of proving such public knowledge.

3.3 Challenged information shall be treated as designated until the resolution

of the dispute by the parties or ruling by the Court.

4. FILING OF PROTECTED MATERIAL

This Protective Order does not authorize filing protected materials under seal.

According to the authority of Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219

(6th Cir. 1996), no document may be filed with the Court under seal without prior

permission as to each such filing, upon motion and for good cause shown, including the

legal basis for filing under seal. Unless the Court orders otherwise, all sealed

{W1424977.1} 24

documents shall be filed according to S.D. Ohio Civ. R. 79.3.

5. TERMINATION OF LITIGATION

5.1 The obligations of this Protective Order shall survive the termination of the

action and continue to bind the parties. Within sixty days after termination of this action

by judgment, settlement, or otherwise from which no appeal can be brought, each party

shall destroy all documents containing or disclosing Protected Material of any other

party. Each party’s outside litigation counsel shall have the right to retain one copy of

the pleadings; of motions, memoranda, documents and papers filed with the Court; of

deposition transcripts and exhibits; and of any documents constituting work product.

6. THIRD PARTY DISCOVERY

6.1 In the event that any third party shall be called upon, by subpoena or

otherwise, to provide or produce documents or information considered CONFIDENTIAL

or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY by such third party, such third

party may elect to have its information treated in accordance with the terms of this

Protective Order by so notifying counsel for all parties in writing. Upon service of such

notice, such third party may designate documents and information as CONFIDENTIAL

or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY in the manner set forth in this

Protective Order, and such third party’s designated information shall be protected in the

same manner as that of the parties to this action.

7. INADVERTENT DISCLOSURE

7.1 If a party inadvertently discloses any document or thing containing

information that it deems CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY

EYES ONLY without designating it pursuant to this Protective Order, the disclosing

{W1424977.1} 25

party shall promptly upon discovery of such inadvertent disclosure inform the receiving

party in writing, forwarding a replacement copy of the inadvertently disclosed material

properly marked with the appropriate confidentiality designation. The receiving party

shall thereafter treat the information as if it had been properly marked from the outset

and shall make a reasonable effort to retrieve and destroy the unmarked version of the

inadvertently disclosed material. Disclosure by the receiving party to unauthorized

persons before being notified of the inadvertent disclosure shall not constitute a

violation of this Protective Order. Nothing in this Protective Order shall preclude the

receiving party from challenging the confidentiality designation of the late-marked

material pursuant to the provisions of paragraph 3.

7.2 The inadvertent or mistaken production or disclosure of documents or

other information subject to the attorney-client privilege, the work product doctrine, or

other privilege shall not be deemed a waiver of a claim of privilege, either as to the

specific information disclosed or as to any other related information. If a producing

party inadvertently produces or otherwise discloses to a receiving party information that

is subject to such privilege or immunity, the producing party shall promptly upon

discovery of such disclosure so advise the receiving party in writing and request that the

inadvertently disclosed information be returned. The receiving party shall return all

copies of the inadvertently produced material within five business days of receipt of the

request. Any notes or summaries referring or relating to any inadvertently produced

privileged material shall be destroyed. Nothing in this Protective Order shall preclude

the receiving party returning the inadvertently produced material from seeking an order

compelling the production of information previously produced inadvertently.

{W1424977.1} 26

8. MISCELLANEOUS PROVISIONS

8.1 If Protected Material in the possession of any receiving party is

subpoenaed by any court, administrative or legislative body, or by any other person

purporting to have authority to subpoena such information, or is the subject of any

discovery request under Rules 30-36 of the Federal Rules of Civil Procedure or any

comparable rule of court or of any adjudicative body (such subpoena or discovery

request collectively referred to as a "Third Party Request") the party to whom the Third

Party Request is directed will not produce such information without first giving prompt

written notice (including a copy of the Third Party Request) to the attorneys of record for

the producing party, no more than three business days after receiving the Third Party

Request. The party receiving the Third Party Request must also promptly inform in

writing the party who caused the Third Party Request to issue in the other litigation that

some or all the material covered by the Third Party Request is subject to this Protective

Order. The party receiving the Third Party Request must deliver a copy of this

Protective Order promptly to the party in the other action that caused the Third Party

Request to issue.

8.2 The producing party shall bear the burden and expense of seeking

protection in court of its own Protected Material, and nothing in this Protective Order

should be construed as authorizing or encouraging a party receiving a Third Party

Request in this action to disobey a lawful directive from another court. Disclosure of

information in response to a properly issued Third Party Request shall not constitute a

violation of this Protective Order.

8.3 This Protective Order may be modified by further Order of the Court, or by

{W1424977.1} 27

agreement of the parties or their counsel and approved by the Court, and is without

prejudice to the rights of any party to move for relief from any of its provisions, or to

seek or agree to different or additional protection for any particular material or

information.

8.4 Treatment by counsel or the parties of information designated

CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY as

designated shall not be construed as an admission by any party that the designated

information contains trade secrets or other proprietary or confidential information.

Conversely, failure to so designate shall not constitute a waiver of any party’s claims,

either within or outside this action, that any such documents or information do contain

trade secrets or other proprietary or confidential information.

8.5 No party shall be obligated to challenge the propriety of any designation,

and failure to challenge a claim of confidentiality at the time of receipt shall not

constitute a waiver of the right to challenge a confidentiality designation at any later

time.

So Stipulated: Dated:

Counsel for Plaintiff

Dated: Counsel for Defendant

{W1424977.1} 28

So Ordered: Dated:

United States District (or Magistrate) Judge

{W1424977.1}

EXHIBIT A

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO

PLAINTIFF, V. DEFENDANT.

:::::::::

CASE NO. [JUDGE ]

AGREEMENT TO BE BOUND BY DEFAULT PROTECTIVE ORDER

I, _______________________, hereby acknowledge that I received a copy of the

Default Protective Order in this action. I read and understood the Protective Order and

agree to be bound by its provisions. I agree not to copy or use any CONFIDENTIAL or

HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY information that may be provided

to me for any purpose other than in connection with my retention in connection with this

action, and I agree not to reveal any such information to any person not authorized by

this Protective Order.

I further acknowledge and understand that a violation of this Protective Order

may subject me to penalties of the Court, and I hereby submit to the jurisdiction of the

United States District Court for the Southern District of Ohio, in connection with any

proceedings concerning enforcement of this Protective Order.

Dated:

{W1424977.1}

APPENDIX B

JOINT DISPUTED CLAIM TERMS CHART** Plaintiff v. Defendant, Civ. Action No. 00-000-XXX

Disputed Claim Term

Plaintiff Proposed Construction

Plaintiff Citation To Intrinsic Evidence

Plaintiff Citation to Proposed Extrinsic Evidence

Defendant Proposed Construction

Defendant Citation To Intrinsic Evidence

Defendant Citation to Proposed Extrinsic Evidence

1. “Term 1”

2. “Term 2”

3. “Term 3”

4. “Term 4”

* This chart shall not contain legal argument.

Local Rules of Court Southern District of Ohio June 1, 2009

{W1290259.1}

APPENDIX C

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO

Plaintiff, v. Defendant. )) Civil Action No. MODEL SCHEDULING ORDER FOR USE IN PATENT CASES

AND NOW, this ________ day of ________________, 20__,

IT IS ORDERED that this action is placed under the Local Patent Rules of this Court for pretrial proceedings and all provisions of these Rules will be strictly enforced.

IT IS FURTHER ORDERED that counsel shall confer with their clients prior to all scheduling, status, or pretrial conferences to obtain authority to participate in settlement negotiations which may be conducted or ordered by the Court.

IT IS FURTHER ORDERED that compliance with provisions of Local Rule 16 and the Local Patent Rules shall be completed as follows:

(1) The parties shall move to amend the pleadings or add new parties by __________________

(2) The party claiming patent infringement shall produce or make available for inspection and copying the documents set forth in Pat. L.R. 103.1(b) by ________________; [14 calendar days after the Initial Scheduling Conference; Pat. L.R. 103.1(b)]

(3) The party claiming patent infringement must serve on all parties the Disclosure of Asserted Claims and Infringement Contentions described in Pat. L.R. 103.2 by ________________; [30 calendar days after the Initial Scheduling Conference; Pat. L.R. 103.2]

(4) The party opposing a claim of patent infringement shall produce or make available for inspection and copying the documents set forth in Pat. L.R. 103.1(c) by ________________; [30 calendar days after the Disclosure of Asserted Claims and Infringement Contentions described in Pat. L.R. 103.2; Pat. L.R. 103.1(c)]

(5) The party claiming invalidity must serve on all parties the Disclosure of Invalidity Contentions described in Pat. L.R. 103.4 by ______________; [45 calendar days after service of Disclosure of Asserted Claims and Infringement Contentions; Pat. L.R. 103.4]

{W1290259.1}

(6) Each party will simultaneously exchange the Proposed Claim Terms and Phrases for Construction described in Pat. L.R. 105.1 by________________; [14 calendar days after service of the Invalidity Contentions; Pat. L.R. 105.1]

(7) Each party contending a claim term or phrase should be construed by the Court shall provide the parties with the proposed Preliminary Claim Constructions of each such term or phrase described in Pat. L.R. 105.2(a) and supporting evidence by________________; [21 calendar days after the Pat. L.R. 105.1 exchange; Pat. L.R. 105.2(a)]

(8) Each party disputing a proposed “Preliminary Claim Construction” shall provide all parties with their proposed constructions for the disputed term or phrase (“Responsive Claim Construction”) described in Pat. L.R. 105.2(b) and supporting evidence by________________; [40 calendar days after the Pat. L.R. 105.1 exchange; Pat. L.R. 105.2(b)]

(9) The parties shall meet and confer regarding claim construction issues as described in Pat. L.R. 105.2(c) by________________; [60 calendar days after the Pat. L.R. 105.1 exchange; Pat. L.R. 105.2(c)]

(10) The parties shall file a Joint Disputed Claim Terms Chart as described in Pat. L.R. 105.2(e) by ________________; [80 calendar days after the Pat. L.R. 105.1 exchange; Pat. L.R. 105.2(e)].

(11) The parties shall complete discovery related to Claim Construction as described in Pat. L.R. 105.3 by ________________; [60 calendar days after the filing date of the Pat. L.R. 105.2(e) Joint Disputed Claim Terms Chart; Pat. L.R. 105.3]

(12) Each of the Parties shall file and serve an Opening Claim Construction Brief by ________________; [75 calendar days after filing of the Pat. L.R. 105.2(e) Joint Disputed Claim Terms Chart; Pat. L.R. 105.4 (a)]

(13) Each of the Parties may file and serve a response to the Opening Claims Construction Brief, and any objections to extrinsic evidence by ______________; [30 calendar days after service of the opening claim construction brief. Pat. L.R. 105.4(b)]

(14) The Court shall conduct a hearing on the issue of Claim Construction on ________________, [30 calendar days after submission of the reply, subject to the convenience of the Court’s calendar; Pat. L.R. 105.5]

(15) The parties shall complete fact discovery by _________________, and all interrogatories, depositions, requests for admissions, and requests for production shall be served within sufficient time to allow responses to be completed prior to the close of discovery;

(16) Each party shall make its initial expert witness disclosures, as required under Rule 26, on the issues on which each bears the burden of proof by

{W1290259.1}

_____________, [60 days after court's ruling on claim construction; Pat. L.R. 106.1(a)]

(17) Each party shall make its initial expert witness disclosures, as required under Rule 26, on the issues on which the opposing party bears the burden of proof by _____________ [30 days after the first round of expert disclosures; Pat. L.R. 106.1(b)]

(18) Rebuttal expert witness disclosures are to be made by ______________ [14 calendar days after second round of expert disclosures; Pat. L.R. 106.1(c)]

(19) Expert Depositions, if any, shall be completed by _____________; [60 days after commencement of deposition period; Pat. L.R. 106.2]

(20) Motions for summary judgment with evidentiary material and accompanying brief, if appropriate, shall be filed by ______________, responses to such motions shall be filed within ________ days thereafter and reply briefs shall be filed within ________ days thereafter. Surreply briefs shall not be filed unless approved/requested by the Court;

(21) All parties shall file an indication whether or not they are willing to proceed to trial in front of a Magistrate Judge by ____________;

(22) The Court shall conduct a pretrial conference on ________, at __________ ;

(23) The trial shall commence on ____________, at _________ (time), Courtroom No. _______.

United States District (or Magistrate) Judge

cc: All Counsel of Record

UNITED STATES DISTRICT COURT FOR THEWESTERN DISTRICT OF PENNSYLVANIA

LOCAL PATENT RULES

1. SCOPE OF RULES

LPR 1.1. Authority.

The Local Patent Rules for the United States District Court for the WesternDistrict of Pennsylvania are promulgated as authorized by and subject to the limitationsof Federal Rule of Civil Procedure 83.

LPR 1.2. Citation.

These are the Local Rules of Practice for Patent Cases before the United StatesDistrict Court for the Western District of Pennsylvania. They should be cited as "LPR,"followed by the applicable rule number and subsection.

LPR 1.3. Application 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 Court may accelerate, extend, eliminate, or modify theobligations or deadlines set forth in these Local Patent Rules based on the circumstances ofany particular case, including, without limitation, the complexity of the case or thenumber of patents, claims, products, or parties involved. If any motion filed prior to theClaim Construction Hearing provided for in LPR 4.6 raises claim construction issues, theCourt may, for good cause shown, defer the motion until after completion of thedisclosures, filings, or ruling following the Claim Construction Hearing. The Local CivilRules of this Court shall also apply to these actions, except to the extent that they areinconsistent with these Local Patent Rules.

LPR 1.4. Effective Date.

These Local Patent Rules shall take effect on January 1, 2005 and shall apply toany case filed thereafter. The parties to any other pending civil action in which theinfringement, validity or enforceability of a utility patent is an issue shall meet and conferpromptly after January 1, 2005, for the purpose of determining whether any provisions inthese Local Patent Rules should be made applicable to that case. No later than seven (7)calendar days after the parties meet and confer, the parties shall file a stipulation settingforth a proposed order that relates to the application of these Local Patent Rules. Unlessand until an order is entered applying these Local Patent Rules to any pending case, theLocal Civil Rules previously applicable to pending patent cases shall govern.


LPR 2.1. Governing Procedure.

(a) Initial Scheduling Conference. When the parties confer with each otherpursuant to Fed.R.Civ.P. 26(f), in addition to the matters covered by Fed.R.Civ.P. 26, theparties must discuss and address in the statement filed pursuant to Fed.R.Civ.P. 26(f), thefollowing topics:

Proposed modification of the deadlines provided for in these LocalPatent Rules and/or set forth in the Court's Scheduling Order (see ModelScheduling Order at Appendix "C" for types of deadlines that might be included)and the effect of any such modification on the date and time of the ClaimConstruction Hearing, if any;

Whether the Court will hear live testimony at the ClaimConstruction Hearing;

The need for and any specific procedures or limits on discoveryrelating to claim construction, including depositions of witnesses, includingexpert witnesses; and

The order of presentation at the Claim Construction Hearing.

Whether parties are willing to go to trial in front of a MagistrateJudge.

(b) Further Scheduling Conferences. To the extent that some or all of thematters provided for in LPR 2. 1(a)(1)-(4) are not resolved or decided at the InitialScheduling Conference, the parties shall propose dates for further Scheduling Conferences atwhich such matters shall be decided.

LPR 2.2. Confidentiality.

All documents or information produced under these Local Patent Rules shall begoverned by the terms and conditions of the Protective Order in Appendix "A". SuchProtective Order shall be deemed automatically entered upon the filing or transfer of anycivil action to which these Local Patent Rules apply pursuant to LPR 1.3, unlessotherwise modified by agreement of the parties or Order of Court.

LPR 2.3. Certification of Initial Disclosures.

All statements, disclosures, or charts filed or served in accordance with theseLocal Patent Rules must be dated and signed by counsel of record (or by the party ifunrepresented by counsel). Pursuant to Rules 11 and 26(g) of the Federal Rules of CivilProcedure, counsel's signature (or the signature of the unrepresented party) shallconstitute a certification that to the best of his or her knowledge, information, and belief,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.

LPR 2.4. Admissibility of Disclosures.

Except as hereinafter provided, statements, disclosures, or charts governed bythese Local Patent Rules are admissible to the extent permitted by the Federal Rules ofEvidence or Procedure. However, the statements or disclosures provided for in LPR 4.1and 4.2 are not admissible for any purpose other than in connection with motions seekingan extension or modification of the time periods within which actions contemplated bythese Local Patent Rules must be taken.

LPR 2.5. Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it shall not be alegitimate ground for objecting to an opposing party's discovery request (e.g.,interrogatory, document request, request for admission, deposition question) or decliningto provide information otherwise required to be disclosed pursuant to Fed.R.Civ.P.26(a)(1) that the discovery request or disclosure requirement is premature in light of orotherwise conflicts with, these Local Patent Rules. A party may object, however, to thefollowing categories of discovery requests (or decline to provide information in its initialdisclosures under Fed.R.Civ.P. 26(a)(1)) on the ground that they are premature in light ofthe timetable provided in the Local Patent Rules:

Requests seeking to elicit a party's claim construction position;

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

Requests seeking to elicit from an accused infringer a comparison of theasserted claims and the prior art.

Where a party properly objects to a discovery request (or declines to provideinformation in its initial disclosures under Fed.R.Civ.P. 26(a)(1)) as set forth above, thatparty shall provide the requested information on the date on which it is required toprovide the requested information to an opposing party under these Local Patent Rules,unless there exists another legitimate ground for objection.

The parties are reminded that the obligations under Fed.R.Civ.P. 26(e) tosupplement disclosure and discovery responses shall apply to all Patent InitialDisclosures and all other discovery responses associated with these Local Patent Rules.


LPR 3.1. Initial Disclosures.

Not later than ten (10) calendar days before the Initial Scheduling Conference, theparties shall exchange the initial disclosures required by Fed.R.Civ.P. 26(a)(1) ("InitialDisclosures").

(a) With the Initial Disclosures of the party asserting a claim of patentinfringement, such party shall produce or make available for inspection and copying,among other items:

(1) All Documents (e.g., contracts, purchase orders, invoices,advertisements, marketing materials, offer letters, beta site testing agreement, andthird party or joint development agreements) sufficient to evidence each discussionwith, disclosure to, or other manner of providing to a third party, or sale of or offerto sell or other manner of transfer, the claimed invention prior to

the date of application for the patent in suit. A party's production of a documentas required herein shall not constitute an admission that such document evidencesor is prior art under 35 U.S.C. § 102;

All documents evidencing the conception, reduction to practice,design, and development of each claimed invention, which were created on orbefore the date of application for the patent in suit or a priority date otherwiseidentified for the patent in suit, whichever is earlier; and

All documents evidencing communications to and from the U.S.Patent Office for each patent in suit and for each patent on which a claim forpriority is based.

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

(b) With the Initial Disclosures of the party opposing a claim of patentinfringement, such party shall produce or make available for inspection and copying,among other items:

Source code, specifications, schematics, flow charts, artwork,formulas, drawings or other documentation, including sales literature, sufficientto show the operation of any aspects or elements of each accused apparatus,product, device, process, method or other instrumentality identified in the claimspled of the party asserting patent infringement; and

A copy of each item of prior art, of which the opposing party isaware, that allegedly anticipates each asserted patent and its related claims orrenders them obvious.

LPR 3.2. Disclosure of Asserted Claims and Infringement Contentions.

Not later than thirty (30) calendar days after the Initial Scheduling Conference, aparty claiming patent infringement must serve on all parties a "Disclosure of AssertedClaims and Infringement Contentions." Separately for each opposing party, the"Disclosure of Asserted Claims and Infringement Contentions" shall contain thefollowing information:

Each claim of each patent in suit that is allegedly infringed by eachopposing party;

Separately for each asserted claim, each accused apparatus, product,device, process, method, act, or other instrumentality ("Accused Instrumentality") ofeach opposing party of which the party claiming infringement is aware. Thisidentification shall be as specific as possible. Each product, device, and apparatus mustbe identified by name, if known, or by any product, device, or apparatus which, whenused, allegedly results in the practice of the claimed method or process;

A chart identifying specifically where each element of each asserted claimis found within each Accused Instrumentality, including for each element that such partycontends is governed by 35 U.S.C. § 112(6), a description of the claimed function of thatelement and the identity of the structure(s), act(s), or material(s) in the AccusedInstrumentality that performs the claimed function;

Whether each element of each asserted claim is claimed to be literallypresent or present under the doctrine of equivalents in the Accused Instrumentality, and ifpresent under the doctrine of equivalents, the asserting party shall also explain eachfunction, way, and result that it contends are equivalent, and why it contends that anydifferences are not substantial;

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

If a party claiming patent infringement wishes to preserve the right to rely,for any purpose, on the assertion that its own apparatus, product, device, process,method, act, or other instrumentality practices the claimed invention, the party mustidentify, separately for each asserted claim, each such apparatus, product, device,process, method, act, or other instrumentality that incorporates or reflects that particularclaim.

LPR 3.3. Document Production Accompanying Disclosure.

With the "Disclosure of Asserted Claims and Infringement Contentions," theparty claiming patent infringement shall supplement its Initial Disclosures, if applicable,based upon the Initial Disclosures of the opposing party.

LPR 3.4. Non-Infringement and Invalidity Contentions.

Not later than fifteen (15) calendar days after service upon it of the "Disclosure ofAsserted Claims and Infringement Contentions," each party opposing a claim of patentinfringement, shall serve upon all parties its "Non-Infringement and InvalidityContentions." Non-Infringement Contentions shall contain a chart, responsive to thechart required by LPR 3.2(c), that states as to each identified element in each assertedclaim, whether such element is present literally or under the doctrine of equivalents ineach Accused Instrumentality, and, if not, the reason for such denial and the relevantdistinctions. Invalidity Contentions must contain the following information:

(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, countryof origin, and date of issue. Each prior art publication must be identified by its title, date ofpublication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b)shall be identified by specifying the item offered for sale or publicly used or known, the datethe offer or use took place or the information became known, and the identity of the personor entity which made the use or which made and received the offer, or the person or entitywhich made the information known or to whom it was made known. Prior art under 35U.S.C. § 102(f) shall be identified by providing

the name of the person(s) from whom and the circumstances under which the invention orany part of it was derived. Prior art under 35 U.S.C. § 102(g) shall be identified byproviding the identities of the person(s) or entities involved in and the circumstancessurrounding the making of the invention before the patent applicant(s);

Whether each item of prior art allegedly anticipates each asserted claim orrenders it obvious. If a combination of items of prior art allegedly makes a claimobvious, each such combination, and the motivation to combine such items, must beidentified;

A chart identifying where specifically in each alleged item of prior arteach element of each asserted claim is found, including for each element that such partycontends is governed by 35 U.S.C. § 112(6), a description of the claimed function of thatelement and the identity of the structure(s), act(s), or material(s) in each item of prior artthat performs the claimed function; and

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

LPR 3.5. Document Production Accompanying Invalidity Contentions.

With the "Non-Infringement and Invalidity Contentions," the party opposing aclaim of patent infringement shall supplement its Initial Disclosures and, in particular,must produce or make available for inspection and copying:

Any additional documentation showing the operation of any aspects orelements of an Accused Instrumentality identified by the patent claimant in its LPR3.2(c) chart; and

A copy of any additional items of prior art identified pursuant to LPR3.4(a) which does not appear in the file history of the patent(s) at issue.

LPR 3.6. Disclosure Requirement in Patent Cases Initiated by Declaratory Judgment.

Invalidity Contentions If No Claim of Infringement. In all cases inwhich a party files a complaint or other pleading seeking a declaratory judgment that apatent is not infringed, is invalid, or is unenforceable, LPR 3.2 and 3.3 shall not applyunless and until a claim for patent infringement is made by a party. If the defendant doesnot assert a claim for patent infringement in its answer to the complaint, no later thanthirty (30) calendar days after the Initial Scheduling Conference, the party seeking adeclaratory judgment must serve upon each opposing party its Invalidity Contentions thatconform to LPR 3.4 and produce or make available for inspection and copying thedocumentation described in LPR 3.5.

Application of Rules When No Specified Triggering Event. If thefilings or actions in a case do not trigger the application of these Local Patent Rules

under 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 Local PatentRules to the case.

(c) Inapplicability of Rule. This LPR 3.6 shall not apply to cases in which arequest for a declaratory judgment that a patent is not infringed, is invalid, or isunenforceable is filed in response to a complaint for infringement of the same patent.

LPR 3.7. Amendment to Contentions.

Amendments or modifications of the Infringement Contentions or the Non-Infringement and Invalidity Contentions are permissible, subject to other applicable rulesof procedure and disclosure requirements, if made in a timely fashion and asserted ingood faith and without purpose of delay. The Court's ruling on claim construction maysupport a timely amendment or modification of the Infringement Contentions or the Non-Infringement and Invalidity Contentions.

4. CLAIM CONSTRUCTION PROCEEDINGS LPR 4.1.

Exchange of Proposed Claim Terms and Phrases for Construction.

Not later than ten (10) calendar days after: (i) service of the Non-Infringementand Invalidity Contentions pursuant to LPR 3.4; or (ii) an agreement of the parties toexpedite claim construction following the Initial Scheduling Conference pursuant to LPR2.1 (a), each party shall simultaneously exchange a list of claim terms and phrases whichthat party contends should be construed by the Court, and identify any claim elementwhich that party contends should be governed by 35 U.S.C. § 112(6).

LPR 4.2. Preparation and Filing of Joint Disputed Claim Terms Chart.

Not later than ten (10) calendar days after the exchange set forth in LPR 4.1, theparties shall meet and confer to identify claim terms and phrases that are in dispute, andclaim terms and phrases that are not in dispute, and shall prepare and file a Joint DisputedClaim Terms Chart listing claim terms and phrases and corresponding intrinsic evidencefor each disputed claim term and phrase, asserted by each party. The Joint DisputedClaim Terms Chart shall be in the format shown in Appendix "B". Each party shall alsofile with the Joint Disputed Claim Terms Chart an appendix containing a copy of eachexhibit of intrinsic evidence cited by the party in the Joint Disputed Claim Terms Chart.

LPR 4.3. Claim Construction Briefing and Extrinsic Evidence.

Not later than thirty (3 0) calendar days after filing of the Joint DisputedClaim Terms Chart pursuant to LPR 4.2, the Plaintiff, unless otherwise stipulated by theparties, shall serve and file an Opening Claim Construction Brief including a proposedconstruction of each claim term and phrase which the parties collectively have identifiedas being in dispute. Such Opening Claim Construction Brief shall also, for each elementwhich the party contends is governed by 35 U.S.C. § 112(6), describe the claimedfunction of that element and identify the structure(s), act(s), or material(s) correspondingto that element. Such Opening Claim Construction Brief shall further include a statementof the anticipated length of time necessary for the party to present its case at the claimconstruction hearing. For purposes of this rule, if there is no claim of patent infringementpresent in the complaint as originally filed, then the party first alleging infringement ofthe subject patent shall serve and file the Opening Claim Construction Brief.

At the same time the party serves its Opening Claim Construction Brief,that party shall serve and file an identification of extrinsic evidence, including testimonyof lay and expert witnesses the party contends supports its claim construction. The partyshall identify each such item of extrinsic evidence by production number or produce acopy of any such item not previously produced. With respect to any such witness, lay orexpert, the party shall also serve and file an affidavit signed by the witness that sets forththe substance of that witness' proposed testimony sufficient for the opposing party toconduct meaningful examination of the witness(es).

Not later than twenty (20) calendar days after service of the OpeningClaim Construction Brief, the opposing party shall serve and file a Response to OpeningClaim Construction Brief including the party's proposed construction of each claim termand phrase which the parties collectively have identified as being in dispute. SuchResponse shall also, for each element which the opposing party contends is governed by35 U.S.C. § 112(6), describe the claimed function of that element and identify thestructure(s), act(s), or material(s) corresponding to that element. Such Response shallfurther include a statement of the anticipated length of time necessary for the party topresent its case at the Claim Construction Hearing and a concise statement not to exceedfive (5) pages as to whether the party objects to the opening party's offer of extrinsicevidence.

At the same time the opposing party serves its Response, that party shallserve and file an identification of extrinsic evidence, including testimony of lay andexpert witnesses the party contends supports its claim construction. The party shallidentify each such item of extrinsic evidence by production number or produce a copy ofany such item not previously produced. With respect to any such witness, lay or expert,the party shall also serve and file an affidavit signed by the witness that sets forth thesubstance of that witness' proposed testimony sufficient for the opposing party toconduct meaningful examination of the witness(es).

Not later than fifteen (15) calendar days after service of the Response, theopening party may serve and file a Reply directly rebutting the opposing party's

Response. Such Reply shall further include a concise statement not to exceed five (5) pagesas to whether the party objects to the opposing party's offer of extrinsic evidence.

(f) Prior to the Claim Construction Hearing, the Court may issue an order statingwhether it will receive extrinsic evidence and, if so, the particular evidence that it willexclude and that it will receive, and any other matter the Court deems appropriateconcerning the conduct of the hearing.

LPR 4.4. Claim Construction Hearing.

Subject to the convenience of the Court's calendar, fifteen (15) calendar daysfollowing submission of the Reply specified in LPR 4.3(e), the Court shall conduct aClaim Construction Hearing.

5. EXPERT WITNESSES

LPR 5.1. Disclosure of Experts and Expert Reports.

For issues other than claim construction to which expert testimony shallbe directed, expert witness disclosures and depositions shall be governed by this Rule.

No later than thirty (30) calendar days after the court's ruling on claimconstruction each party shall make its initial expert witness disclosures required by Rule26 on the issues on which each bears the burden of proof.

No later than thirty (30) calendar days after the first round of disclosures,each party shall make its initial expert witness disclosures required by Rule 26 on theissues on which the opposing party bears the burden of proof.

Unless otherwise ordered by the Court, no later than ten (10) calendardays after the second round of disclosures, each party shall make any rebuttal expertwitness disclosures permitted by Rule 26.

LPR 5.2. Depositions of Experts.

Depositions of expert witnesses disclosed under this Rule, if any, shall commencewithin seven (7) calendar days after rebuttal reports are served and shall be completedwithin thirty (30) calendar days after commencement of the deposition period.

APPENDIX A

IN THE UNITED STATES DISTRICT COURT FORTHE WESTERN DISTRICT OF PENNSYLVANIA

Plaintiff, v. Defendant. )) Civil Action No.

PROTECTIVE ORDER

Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the followingProtective Order has been entered by Court.

Proceedings and Information Governed.

1. This Order and any amendments or modifications hereto ("ProtectiveOrder") shall govern any document, information or other thing furnished by any party, toany other party,and includes non-parties who receive a subpoena in connection with thisaction. The information protected includes, but is not limited to, answers tointerrogatories, answers to requests for admission, responses to requests for production ofdocuments, deposition transcripts and videotapes, deposition exhibits, and other writingsor things produced, given or filed in this action that are designated by a party as"Confidential Information" or "Confidential Attorney Eyes Only Information" inaccordance with the terms of this Order, as well as to any copies, excerpts, abstracts,analyses, summaries, descriptions, or other forms of recorded information containing,reflecting, or disclosing such information.

Designation and Maintenance of Information.

2. For purposes of this Protective Order, (a) the "Confidential Information"designation shall mean that the document is comprised of trade secrets or commercialinformation which is not publicly known and is of technical or commercial advantage toits possessor, in accordance with Fed.R.Civ.P. 26(c)(7), or other information required bylaw or agreement to be kept confidential and (b) the "Confidential Attorney Eyes Only"designation shall mean that the document is comprised of information that the producingparty deems especially sensitive, which may include, but is not limited to, confidentialresearch and development, financial, technical, marketing, any other sensitive tradesecret information, or information capable of being utilized for the preparation orprosecution of a patent application dealing with such subject matter. ConfidentialInformation and Confidential Attorney Eyes Only Information does not include, and thisProtective Order shall not apply to, information that is already in the knowledge orpossession of the party to whom disclosure is made unless that party is already bound byagreement not to disclose such information, or information that has been disclosed to thepublic or third persons in a manner making such information no longer confidential.

3. Documents and things produced during the course of this litigationwithin the scope of paragraph 2 (a) above, may be designated by the producing party ascontaining Confidential Information by placing on each page and each thing a legendsubstantially as follows:

CONFIDENTIAL INFORMATIONSUBJECT TO PROTECTIVE ORDER

(a) Documents and things produced during the course of this litigationwithin the scope of paragraph 2(b) above may be designated by the producing party ascontaining Confidential Attorney Eyes Only Information by placing on each page andeach thing a legend substantially as follows:

CONFIDENTIAL ATTORNEY EYES ONLY INFORMATIONSUBJECT TO PROTECTIVE ORDER

A party may designate information disclosed at a deposition asConfidential Information or Confidential Attorney Eyes Only Information by requestingthe reporter to so designate the transcript or any portion thereof at the time of thedeposition. If no such designation is made at the time of the deposition, any party shallhave fourteen (14) calendar days after the date of the deposition to designate, in writingto the other parties and to the court reporter, whether the transcript is to be designated asConfidential Information or Confidential Attorneys Eyes Only Information. If no suchdesignation is made at the deposition or within such fourteen (14) calendar day period(during which period, the transcript shall be treated as Confidential Attorneys Eyes OnlyInformation, unless the disclosing party consents to less confidential treatment of theinformation), the entire deposition will be considered devoid of Confidential Informationor Confidential Attorneys Eyes Only Information. Each party and the court reporter shallattach a copy of any final and timely written designation notice to the transcript and eachcopy thereof in its possession, custody or control, and the portions designated in suchnotice shall thereafter be treated in accordance with this Protective Order.

It is the responsibility of counsel for each party to maintainmaterials containing Confidential Information or Confidential Attorney Eyes OnlyInformation in a secure manner and appropriately identified so as to allow access to suchinformation only to such persons and under such terms as is permitted under thisProtective Order.

Inadvertent Failure to Designate.

4. The inadvertent failure to designate or withhold any information asconfidential or privileged will not be deemed to waive a later claim as to its confidentialor privileged nature, or to stop the producing party from designating such information asconfidential at a later date in writing and with particularity. The information shall betreated by the receiving party as confidential from the time the receiving party is notifiedin writing of the change in the designation.

Challenge to Designations.

5. A receiving party may challenge a producing party's designation at anytime. Any receiving party disagreeing with a designation may request in writing that theproducing party change the designation. The producing party shall then have ten (10)business days after receipt of a challenge notice to advise the receiving party whether or

not it will change the designation. If the parties are unable to reach agreement after theexpiration of this ten (10) business day timeframe, and after the conference required underLocal Rule 37.1, the receiving party may at any time thereafter seek a Court Order to alterthe confidential status of the designated information. Until any dispute under thisparagraph is ruled upon by the Court, the designation shall remain in full force and effectand the information shall continue to be accorded the confidential treatment required bythis Protective Order.

Disclosure and Use of Confidential Information.

Information designated as Confidential Information or ConfidentialAttorney Eyes Only Information may only be used for purposes of preparation, trial andappeal of this action. Confidential Information or Confidential Attorney Eyes OnlyInformation may not be used under any circumstances for prosecuting any patentapplication, for patent licensing or for any other purpose.

Subject to paragraph 9 below, Confidential Information may be disclosedby the receiving party only to the following individuals provided that such individuals areinformed of the terms of this Protective Order: (a) two (2) employees of the receivingparty who are required in good faith to provide assistance in the conduct of this litigation,including any settlement discussions, and who are identified as such in writing to counselfor the designating party in advance of the disclosure; (b) two (2) in-house counsel whoare identified by the receiving party; (c) outside counsel for the receiving party; (d)supporting personnel employed by (b) and (c), such as paralegals, legal secretaries, dataentry clerks, legal clerks and private photocopying services; (e) experts or consultants;and (f) any persons requested by counsel to furnish services such as document coding,image scanning, mock trial, jury profiling, translation services, court reporting services,demonstrative exhibit preparation, or the creation of any computer database fromdocuments.

Subject to paragraph 9 below, Confidential Attorney Eyes OnlyInformation may be disclosed by the receiving party only to the following individualsprovided that such individuals are informed of the terms of this Protective Order: (a) two(2) in-house counsel who are identified by the receiving party; (b) outside counsel for thereceiving party; (c) supporting personnel employed by (a) and (b), such as paralegals,legal secretaries, data entry clerks, legal clerks, private photocopying services; (d)experts or consultants; and (e) those individuals designated in paragraph 11(c).

Further, prior to disclosing Confidential Information or ConfidentialAttorney Eyes Only Information to a receiving party's proposed expert, consultant oremployees, the receiving party shall provide to the producing party a signedConfidentiality Agreement in the form attached as Exhibit A, the resume or curriculumvitae of the proposed expert or consultant, the expert or consultant's business affiliation,and any current and past consulting relationships in the industry. The producing partyshall thereafter have ten (10) business days from receipt of the ConfidentialityAgreement to object to any proposed individual. Such objection must be made for goodcause and in writing, stating with particularity the reasons for objection. Failure to object

within ten (10) business days shall constitute approval. If the parties are unable to resolveany objection, the receiving party may apply to the Court to resolve the matter. There shallbe no disclosure to any proposed individual during the ten (10) business day objectionperiod, unless that period is waived by the producing party, or if any objection is made,until the parties have resolved the objection, or the Court has ruled upon any resultantmotion.

Counsel shall be responsible for the adherence by third-party vendors tothe terms and conditions of this Protective Order. Counsel may fulfill this obligation byobtaining a signed Confidentiality Agreement in the form attached as Exhibit B.

Confidential Information or Confidential Attorney Eyes Only Informationmay be disclosed to a person, not already allowed access to such information under thisProtective Order, if:

the information was previously received or authored by the personor was authored or received by a director, officer, employee or agent of the company forwhich the person is testifying as a Rule 30(b)(6) designee;

the designating party is the person or is a party for whom theperson is a director, officer, employee, consultant or agent; or

counsel for the party designating the material agrees that thematerial may be disclosed to the person. In the event of disclosure under this paragraph,only the reporter, the person, his or her counsel, the judge and persons to whomdisclosure may be made, and who are bound by the Protective Order, may be presentduring the disclosure or discussion of Confidential Information. Disclosure of materialpursuant to this paragraph shall not constitute a waiver of the confidential status of thematerial so disclosed.

Non-Party Information.

12. The existence of this Protective Order shall be disclosed to any personproducing documents, tangible things or testimony in this action who may reasonably beexpected to desire confidential treatment for such documents, tangible things ortestimony. Any such person may designate documents, tangible things or testimonyconfidential pursuant to this Protective Order.

Filing Documents With the Court.

13. In the event that any party wishes to submit Confidential Information tothe Court, such a submission shall be filed only in a sealed envelope bearing the captionof this action and a notice in the following form:

CONFIDENTIAL INFORMATION[caption]

This envelope, which is being filed under seal,contains documents that are subject to a Protective

Order governing the use of confidential discovery material.

No Prejudice.

14. Producing or receiving confidential information, or otherwise complyingwith the terms of this Protective Order, shall not (a) operate as an admission by any partythat any particular Confidential Information contains or reflects trade secrets or any othertype of confidential or proprietary information; (b) prejudice the rights of a party toobject to the production of information or material that the party does not consider to bewithin the scope of discovery; (c) prejudice the rights of a party to seek a determinationby the Court that particular materials be produced; (d) prejudice the rights of a party toapply to the Court for further protective orders; or (e) prevent the parties from agreeing inwriting to alter or waive the provisions or protections provided for herein with respect toany particular information or material.

Conclusion of Litigation.

15. Within sixty (60) calendar days after final judgment in this action,including the exhaustion of all appeals, or within sixty (60) calendar days after dismissalpursuant to a settlement agreement, each party or other person subject to the terms of thisProtective Order shall be under an obligation to destroy or return to the producing partyall materials and documents containing Confidential Information or ConfidentialAttorney Eyes Only Information, and to certify to the producing party such destruction orreturn. However, outside counsel for any party shall be entitled to retain all court papers,trial transcripts, exhibits and attorney work provided that any such materials aremaintained and protected in accordance with the terms of this Protective Order.

Other Proceedings.

16. By entering this Order and limiting the disclosure of information in thiscase, the Court does not intend to preclude another court from finding that informationmay be relevant and subject to disclosure in another case. Any person or parties subjectto this Protective Order that may be subject to a motion to disclose another party'sinformation designated Confidential pursuant to this Protective Order, shall promptlynotify that party of the motion so that it may have an opportunity to appear and be heardon whether that information should be disclosed.

Remedies.

17. It is Ordered by the Court that this Protective Order will be enforced bythe sanctions set forth in Rule 37(b) of the Federal Rules of Civil Procedure and suchother sanctions as may be available to the Court, including the power to hold parties orother violators of this Protective Order in contempt. All other remedies available to anyperson(s) injured by a violation of this Protective Order are fully reserved.

18. Any party may petition the Court for good cause shown, in the event suchparty desires relief from a term or condition of this Order.

Exhibit A

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA


CONFIDENTIALITY AGREEMENT FOR EXPERT,CONSULTANT OR EMPLOYEES OF ANY PARTY

I hereby affirm that:

Information, including documents and things, designated as "ConfidentialInformation," or "Confidential Attorney Eyes Only Information," as defined in theProtective Order entered in the above-captioned action (hereinafter "Protective Order"),is being provided to me pursuant to the terms and restrictions of the Protective Order.

I have been given a copy of and have read the Protective Order.

I am familiar with the terms of the Protective Order and I agree to complywith and to be bound by such terms.

I submit to the jurisdiction of this Court for enforcement of the ProtectiveOrder.

I agree not to use any Confidential Information or Confidential AttorneyEyes Only Information disclosed to me pursuant to the Protective Order except forpurposes of the above-captioned litigation and not to disclose any such information topersons other than those specifically authorized by said Protective Order, without theexpress written consent of the party who designated such information as confidential orby order of this Court. I also agree to notify any stenographic, clerical or technicalpersonnel who are required to assist me of the terms of this Protective Order and of itsbinding effect on them and me.

I understand that I am to retain all documents or materials designated as orcontaining Confidential Information or Confidential Attorney Eyes Only Information in asecure manner, and that all such documents and materials are to remain in my personalcustody until the completion of my assigned duties in this matter, whereupon all suchdocuments and materials, including all copies thereof, and any writings prepared by mecontaining any Confidential Information or Confidential Attorney Eyes Only Informationare to be returned to counsel who provided me with such documents and materials.

Exhibit B

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

Plaintiff, v. Defendant. ) ) Civil Action No.

CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS CONFIDENTIALITYAGREEMENT FOR THIRD-PARTY VENDORS


Information, including documents and things, designated as "ConfidentialInformation," or "Confidential Attorney Eyes Only Information," as defined in theProtective Order entered in the above-captioned action (hereinafter "Protective Order"),is being provided to me pursuant to the terms and restrictions of the Protective Order.


I am familiar with the terms of the Protective Order and I agree to complywith and to be bound by such terms.

I submit to the jurisdiction of this Court for enforcement of the ProtectiveOrder.

I agree not to use any Confidential Information or Confidential AttorneyEyes Only Information disclosed to me pursuant to the Protective Order except forpurposes of the above-captioned litigation and not to disclose any such information topersons other than those specifically authorized by said Protective Order, without theexpress written consent of the party who designated such information as confidential orby order of this Court.

APPENDIX B

JOINT DISPUTED CLAIM TERMS CHART** Plaintiff v. Defendant, Civ. Action No. 00-000-XXX

Disputed ClaimTerm

Plaintiff Proposed Construction Plaintiff Citation To IntrinsicEvidence

Defendant ProposedConstruction

Defendant Citation ToIntrinsic Evidence

1. "Term 1"

2. "Term 2"

3. "Term 3"

4. "Term 4"

* This chart shall not contain legal argument.

APPENDIX C

IN THE UNITED STATES DISTRICT COURT FOR THEWESTERN DISTRICT OF PENNSYLVANIA


MODEL SCHEDULING ORDER FOR USE IN PATENT CASES

AND NOW, this ____________day of_____________ 20_______________,

IT IS ORDERED that this action is placed under the Local Patent Rules of this Court for pretrial proceedings and all provisions of these Rules will be strictly enforced.

IT IS FURTHER ORDERED that counsel shall confer with their clients prior toall scheduling, status, or pretrial conferences to obtain authority to participate insettlement negotiations which may be conducted or ordered by the Court.

IT IS FURTHER ORDERED that compliance with provisions of Local Rule 16 and the Local Patent Rules shall be completed as follows:

(1) The parties shall move to amend the pleadings or add new partiesby __________________;

(2) The party claiming patent infringement must serve on all parties aDisclosure of Asserted Claims and Infringement Contentions by__________________; [30 calendar days after the Initial SchedulingConference; LPR 3.2]

(3) The party claiming non-infringement and invalidity must serve onall parties a Disclosure of Non-Infringement and Invalidity Contentions by ___________ ; [15 calendar days after service of Disclosure of Asserted Claims and Infringement Contentions; LPR 3.4]

(4) Each party will simultaneously exchange Proposed Claim Termsand Phrases for Construction by ___________________ ; [10 calendar daysafter service of the Non-Infringement and Invalidity Contention; LPR 4.1]

(5) The parties shall meet and confer by ___________ to identify claim terms andphrasesthat are in dispute, and claim terms and phrases that are not in dispute andprepare and file a Joint Disputed Claim Terms Chart. Each party shall also filewith the Joint Disputed Claim Terms Chart an appendix containing a copy ofeach item of intrinsic evidence cited by the party in the Joint Disputed ClaimTerms Chart; [Not later than ten (10) calendar days after the exchange ofproposed claim terms and phrases; LPR 4.2]

(6) Plaintiff shall file and serve an Opening Claim Construction Briefand an identification of extrinsic evidence by ; [30 calendardays after filing of the joint disputed claim terms chart; LPR 4.3 (a) and (b)]

(7) The Opposing Party shall file and serve a response to the OpeningClaims Construction Brief, an identification of extrinsic evidenceand any objections to extrinsic evidence by _________; [20 calendardays after service of the opening claim construction brief; LPR 4.3 (c) and (d)]

(8) The opening party may serve and file a Reply directly rebutting theopposing party's Response, and any objections to extrinsicevidence by __________; [15 calendar days after opposing party'sresponse is served; LPR 4.3(e)]

(9) The Court will conduct a hearing on the issue of ClaimConstruction on ___________________________, [15 calendar days after submission of the reply; LPR 4]

(10) The parties shall complete fact discovery by ___________________,and all interrogatories, depositions, requests for admissions, and requests forproduction shall be served within sufficient time to allow responses to becompleted prior to the close of discovery;

(11) Each party shall make its initial expert witness disclosures, asrequired under Rule 26, on the issues on which each bears theburden of proof by ___________________________, [30 days after court's ruling on claim construction; LPR 5.1(b)]

(12) Each party shall make its initial expert witness disclosures, asrequired under Rule 26, on the issues on which the opposing party bearsthe burden of proof by _______________________ ; [30 days after the first round of expert disclosures; LPR 5.1(c)]

(13) Rebuttal expert witness disclosures are to be made by _________; [10 calendar days after second round of expert disclosures; LPR 5.1(d)]

(14) Expert Depositions, if any, shall begin by________________;[within 7 calendar days after service of the rebuttal expert reports] and becompleted by ________________; [30 days after commencement ofdeposition period; LPR5.2]

(15) Motions for summary judgment with evidentiary material andaccompanying brief, if appropriate, shall be filed by __________________________, and responses to such motions shall be filedwithin _____________ days thereafter. Reply and surreply briefs shall not befiled unless approved/requested by the Court;

(16) Plaintiff’s pretrial narrative statement shall comply with Rule16.1.4. A, and be filed by ___________________;

(17) Defendant's pretrial narrative statement shall comply with Rule16.1.4.B, and be filed by ____________________;

(18) The parties shall not amend or supplement their pretrial narrativestatements without leave of Court;

(19) All parties shall file an indication whether or not they are willingto proceed to trial in front of a Magistrate Judge by ;

(20) The Court shall conduct a pretrial conference on, at __________ (time) Room ______

U.S. Post Office & Courthouse, Seventh Avenue and Grant Street, Pittsburgh,Pennsylvania, and all trial counsel must attend; and

(21) The trial shall commence on__________________________________ ,20___________, at ________ (time), Courtroom No. _______ .

United States District Judge

cc: All Counsel of Record.

- Current as of April 21, 2011

APPENDIX MPATENT RULES

1. SCOPE OF RULES

1-1. Title.

These are the Rules of Practice for Patent Cases before the Eastern District of Texas. They should

be cited as “P. R. __.”


These rules apply to all civil actions filed in or transferred to this Court which allege infringement

of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a

declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. The Court

may accelerate, extend, eliminate, or modify the obligations or deadlines set forth in these Patent

Rules based on the circumstances of any particular case, including, without limitation, the

complexity of the case or the number of patents, claims, products, or parties involved. If any motion

filed prior to the Claim Construction Hearing provided for in P. R. 4-6 raises claim construction

issues, the Court may, for good cause shown, defer the motion until after completion of the

disclosures, filings, or ruling following the Claim Construction Hearing. The Civil Local Rules of

this Court shall also apply to these actions, except to the extent that they are inconsistent with these

Patent Rules. The deadlines set forth in these rules may be modified by Docket Control Order issued

in specific cases.

1-3. Effective Date.

These Patent Rules shall take effect on February 22, 2005 and shall apply to any case filed thereafter

and to any pending case in which more than 9 days remain before the Initial Disclosure of Asserted

Claims is made. The parties to any other pending civil action shall meet and confer promptly after

February 22, 2005, for the purpose of determining whether any provision in these Patent Rules

should be made applicable to that case. No later than 7 days after the parties meet and confer, the

parties shall file a stipulation setting forth a proposed order that relates to the application of these

Patent Rules. Unless and until an order is entered applying these Patent Local Rules to any pending

case, the Rules previously applicable to pending patent cases shall govern.



(a) Initial Case Management Conference. Prior to the Initial Case Management Conference with

the Court, when the parties confer with each other pursuant to Fed.R.Civ.P. 26(f), in addition to the

matters covered by Fed.R.Civ.P. 26, the parties must discuss and address in the Case Management

Statement filed pursuant to Fed.R.Civ.P. 26(f), the following topics:

(1) Proposed modification of the deadlines provided for in the Patent Rules, and the effect

of any such modification on the date and time of the Claim Construction Hearing, if any;

(2) Whether the Court will hear live testimony at the Claim Construction Hearing;


including depositions of witnesses, including expert witnesses;

(4) The order of presentation at the Claim Construction Hearing; and

(5) The scheduling of a Claim Construction Prehearing Conference to be held after the Joint

Claim Construction and Prehearing Statement provided for in P. R. 4-3 has been filed.

(6) Whether the court should authorize the filing under seal of any documents containing

confidential information.

2

(b) Further Case Management Conferences. To the extent that some or all of the matters provided

for in P. R. 2-1 (a)(1)-(5) are not resolved or decided at the Initial Case Management Conference,

the parties shall propose dates for further Case Management Conferences at which such matters shall

be decided.

(c) Electronic Filings. All patents attached as exhibits to any filing submitted electronically shall

be in searchable PDF format. Any other documents attached as exhibits to any filing submitted

electronically should be in searchable PDF format whenever possible.


If any document or information produced under these Patent Local Rules is deemed confidential by

the producing party and if the Court has not entered a protective order, until a protective order is

issued by the Court, the document shall be marked “confidential” or with some other confidential

designation (such as “Confidential – Outside Attorneys Eyes Only”) by the disclosing party and

disclosure of the confidential document or information shall be limited to each party’s outside

attorney(s) of record and the employees of such outside attorney(s).

If a party is not represented by an outside attorney, disclosure of the confidential document or

information shall be limited to one designated “in house” attorney, whose identity and job functions

shall be disclosed to the producing party 5 court days prior to any such disclosure, in order to permit

any motion for protective order or other relief regarding such disclosure. The person(s) to whom

disclosure of a confidential document or information is made under this local rule shall keep it

confidential and use it only for purposes of litigating the case.

2-3. Certification of Initial Disclosures.

All statements, disclosures, or charts filed or served in accordance with these Patent Rules must be

3

dated and signed by counsel of record. Counsel’s signature shall constitute a certification that to the

best of his or her knowledge, information, and belief, formed after an inquiry that is reasonable

under the circumstances, the information contained in the statement, disclosure, or chart is complete

and correct at the time it is made.

2-4. Admissibility of Disclosures.

Statements, disclosures, or charts governed by these Patent Rules are admissible to the extent

permitted by the Federal Rules of Evidence or Procedure. However, the statements or disclosures

provided for in P. R. 4-1 and 4-2 are not admissible for any purpose other than in connection with

motions seeking an extension or modification of the time periods within which actions contemplated

by these Patent Rules must be taken.


Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate ground for

objecting to an opposing party’s discovery request (e.g., interrogatory, document request, request

for admission, deposition question) or declining to provide information otherwise required to be

disclosed pursuant to Fed.R.Civ.P. 26(a)(1) that the discovery request or disclosure requirement is

premature in light of, or otherwise conflicts with, these Patent Rules. A party may object, however,

to responding to the following categories of discovery requests (or decline to provide information

in its initial disclosures under Fed.R.Civ.P. 26(a)(1)) on the ground that they are premature in light

of the timetable provided in the Patent Rules:


(b) Requests seeking to elicit from the patent claimant a comparison of the asserted claims and the

accused apparatus, product, device, process, method, act, or other instrumentality;

4

(c) Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the

prior art; and

(d) Requests seeking to elicit from an accused infringer the identification of any opinions of counsel,

and related documents, that it intends to rely upon as a defense to an allegation of willful

infringement.

Where a party properly objects to a discovery request (or declines to provide information in its initial

disclosures under Fed.R.Civ.P. 26(a)(1)) as set forth above, that party shall provide the requested

information on the date on which it is required to provide the requested information to an opposing

party under these Patent Rules, unless there exists another legitimate ground for objection.


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

Not later than 10 days before the Initial Case Management Conference with the Court, a party

claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and

Infringement Contentions.” Separately for each opposing party, the “Disclosure of Asserted Claims

and Infringement Contentions” shall contain the following information:

(a) Each claim of each patent in suit that is allegedly infringed by each opposing party;

(b) Separately for each asserted 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, allegedly results in

the practice of the claimed method or process;

5

(c) A chart identifying specifically where each element of each asserted claim is found within each

Accused Instrumentality, including for each element that such party contends is governed by 35

U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality

that performs the claimed function;

(d) Whether each element of each asserted claim is claimed to be literally present or present under

the doctrine of equivalents in the Accused Instrumentality;

(e) For any patent that claims priority to an earlier application, the priority date to which each

asserted claim allegedly is entitled; and

(f) If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on

the assertion that its own apparatus, product, device, process, method, act, or other instrumentality

practices the claimed invention, the party must identify, separately for each asserted claim, each such

apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects

that particular claim.

3-2. Document Production Accompanying Disclosure.

With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming patent

infringement must produce to each opposing party or make available for inspection and copying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer

letters, beta site testing agreements, and third party or joint development agreements) sufficient to

evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale

of or offer to sell, the claimed invention prior to the date of application for the patent in suit. A

party’s production of a document as required herein shall not constitute an admission that such

document evidences or is prior art under 35 U.S.C. § 102;

6

(b) All documents evidencing the conception, reduction to practice, design, and development of each

claimed invention, which were created on or before the date of application for the patent in suit or

the priority date identified pursuant to P. R. 3-1(e), whichever is earlier; and

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

The producing party shall separately identify by production number which documents correspond

to each category.

3-3. Invalidity Contentions.

Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Infringement

Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its

“Invalidity Contentions” which must contain the following information:

(a) The identity of each item of prior art that allegedly anticipates each asserted 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. Prior art under 35 U.S.C. § 102(b) shall be identified by specifying the item

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

became known, and the identity 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

made known. Prior art under 35 U.S.C. § 102(f) shall be identified by providing the name of the

person(s) from whom and the circumstances under which the invention or any part of it was derived.

Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities of the person(s) or

entities involved in and the circumstances surrounding the making of the invention before the patent

applicant(s);

(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a

7

combination of items of prior art makes a claim obvious, each such combination, and the motivation

to combine such items, must be identified;

(c) A chart identifying where specifically in each alleged item of prior art each element of each

asserted claim is found, including for each element that such party contends is governed by 35

U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that

performs the claimed function; and

(d) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or enablement or

written description under 35 U.S.C. § 112(1) of any of the asserted claims.

3-4. Document Production Accompanying Invalidity Contentions.

With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce

or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation

sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified

by the patent claimant in its P. R. 3-1(c) chart; and

(b) A copy of each item of prior art identified pursuant to P. R. 3-3(a) which does not appear in the

file history of the patent(s) at issue. To the extent any such item is not in English, an English

translation of the portion(s) relied upon must be produced.


(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files a

complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid,

or is unenforceable, P. R. 3-1 and 3-2 shall not apply unless and until a claim for patent infringement

8

is made by a party. If the defendant does not assert a claim for patent infringement in its answer to

the complaint, no later than 10 days after the defendant serves its answer, or 10 days after the Initial

Case Management Conference, whichever is later, the party seeking a declaratory judgment must

serve upon each opposing party its Invalidity Contentions that conform to P. R. 3-3 and produce or

make available for inspection and copying the documents described in P. R. 3-4. The parties shall

meet and confer within 10 days of the service of the Invalidity Contentions for the purpose of

determining the date on which the plaintiff will file its Final Invalidity Contentions which shall be

no later than 50 days after service by the Court of its Claim Construction Ruling.

(b) Applications of Rules When No Specified Triggering Event. If the filings or actions in a case

do not trigger the application of these Patent Rules under the terms set forth herein, the parties shall,

as soon as such circumstances become known, meet and confer for the purpose of agreeing on the

application of these Patent Rules to the case.

(c) Inapplicability of Rule. This P. R. 3-5 shall not apply to cases in which a request for a

declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in response

to a complaint for infringement of the same patent.

9

3-6. Amending Contentions.

(a) Leave not required. Each party’s “Infringement Contentions” and “Invalidity Contentions”

shall be deemed to be that party’s final contentions, except as set forth below.

(1) If a party claiming patent infringement believes in good faith that the Court’s Claim

Construction Ruling so requires, not later than 30 days after service by the Court of its Claim

Construction Ruling, that party may serve “Amended Infringement Contentions” without

leave of court that amend its “Infringement Contentions” with respect to the information

required by Patent R. 3-1(c) and (d).

(2) Not later than 50 days after service by the Court of its Claim Construction Ruling, each

party opposing a claim of patent infringement may serve “Amended Invalidity Contentions”

without leave of court that amend its “Invalidity Contentions” with respect to the information

required by P. R. 3-3 if:

(A) a party claiming patent infringement has served “Infringement Contentions”

pursuant to P. R. 3-6(a), or

(B) the party opposing a claim of patent infringement believes in good faith that the

Court’s Claim Construction Ruling so requires.

(b) Leave required. Amendment or supplementation any Infringement Contentions or Invalidity

Contentions, other than as expressly permitted in P. R. 3-6(a), may be made only by order of the

Court, which shall be entered only upon a showing of good cause.

3-7 Opinion of Counsel Defenses

By the date set forth in the Docket Control Order, each party opposing a claim of patent

10

infringement that will rely on an opinion of counsel as part of a defense shall:

(a) Produce or make available for inspection and copying the opinion(s) and any other documents

relating to the opinion(s) as to which that party agrees the attorney-client or work product protection

has been waived; and

(b) Serve a privilege log identifying any other documents, except those authored by counsel acting

solely as trial counsel, relating to the subject matter of the opinion(s) which the party is withholding

on the grounds of attorney-client privilege or work product protection.

A party opposing a claim of patent infringement who does not comply with the requirements of this

P. R. 3-7 shall not be permitted to rely on an opinion of counsel as part of a defense absent a

stipulation of all parties or by order of the Court, which shall be entered only upon a showing of

good cause.

3-8. Disclosure Requirements for Patent Cases Arising Under 21 U.S.C. § 355 (Hatch-

Waxman Act).

The following provision applies to all patents subject to a Paragraph IV certification in cases arising

under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). This provision takes

precedence over any conflicting provisions in P.R. 3-1 to 3-5 for all cases arising under 21 U.S.C.

§ 355.

(a) At or before the Initial Case Management Conference, the Defendant(s) shall produce to

Plaintiff(s) the entire Abbreviated New Drug Application or New Drug Application that is the basis

of the case in question.

(b) Not more than 14 days after the Initial Case Management Conference, the Defendant(s) shall

provide to Plaintiff(s) the written basis for their “Invalidity Contentions” for any patents referred

11

to in Defendant(s) Paragraph IV Certification. This written basis shall contain all disclosures

required by P.R. 3-3 and shall be accompanied by the production of documents required by P.R. 3-4.

(c) Not more than 14 days after the Initial Case Management Conference, the Defendant(s) shall

provide to Plaintiff(s) the written basis for any defense of non-infringement for any patent referred

to in Defendant(s) Paragraph IV Certification. This written basis shall include a claim chart

identifying each claim at issue in the case and each limitation of each claim at issue. The claim chart

shall specifically identify for each claim those claim limitation(s) that are literally absent from the

Defendant(s) allegedly infringing Abbreviated New Drug Application or New Drug Application.

The written basis for any defense of non-infringement shall also be accompanied by the production

of any document or thing that the Defendant(s) intend to rely upon in defense of any infringement

allegations by Plaintiff(s).

(d) Not more than 45 days after the disclosure of the written basis for any defense of non-

infringement as required by P.R. 3-8(c), Plaintiff(s) shall provide Defendant(s) with a “Disclosure

of Asserted Claims and Infringement Contentions,” for all patents referred to in Defendant(s)

Paragraph IV Certification, which shall contain all disclosures required by P.R. 3-1 and shall be

accompanied by the production of documents required by P.R. 3-2.



(a) Not later than 10 days after service of the “Invalidity Contentions” pursuant to P. R. 3-3, each

party shall simultaneously exchange a list of claim terms, phrases, or clauses which that party

contends should be construed by the Court, and identify any claim element 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 finalizing this list, narrowing or

12

resolving differences, and facilitating the ultimate preparation of a Joint Claim Construction and

Prehearing Statement.


(a) Not later than 20 days after the exchange of “Proposed Terms and Claim Elements for

Construction” pursuant to P. R. 4-1, the parties shall simultaneously exchange a preliminary

proposed construction of each claim term, phrase, or clause which the parties collectively have

identified for claim construction purposes. Each such “Preliminary Claim Construction” shall also,

for each element 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 element.

(b) At the same time the parties exchange their respective “Preliminary Claim Constructions,” they

shall each also provide a preliminary identification of extrinsic evidence, including without

limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of

percipient and expert witnesses they contend support their respective claim constructions. The

parties shall identify each such item of extrinsic evidence by production number or produce a copy

of any such item not previously produced. With respect to any such witness, percipient or expert,

the parties shall also provide a brief description of the substance of that witness’ proposed testimony.

(c) The parties shall thereafter meet and confer for the purposes of narrowing the issues and

finalizing preparation of a Joint Claim Construction and Prehearing Statement.

4-3. Joint Claim Construction and Prehearing Statement.

Not later than 60 days after service of the “Invalidity Contentions,” the parties shall complete and

file a Joint Claim Construction and Prehearing Statement, which shall contain the following

information:

13

(a) The construction of those claim terms, phrases, or clauses on which the parties agree;

(b) Each party’s proposed construction of each disputed claim term, phrase, or clause, together with

an identification of all references from the specification or prosecution history that support that

construction, and an identification of any extrinsic evidence known to the party on which it intends

to rely either to support its proposed construction of the claim or to oppose any other party’s

proposed construction of the claim, including, but not limited to, as permitted by law, dictionary

definitions, citations to learned treatises and prior art, and testimony of percipient and expert

witnesses;

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

(d) Whether any party proposes to call one or more witnesses, including experts, at the Claim

Construction Hearing, the identity of each such witness, and for each expert, a summary of each

opinion to be offered in sufficient detail to permit a meaningful deposition of that expert; and

(e) A list of any other issues which might appropriately be taken up at a prehearing conference prior

to the Claim Construction Hearing, and proposed dates, if not previously set, for any such prehearing

conference.


Not later than 30 days after service and filing of the Joint Claim Construction and Prehearing

Statement, the parties shall complete all discovery relating to claim construction, including any

depositions with respect to claim construction of any witnesses, including experts, identified in the

Joint Claim Construction and Prehearing Statement.


14

(a) Not later than 45 days after serving and filing the Joint Claim Construction and Prehearing

Statement, the party claiming patent infringement shall serve and file an opening brief and any

evidence supporting its claim construction. All asserted patents shall be attached as exhibits to the

opening claim construction brief in searchable PDF form.

(b) Not later than 14 days after service upon it of an opening brief, each opposing party 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 party claiming patent

infringement shall serve and file any reply brief and any evidence directly rebutting the supporting

evidence contained in an opposing party’s response.

(d) At least 10 days before the Claim Construction Hearing held pursuant to P.R. 4-6, the parties

shall jointly submit a claim construction chart on computer disk in WordPerfect format or in such

other format as the Court may direct.

(1) Said chart shall have a column listing complete language of disputed claims with

disputed terms in bold type and separate columns for each party’s proposed construction of

each disputed term. The chart shall also include a fourth column entitled “Court’s

Construction” and otherwise left blank. Additionally, the chart shall also direct the Court’s

attention to the patent and claim number(s) where the disputed term(s) appear(s).

(2) The parties may also include constructions for claim terms to which they have agreed.

If the parties choose to include agreed constructions, each party’s proposed construction

columns shall state “[AGREED]” and the agreed construction shall be inserted in the

“Court’s Construction” column.

(3) The purpose of this claim construction chart is to assist the Court and the parties in

tracking and resolving disputed terms. Accordingly, aside from the requirements set forth

15

in this rule, the parties are afforded substantial latitude in the chart’s format so that they may

fashion a chart that most clearly and efficiently outlines the disputed terms and proposed

constructions. Appendices to the Court’s prior published and unpublished claim

construction opinions may provide helpful guidelines for parties fashioning claim

construction charts.

(e) Unless otherwise ordered by the Court, the page limitations governing dispositive motions

pursuant to Local Rule CV-7(a) shall apply to claim construction briefing.

4-6. Claim Construction Hearing.

Subject to the convenience of the Court’s calendar, two weeks following submission of the reply

brief specified in P.R. 4-5(c), the Court shall conduct a Claim Construction Hearing, to the extent

the parties or the Court believe a hearing is necessary for construction of the claims at issue.

16

ORTHERN DISTRICT OP TEX;AS

IN THE UNITED STATES DISTRICT CO FOR THE NORTHERN DISTRICT OF T

DALLAS DIVISION

AMENDED MISCELLANEOUS ORDER N

The Dallas division of the Northern District of Texas is participating in a pilot project for the

efficient and effective management of patent cases.2 Unless otherwise directed by the presiding

judge in an individual case, this Order will control the management of patent cases as defined below

in paragraph 1-2.

1. SCOPE.

1-1. Title.

This Order should be cited as "Miscellaneous Order No. 62," followed by the applicable

paragraph number.


This Order applies to all civil actions filed in or transferred to the Dallas division of the

Northern District of Texas that allege infringement of a utility patent in a complaint, counterclaim,

cross-claim, or third party claim or seek a declaratory judgment that a utility patent is not infringed,

is invalid, or is unenforceable. The presiding judge may accelerate, extend, eliminate, or modify the

obligations or deadlines established in this Order based on the circumstances of any particular patent

case, including, without limitation, the complexity of the case or the number of patents, claims,

products, or parties involved. If any motion filed prior to the claim construction hearing provided

for in paragraph 4-6 raises claim construction issues, the presiding judge may, for good cause shown,

'Amended Miscellaneous Order No. 62 takes effect on December 1,2009, notwithstanding the references to May 1,2007 (the effective date of the order when originally adopted). The amended order contains changes that bring the original order into conformity with the time-computation amendments to the Federal Rules of Civil Procedure and the local civil rules of this court that also take effect on December 1,2009.

*The rules of practice established by this Order will be carefblly reviewed for editorial and substantive revisions and will be renumbered in accordance with Judicial Conference policy if later considered for adoption as local civil rules of this court.

defer the motion until after completion of the disclosures, filings, or ruling following the claim

construction hearing. The local civil rules of this court apply to these actions except to the extent

they are inconsistent with this Order.


This Order will take effect on May 1,2007, and will apply to any Dallas division patent case

filed on or after that date. It will also apply to any pending Dallas division patent case in which, on

the date this Order takes effect, more than 9 days remain before the initial disclosure of asserted

claims and preliminary infringement contentions required by paragraph 3- 1 is due.

The parties to any other pending Dallas division patent case must meet and confer promptly

after May 1,2007, to determine whether any provision in this Order should be made applicable to

that case. No later than 7 days after the parties meet and confer, the parties must file a stipulation

setting forth a proposed order that relates to the application of this Order. Unless and until the

presiding judge enters an order applying this Order, the rules of practice previously applicable to

these other pending Dallas division patent cases will govern.



(a) Initial Case Management Conference. Parties conferring with each other under Fed.

R. Civ. P. 26(f) may attend the initial case management conference either in person or by telephone.

In the case management statement filed under Fed. R. Civ. P. 26(f), the parties must address the

matters required to be covered by Fed. R. Civ. P. 26, and the following additional matters:

(1) Proposed modification of the deadlines provided for in this Order, and the effect

of any such modification on the date and time of the claim construction hearing, if

any;

(2) Electronic discovery plan;

(3) The need for presenting technical tutorials to the presiding judge and the mode

for presenting same;

(4) Deviations fiom and additions to the protective order (see Appendix A);

2

I ‘

(5) Whether either party desires the presiding judge to hear live testimony at the

claim construction hearing;


including depositions of witnesses, including expert witnesses;

(7) The order of presentation at the claim construction hearing;

(8) The scheduling of a claim construction prehearing conference between attorneys

to be held after the filing of the joint claim construction and prehearing statement

required by paragraph 4-3;

(9) Whether the presiding judge should authorize the filing under seal of any

documents containing confidential information; and

(10) The need for any deviation fiom the ordinary practice of early and late

mediations, as well as the potential dates for early and late mediations,

(b) Further Case Management Conferences. To the extent that some or all of the matters

provided for in paragraph 2-l(a)(l)-(lO) are not discussed by the parties at the initial case

management conference, the parties must propose dates for further case management conferences

so that all matters required to be discussed are addressed in the case management statement.


All documents or information produced under this Order will be governed by the terms and

conditions of the protective order (see Appendix A). The protective order will be deemed

automatically entered upon the filing or transfer of any civil action to which this Order applies,

unless the protective order is modified by agreement of the parties or by order of the presiding judge.

2-3. Certification of Initial Disclosures.

Each statement, disclosure, or chart filed or served in accordance with this Order must be

dated and signed by the attorney of record. An attorney’s signature constitutes a certification that

to the best of the attorney’s knowledge, information, and belief, formed after an inquiry that is

reasonable under the circumstances, the information contained in the statement, disclosure, or chart

is complete and correct at the time it is made.

3

2-4. Admissibility of Disclosures.

Statements, disclosures, or charts governed by this Order are admissible to the extent

permitted by the Federal Rules of Evidence or Civil Procedure. However, the statements or

disclosures provided for in paragraph 4-1 and 4-2 are not admissible for any purpose other than in

connection with motions seeking an extension or modification of the time periods within which

actions contemplated by this Order must be taken.


(a) Unless the presiding judge otherwise directs, the scope of discovery is not limited to the

preliminary infringement contentions or preliminary invalidity contentions but is governed by the

Federal Rules of Civil Procedure. Except as provided in this paragraph or as otherwise directed by

the presiding judge, it will not be a legitimate ground for objecting to an opposing party’s discovery

request (e.g., interrogatory, document request, request for admission, deposition question) or

declining to provide information otherwise required to be disclosed under Fed. R. Civ. P. 26(a)( 1)

that the discovery request or disclosure requirement is premature in light of, or otherwise conflicts

with, this Order. A party may object to the following categories of discovery requests (or may

decline to provide information in its initial disclosures under Fed. R, Civ. P. 26(a)( 1)) on the ground

that they are premature in light of the timetable provided in this Order:

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

(2) Requests seeking to elicit fiom the patent claimant a comparison of the asserted

claims and the accused apparatus, product, device, process, method, act, or other

instrumentality;

(3) Requests seeking to elicit from an accused infringer a comparison of the asserted

claims and the prior art; and

(4) Requests seeking to elicit from an accused infringer the identification of any

opinions of an attorney, and related documents, that it intends to rely upon as a

defense to an allegation of willful infringement.

(b) When a party properly objects to a discovery request (or declines to provide information

in its initial disclosures under Fed. R. Civ. P. 26(a)( 1)) as set forth above, that party must provide

4

the requested information on the date it is required to provide the requested information to an

opposing party under this Order, unless there exists another legitimate ground for objection.



(a) Not later than 14 days after the initial case management conference, a party claiming

patent infringement must serve on each opposing party a disclosure of asserted claims and

preliminary infringement contentions and file notice of such service with the clerk. The disclosure

of asserted claims and preliminary infringement contentions must contain, separately for each

opposing party, the following information:

(1) Each claim of each patent in suit that is allegedly infringed by each opposing

party;

(2) Separately for each asserted 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 must 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 that, when used, allegedly results in

the practice of the claimed method or process;

(3) A chart identifying specifically and in detail where each element of each asserted

claim is found within each accused instrumentality, including for each element that

such party contends is governed by 35 U.S.C. 8 1 12(6), the identity of each structure,

act, or material in the accused instrumentality that performs the claimed firnction;

(4) Whether each element of each asserted claim is claimed to be literally present or

present under the doctrine of equivalents in the accused instrumentality;

(5) For any patent that claims priority to an earlier application, the priority date to

which each asserted claim allegedly is entitled; and

(6) If a party claiming patent infringement wishes to preserve the right to rely, for

5

any purpose, on the assertion that its own apparatus, product, device, process,

method, act, or other instrumentality practices the claimed invention, the party must

identi@, separately for each asserted claim, each such apparatus, product, device,

process, method, act, or other instrumentality that incorporates or reflects that

particular claim.

(b) Failure to comply with the requirements of this paragraph, including the requirement of

specificity and detail in contending infringement, may result in appropriate sanctions, including

dismissal.


(a) In addition to serving the disclosure of asserted claims and preliminary infringement

contentions, the party claiming patent infringement must produce or make available for inspection

and copying to each opposing party:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing

materials, offer letters, beta site testing agreements, and third party or joint

development agreements) sufficient to evidence each discussion with, disclosure to,

or other manner of providing to a third party, or sale of or offer to sell, the claimed

invention prior to the date of application for the patent in suit. A party’s production

of a document as required by this paragraph does not constitute an admission that the

document evidences or is prior art under 35 U.S.C. 5 102;

(2) All documents evidencing the conception, reduction to practice, design, and

development of each claimed invention, that were created on or before the date of

application for the patent in suit or the priority date identified under paragraph 3-

l(a)(5), whichever is earlier; and

(3) A copy of the file history for each patent in suit.

(b) The producing party must separately identify by production number which documents


6


(a) Within 45 days from the date the party claiming patent infringement serves the disclosure

of asserted claims and preliminary infringement contentions on all opposing parties, each party

opposing a claim of patent infiingement must serve on all other parties its preliminary invalidity

contentions and file notice of such service with the clerk. The preliminary invalidity contentions

must contain the following information:

(1) The identity of each item of prior art that allegedly anticipates each asserted

claim or renders it obvious. Each prior art patent must 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, when feasible, author and publisher. Prior art under

35 U.S.C. 5 102(b) must be identified by specifying the item offered for sale or

publicly used or known, the date the offer or use took place or the information

became known, and the identity of the person or entity that made the use or made and

received the offer, or the person or entity that made the information known or to

whom it was made known. Prior art under 35 U.S.C. 5 102(f) must be identified by

providing the name of each person from whom and the circumstances under which

the invention or any part of it was derived. Prior art under 35 U.S.C. 5 102(g) must

be identified by providing the identity of each person or entity involved in and the

circumstances surrounding the making of the invention before the patent applicant;

(2) Whether each item of prior art anticipates each asserted claim or renders it

obvious. If a combination of items of prior art makes a claim obvious, each such

combination, and the motivation to combine such items, must be identified;

(3) A chart identifying where specifically and in detail in each alleged item of prior

art each element of each asserted claim is found, including for each element that the

party contends is governed by 35 U.S.C. 5 112(6), the identity of the structure, act,

or material in each item of prior art that performs the claimed function; and

(4) Any grounds of invalidity based on indefiniteness under 35 U.S.C. 5 112(2), or

enablement or written description under 35 U.S.C. 5 112(1), of any of the asserted

claims.

7

(b) Failure to comply with the requirements of this paragraph, including the requirement of

specificity and detail, may result in appropriate sanctions.

3-4. Document Production Accompanying Preliminary Invalidity Contentions.

At the time the preliminary invalidity contentions are served on all opposing parties, the party

opposing a claim of patent infringement must also produce or make available for inspection and

copying to all opposing parties:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other

documentation sufficient to show the operation of any aspects or elements of an accused

instrumentality identified by the patent claimant in its paragraph 3-l(a)(3) chart; and

(b) A copy of each item of prior art identified under paragraph 3-3(a)( 1) that does not appear

in the file history of each patent at issue. To the extent any such item is not in English, an English

translation of each portion relied upon must be produced.


(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files

a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid,

or is unenforceable, paragraph 3-1 and 3-2 will not apply unless and until a claim for patent

infringement is made by a party. If the defendant does not assert a claim for patent infringement in

its answer to the complaint, then no later than 14 days after the defendant files its answer, or 14 days

after the initial case management conference, whichever is later, the party seeking a declaratory

judgment must serve upon each opposing party its preliminary invalidity contentions that conform

to paragraph 3-3 and produce or make available for inspection and copying by all opposing parties

the documentation described in paragraph 3-4. The parties must meet and confer within 14 days of

the service of the preliminary invalidity contentions for the purpose of determining the date the

plaintiff will file its final invalidity contentions, which must be filed within 50 days from the date

the presiding judge's claim construction ruling is filed.

(b) Application of Rules When No Specified Triggering Event. If the filings or actions

in a Dallas division patent case do not trigger the application of this Order, then as soon as this is

8

known, the parties to the patent case must meet and confer for the purpose of agreeing on the

application of this Order to the patent case.

(c) Inapplicability. This paragraph does not apply to a Dallas division patent case in which

a request for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is

filed in response to a complaint for infringement of the same patent.

3-6. Final Contentions.

Each party’ s preliminary infringement contentions and preliminary invalidity contentions will

be deemed to be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement believes in good faith that the presiding judge’s

claim construction ruling so requires, that party may serve final infringement contentions without

leave of court that amend the party’s preliminary infringement contentions with respect to the

information required by paragraph 3-l(a)(3) and (4) within 30 days from the date the presiding

judge’s claim construction ruling is filed.

(b) Within 50 days from the date the presiding judge’s claim construction ruling is filed,

each party opposing a claim of patent infringement may serve its final invalidity contentions without

leave of court that amend its preliminary invalidity contentions with respect to the information

required by paragraph 3-3 if

(1) a party claiming patent infringement has served its final infringement contentions

under paragraph 3-6(a), or

(2) the party opposing a claim of patent infringement believes in good faith that the

presiding judge’s claim construction ruling so requires.

9

3-7. Amendment to Contentions.

Amendment of the preliminary or final infringement contentions or the preliminary or final

invalidity contentions, other than as expressly permitted in paragraph 3-6, may be made only by

order of the presiding judge upon a showing of good cause. Good cause for the purposes of this

paragraph may include newly discovered accused instrumentalities, newly discovered bases for

claiming infringement, or newly discovered prior art references. A party seeking amendment of the

preliminary or final infringement contentions or the preliminary or final invalidity contentions must

include in its motion to amend a statement that the newly discovered accused instrumentalities,

newly discovered bases for claiming infringement, or newly discovered prior art references were not

known to that party prior to the motion despite diligence in seeking out same.

3-8. Willfulness.

(a) By the date established in the scheduling order, each party opposing a claim of patent

infringement that will rely on an opinion of an attorney as part of a defense to a claim of willful

infringement must:

(1) Produce or make available for inspection and copying each opinion and any other

documents relating to the opinion as to which the party agrees the attorney-client or

work product protection has been waived; and

(2) Serve a privilege log identifying any other documents, except those authored by

an attorney acting solely as trial counsel, relating to the subject matter of the opinion

the party is withholding on the grounds of attorney-client privilege or work product

protection.

(b) A party opposing a claim of patent infringement who does not comply with the

requirements of this paragraph will not be permitted to rely on an opinion of an attorney as part of

a defense to willful infringement absent a stipulation of all parties or by order of the presiding judge

upon a showing of good cause.

10



(a) Not later than 14 days after service of the preliminary invalidity contentions under

paragraph 3-3, each party must simultaneously exchange a list of claim terms, phrases, or clauses

that the party contends should be construed by the presiding judge, and any claim element that the

party contends should be governed by 35 U.S.C. § 112(6).

(b) After exchanging this list, the parties must meet and confer for the purposes of finalizing

a combined list, narrowing or resolving differences, and facilitating the ultimate preparation of a

joint claim construction and prehearing statement.


(a) Not later than 2 1 days after the exchange of lists under paragraph 4- 1 (a), the parties must

simultaneously exchange a preliminary proposed construction of each claim term, phrase, or clause

that the parties collectively have identified for claim construction purposes, and must also identify

each structure, act, or material corresponding to each claim element that the parties collectively

contend is governed by 35 U.S.C. tj 112(6).

(b) At the same time the parties exchange their respective preliminary claim constructions,

they must each also exchange a preliminary identification of extrinsic evidence, including, without

limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of

percipient and expert witnesses they contend support their respective claim constructions. The

parties must identify each item of extrinsic evidence by production number or produce a copy of any

such item not previously produced. With respect to any percipient or expert witness, the parties must

also provide a brief description of the substance of that witness' proposed testimony.

(c) The parties must thereafter meet and confer for the purposes of narrowing the issues and

finalizing preparation of a joint claim construction and prehearing statement.

11


Not later than 60 days after service of the preliminary invalidity contentions, the parties must

complete and file a joint claim construction and prehearing statement that contains the following

information:


(b) Each party’s proposed construction of each disputed claim term, phrase, or clause,

together with an identification of all references from the specification or prosecution history that

support that construction, and an identification of any extrinsic evidence known to the party on

which the party intends to rely, either to support its proposed construction of the claim or to oppose

any other party’s proposed construction of the claim, including, but not limited to, as permitted by

law, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and

expert witnesses;

(c) The anticipated length of time necessary for the claim construction hearing;

(a) Whether any party proposes to call one or more witnesses, including experts, at the claim

construction hearing, the identity of each witness, and, for each expert, a summary of each opinion

to be offered in sufficient detail to permit a meaningful deposition of that expert; and

(e) A list of any other issues that might appropriately be taken up at a prehearing conference

prior to the claim construction hearing, and, if not previously set, proposed dates for any such

prehearing conference.


Within 30 days from the date the joint claim construction and prehearing statement is filed,

the parties must complete all discovery relating to claim construction, including any depositions with

respect to claim construction of any witnesses, including experts, identified in the joint claim

construction and prehearing statement.


(a) Within 45 days from the date the joint claim construction and prehearing statement is

filed, each party must serve and file a claim construction brief and any evidence supporting its claim

12

construction. The requirements of LR 7.2 apply to such briefs, except that, excluding the table of

contents and table of authorities, the length of a brief must not exceed 30 pages. By order or other

appropriate notice issued in the case, the presiding judge may restrict the length of a brief to fewer

than 30 pages, or, for good cause, may enlarge the length of a brief.

(b) Each party may serve and file a responsive brief and supporting evidence within 14 days

from the date the opposing party’s claim construction brief is filed. The requirements of LR 7.2

apply to such briefs, except that, excluding the table of contents and table of authorities, the length

of a brief must not exceed 30 pages. By order or other appropriate notice issued in the case, the

presiding judge may restrict the length of a brief to fewer than 30 pages, or, for good cause, may

enlarge the length of a brief. Unless the presiding judge otherwise directs, no hrther claim

construction briefing will be permitted.

(c) Within 10 days3 of the claim construction hearing scheduled under paragraph 4-6, the

parties must jointly submit a claim construction chart on computer disk in Wordperfect format or

in such other format as the presiding judge may direct.

(1) The claim construction chart must have a column listing the complete language

of disputed claims with disputed terms in bold type and separate columns for each

party’s proposed construction of each disputed term. The chart must also include a

fourth column entitled “Judge’s Construction,” that is otherwise left blank.

Additionally, the chart must direct the presiding judge’s attention to each patent and

claim number where a disputed term appears.

(2) The parties may also include constructions for claim terms to which they have

agreed. If the parties choose to include agreed constructions, each party’s proposed

construction columns must state “[AGREED] ,” and the agreed construction must be

inserted in the “Judge’s Construction” column.

(3) The purpose of this claim construction chart is to assist the presiding judge and

the parties in tracking and resolving disputed terms. Accordingly, aside from the

requirements set forth in this Order, the parties are afforded substantial latitude in the

The decision to retain this 10-day deadline in the amended order is intentional. 3

13

chart’s format so that they may fashion a chart that most clearly and efficiently

outlines the disputed terms and proposed constructions. Appendices to the presiding

judge’s prior published and unpublished claim construction opinions may provide

helpful guidelines for parties fashioning claim construction charts.

4-6. CIaim Construction Hearing.

Subject to the convenience of the presiding judge’s calendar, two weeks after the responsive

briefs under paragraph 4-5(b) have been filed, the presiding judge will conduct a claim construction

hearing, to the extent the parties or the presiding judge believe a claim construction hearing is

necessary for construction of the claims at issue.

The clerk is directed to make appropriate distribution of this Order.

SO ORDERED.

November 16,2009.

CHIEF JUDGE

14

APPENDIX A

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DXSTRICT OF TEXAS


PROTECTnTE ORDER

Proceedings - and Information Governed.

1 . This Order ("Protective Order") is made under Fed. R. Civ. P. 26(c). It governs any

document, information, or other thing furnished by any party to any other party, and it includes any

non-party who receives a subpoena in connection with this action. The information protected

includes, but is not limited to: answers to interrogatories; answers to requests for admission; responses

to requests for production of documents; deposition transcripts and videotapes; deposition exhibits;

and other writings or things produced, given or filed in this action that are designated by a party as

"Confidential Information" or "Confidential Attorney Eyes Only Information" in accordance with the

terms of this Protective Order, as we11 as to any copies, excerpts, abstracts, analyses, summaries,

descriptions, or other forms of recorded information containing, reflecting, or disclosing such

information.

Designation and Maintenance of Information.

2. For purposes of this Protective Order, (a) the "ConfidentiaI Information" designation

means that the document is comprised of trade secrets or commercial information that is not publicly

known and is of technical or commercial advantage to its possessor, in accordance with Fed. R. Civ.

P. 26(c)(7), or other information required by law or agreement to be kept confidential and (b) the

"Confidential Attorney Eyes Only" designation means that the document is comprised of

information that the producing party deems especially sensitive, which may include, but is not limited

to, confidential research and development, financial, technical, marketing, any other sensitive trade

secret information, or information capable of being utilized for the preparation or prosecution of a

1

a

patent application dealing with such subject matter. Confidential Information and Confidential

Attorney Eyes Only Information does not include, and this Protective Order does not apply to,

information that is already in the knowledge or possession of the party to whom disclosure is made

unless that party is already bound by agreement not to disclose such information, or information that

has been disclosed to the public or third persons in a manner making such information no longer

confidential.

3. Documents and things produced during the course of this litigation within the scope of

paragraph 2(a) above, may be designated by the producing party as containing Confidential

Information by placing on each page and each thing a legend substantially as follows:

CONFIDENTIAL INFORMATION SUBJECT TO PROTECTIVE ORDER

Documents and things produced during the course of this litigation within the scope of

paragraph 2(b) above may be designated by the producing party as containing Confidential Attorney

Eyes Only Information by placing on each page and each thing a legend substantially as follows:

CONFIDENTIAL ATTORNEY EYES ONLY INFORlMATION SUBJECT TO PROTECTIVE ORDER

A party may designate information disclosed at a deposition as Confidential Information or

Confidential Attorney Eyes Only Information by requesting the reporter to so designate the transcript

or any portion of the transcript at the time of the deposition. If no such designation is made at the time

of the deposition, any party will have fourteen (1 4) calendar days after the date of the deposition to

designate, in writing to the other parties and to the court reporter, whether the transcript is to be

designated as Confidential Information or Confidential Attorneys Eyes Only Information. If no such

designation is made at the deposition or within this fourteen (14) calendar day period (during which

period, the transcript must be treated as Confidential Attorneys Eyes Only Information, unless the

disclosing party consents to less confidential treatment of the information), the entire deposition will

be considered devoid of Confidential Information or Confidential Attorneys Eyes Only Information.

2

Each party and the court reporter must attach a copy of any final and timely written designation notice

to the transcript and each copy of the transcript in its possession, custody or control, and the portions

designated in such notice must thereafter be treated in accordance with this Protective Order. It is the

responsibility of counsel for each party to maintain materials containing Confidential Information or

Confidential Attorney Eyes Only Information in a secure manner and appropriately identified so as to

allow access to such information only to such persons and under such terms as is permitted under this

Protective Order.

Inadvertent Failure to Designate.

4. The inadvertent failure to designate or withhold any information as confidential or

privileged will not be deemed to waive a later claim as to its confidential or privileged nature, or to

stop the producing party from designating such information as confidential at a later date in writing

and with particularity. The information must be treated by the receiving party as confidential from the

time the receiving party is notified in writing of the change in the designation.

Challenge to Designations.

5. A receiving party may challenge a producing party's designation at any time. Any

receiving party disagreeing with a designation may request in writing that the producing party change

the designation. The producing party will then have ten (1 0) business days after receipt of a challenge

notice to advise the receiving party whether or not it will change the designation. If the parties are

unable to reach agreement afler the expiration of this ten (10) business day time-frame, and after the

conference required under LR 7.l(a), the receiving party may at any time thereafter seek an order to

alter the confidential status of the designated information. Until any dispute under this paragraph is

ruled upon by the presiding judge, the designation will remain in full force and effect, and the

information will continue to be accorded the confidential treatment required by this Protective Order.

Disclosure and Use of Confidential Information.

6 , Information designated as Confidential Information or Confidential Attorney Eyes Only

Information may only be used for purposes of preparation, trial, and appeal of this action.

3

Confidential Information or Confidential Attorney Eyes Only Information may not be used under any

circumstances for prosecuting any patent application, for patent licensing, or for any other purpose.

7. Subject to paragraph 9 below, Confidential Information may be disclosed by the receiving

party only to the following individuals, provided that such individuals are informed of the terms of

this Protective Order: (a) two (2) employees of the receiving party who are required in good faith to

provide assistance in the conduct of this litigation, including any settlement discussions, and who are

identified as such in writing to counsel for the designating party in advance of the disclosure; (b) two

(2) in-house counsel who are identified by the receiving party; (c) outside counsel for the receiving

party; (d) supporting personnel employed by (b) and (c), such as paralegals, legal secretaries, data

entry clerks, legal clerks, and private photocopying services; (e) experts or consultants; and (f) any

persons requested by counsel to furnish services such as document coding, image scanning, mock

trial, jury profiling, translation services, court reporting services, demonstrative exhibit preparation, or

the creation of any computer database from documents.

8. Subject to paragraph 9 below, Confidential Attorney Eyes Only Information may be

disclosed by the receiving party only to the following individuals, provided that such individuals are

informed of the terms of this Protective Order: (a) outside counsel for the receiving party; (b)

supporting personnel employed by outside counsel, such as paralegals, legal secretaries, data entry

clerks, legal clerks, private photocopying services; (c) experts or consultants; and (d) those

individuals designated in paragraph 1 1 (c).

9. Further, prior to disclosing Confidential Information or Confidential Attorney Eyes Only

Information to a receiving party's proposed expert, consultant, or employees, the receiving party

must provide to the producing party a signed Confidentiality Agreement in the form attached as

Exhibit A, the resume or curriculum vitae of the proposed expert or consultant, the expert or

consultant's business aflfiliation, and any current and past consulting relationships in the industry. The

producing party will thereafter have ten (1 0) business days from receipt of the Confidentiality

Agreement to object to any proposed individual, The objection must be made for good cause and in

4

writing, stating with particularity the reasons for the objection. Failure to object within ten (1 0)

business days constitutes approval. If the parties are unable to resolve any objection, the receiving

party may apply to the presiding judge to resolve the matter. There will be no disclosure to any

proposed individual during the ten (1 0) business day objection period, unless that period is waived by

the producing party, or if any objection is made, until the parties have resolved the objection, or the

presiding judge has ruled upon any resultant motion.

10. Counsel is responsible for the adherence by third-party vendors to the terms and

conditions of this Protective Order. Counsel may fulfill this obligation by obtaining a signed

Confidentiality Agreement in the form attached as Exhibit B.

1 1, Confidential Information or Confidential Attorney Eyes Only Information may be

disclosed to a person who is not already allowed access to such information under this Protective

Order if:

(a) the information was previously received or authored by the person or was authored or

received by a director, officer, employee or agent of the company for which the person is testifying as

a designee under Fed. R. Civ. P. 30(b)(6);

(b) the designating party is the person or is a party for whom the person is a director, officer,

employee, consultant or agent; or

(c) counsel for the party designating the material agrees that the material may be disclosed to

the person.

In the event of disclosure under this paragraph, only the reporter, the person, his or her

counsel, the presiding judge, and persons to whom disclosure may be made and who are bound by this

Protective Order, may be present during the disclosure or discussion of Confidential Information.

Disclosure of material pursuant to this paragraph does not constitute a waiver of the confidential

status of the material so disclosed.

5

t

Non-Par@ Information.

12. The existence of this Protective Order must be disclosed to any person producing

documents, tangible things, or testimony in this action who may reasonably be expected to desire

confidential treatment for such documents, tangible things or testimony. Any such person may

designate documents, tangible things, or testimony confidential pursuant to this Protective Order.

Filinp Documents With the Court.

13. If any party wishes to submit Confidential Information to the court, the submission must

be filed only in a sealed enveIope bearing the caption of this action and a notice in the following

form:

CONFIDENTIAL INFORMATION [caption]

This envelope, which is being filed under seal, contains documents that are subject to a Protective

Order governing the use of confidential discovery material. No Prejudice.

14. Producing or receiving confidential information, or otherwise complying with the terms

of this Protective Order,will not (a) operate as an admission by any party that any particular

Confidential Information contains or reflects trade secrets or any other type of confidential or

proprietary information; (b) prejudice the rights of a party to object to the production of information

or material that the party does not consider to be within the scope of discovery; (c) prejudice the

rights of a party to seek a determination by the presiding judge that particular materials be produced;

(d) prejudice the rights of a party to apply to the presiding judge for fhther protective orders; or (e)

prevent the parties from agreeing in writing to alter or waive the provisions or protections provided

for in this Protective Order with respect to any particular information or material.

Conclusion of Litigation.

15. Within sixty (60) calendar days after final judgment in this action, including the

exhaustion of all appeals, or within sixty (60) calendar days after dismissal pursuant to a settlement

agreement, each party or other person subject to the terms of this Protective Order is under an

6

8 a obligation to destroy or return to the producing party all materials and documents containing

Confidential Information or Confidential Attorney Eyes Only Information, and to certify to the

producing party that this destruction or return has been done. However, outside counsel for any party

is entitled to retain all court papers, trial transcripts, exhibits, and attorney work provided that any

such materials are maintained and protected in accordance with the terms of this Protective Order.

Other Proceedings.

16. By entering this Protective Order and limiting the disclosure of information in this case,

the presiding judge,does not intend to preclude another court fiom finding that information may be

relevant and subject to disclosure in another case. Any person or party subject to this Protective Order

who may be subject to a motion to disclose another party's information designated Confidential

pursuant to this Protective Order must promptly notify that party of the motion so that the party may

have an opportunity to appear and be heard on whether that information should be disclosed.

Remedies.

17. It is Ordered that this Protective Order will be enforced by the sanctions set forth in Fed.

R. Civ. P. 37(b) and any other sanctions as may be available to the presiding judge, including the

power to hold parties or other violators of this Protective Order in contempt. All other remedies

available to any person injured by a violation of this Protective Order are fully reserved.

18. Any party may petition the presiding judge for good cause shown if the party desires

relief fi-om a term or condition of this Protective Order.

7

8

Exhibit A IN THE UNITED STATES DISTRICT COURT FOR

THE NORTHERN DISTRICT OF TEXAS


CONFIDENTIALITY AGREEMENT FOR EXPERT, CONSULTANT OR EMPLOYEES OF ANY PARTY

I hereby afErm that:

Information, including documents and things, designated as "Confidential Information," or "Confidential

Attorney Eyes Only Information," as defined in the Protective Order entered in the above-captioned action

("Protective Order"), is being provided to me pursuant to the terms and restrictions of the Protective Order.


I am familiar with the terms of the Protective Order and I agree to comply with and to be bound by its terms.

I submit to the jurisdiction of this Court for enforcement of the Protective Order.

I agree not to use any Confidential Information or Confidential Attorney Eyes Only Information disclosed to

me pursuant to the Protective Order except for purposes of the above-captioned litigation and not to disclose

any of this information to persons other than those specifically authorized by the Protective Order, without the

express written consent of the party who designated the information as confidential or by order of the presiding

judge. I also agree to notify any stenographic, clerical or technical personnel who are required to assist me of

the terms of this Protective Order and of its binding effect on them and me.

I understand that I am to retain all documents or materials designated as or containing Confidential Information

or Confidential Attorney Eyes Only Information in a secure manner, and that all such documents and materials

are to remain in my personal custody until the completion of my assigned duties in this matter, whereupon all

such documents and materials, including a11 copies thereof, and any writings prepared by me containing any

Confidential Information or Confidential Attorney Eyes Only Information are to be returned to counsel who

provided me with such documents and materials.

Exhibit B IN THE UNITED STATES DISTRICT COURT FOR

THE NORTHERN DISTRICT OF TEXAS


CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS


Infomation, including documents and things, designated as "Confidential

Information," or "Confidential Attorney Eyes Only Information," as defined in the Protective Order entered in

the above-captioned action ("Protective Order"), is being provided to me pursuant to the terms and restrictions

of the Protective Order.


1 am familiar with the terms of the Protective Order and I agree to comply with and to be bound by its terms.

I submit to the jurisdiction of this Court for enforcement of the Protective Order.

I agree not to use any Confidential Information or Confidential Attorney Eyes OnIy Information disclosed to

me pursuant to the Protective Order except for purposes of the above-captioned litigation and not to disclose

any of this information to persons other than those specifically authorized by the Protective Order, without the

express written consent of the party who designated the information as confidential or by order of the presiding

judge.

USDC/SDTX Patent Rules

Reprinted December 2009

RULES OF PRACTICE FOR

PATENT CASES

IN THE SOUTHERN DISTRICT OF TEXAS(Effective January 1, 2008)

1. SCOPE OF RULES

1-1. Title.

These are the Rules of Practice for Patent Cases before the United States District

Court for the Southern District of Texas (“Patent Rules,” to be cited as “P. R. __”).


(a) These Patent Rules apply to all civil actions filed in or transferred to the

Southern District of Texas that allege claims for patent infringement in a complaint,

counterclaim, cross-claim or third-party claim, or seek a declaratory judgment that a patent

is not infringed, is invalid, or is unenforceable (a “patent claim”).

(b) The presiding judge may accelerate, extend, eliminate, or modify the

obligations or deadlines established in these Patent Rules based on the circumstances of a

particular case, including, without limitation, its complexity or the number of patents, claims,

products, or parties involved.

(c) If any motion filed before the Claim Construction Hearing (see P.R. 4-6) raises

claim construction issues, the presiding judge may, for good cause, defer the motion until

after the parties’ disclosures or filings for the Claim Construction Hearing.

(d) The Local Civil Rules of the Southern District of Texas apply to patent cases

except to the extent that the Local Civil Rules are inconsistent with these Patent Rules.


These Patent Rules will become effective January 1, 2008, and apply to all cases

involving a patent claim filed thereafter, unless otherwise ordered by the presiding judge.

The parties in each case involving a patent claim pending on the effective date of these Patent

Rules must confer and, to the extent possible, submit an agreed scheduling order consistent

with these Patent Rules. The parties must use the Scheduling Order Template available at

the Southern District of Texas Court website (www.txs.uscourts.gov). To the extent the

parties cannot agree, they must notify the presiding judge, who will resolve the issues.

http://www.txs.uscourts.gov


Reprinted December 2009 2


2-1. Procedure.

(a) Parties’ Preparation for Initial Case Management Conference. In addition

to the matters covered by FED. R. CIV. P. 26, the parties must confer and address in their Joint

Case Management Report the following topics:

(1) any proposed modification of the schedule provided in the Scheduling

Order Template, which is available at the District’s website;

(2) a plan for completing electronic discovery;

(3) the need for presenting technical tutorials to the presiding judge and the

mode for such presentations (i.e., live testimony, video presentations)

at or before the claim construction hearing;

(4) any deviations from and additions to the form protective order

(available at the District’s website);

(5) whether any party desires to present live testimony at the claim

construction hearing;

(6) the need for and any specific limits on discovery relating to claim

construction, including depositions of fact and expert witnesses;

(7) the order of presentation at the claim construction hearing;

(8) the scheduling of a claim construction prehearing conference after the

“Joint Claim Construction and Prehearing Statement” provided in P.R.

4-3 has been filed; and

(9) whether the presiding judge should authorize the filing under seal of

any documents containing confidential information,

(b) Insufficient Information. If warranted by the patent(s) and/or products in

issue, the party claiming patent infringement (“claimant”) may include in the Joint Case

Management Report a statement that the claimant in good faith lacks sufficient information

concerning the opponent’s products or processes to provide the necessary specificity for the



Preliminary Infringement Contentions (see P.R. 3-1). If the presiding judge orders, the

opponent within twenty 21 days must produce to the claimant sufficient information

concerning each product or process of the type or class specified by the claimant in its

statement to enable the claimant to determine whether to claim that the product or process

infringes. Neither the claimant’s statement nor the opponent’s production will be an

admission or evidence of infringement or noninfringement. These steps are solely to

determine what is alleged to be infringing.

(Amended by General Order 2009-17, effective 12/1/09)

(c) Case Management Conference and Scheduling Order. At the initial case

management conference, after considering the parties’ Joint Case Management Report, the

presiding judge will enter a Case Management Scheduling Order (“Scheduling Order”).

(d) Further Case Management Conferences. If some or all of the matters

provided under P.R. 2-1(a) are not resolved or decided at the initial case management

conference, the parties must propose dates for further case management conferences.

2-2. Confidentiality and Proposed Protective Order.

Documents and information produced in cases governed by these Patent Rules will

be governed by the form protective order available at the District’s website,

www.txs.uscourts.gov, unless the presiding judge otherwise orders. If the parties seek to

modify the form protective order, they must submit to the presiding judge, with the Joint

Case Management Report, the protective order they propose and must identify proposed

variations to the form protective order.

2-3. Certification of Initial Disclosures and English Translations.

(a) All statements, disclosures, or charts filed or served in accordance with these

Patent Rules must comply with the Federal Rules of Civil Procedure and the Administrative

Procedures for Electronic Filing of Documents in Civil and Criminal Cases issued by the

United States District Court for the Southern District of Texas.

(b) To the extent any document or disclosure is not in English, an English

translation of the portion(s) relied on must be produced.




2-4. Admissibility.

Statements, disclosures, or charts governed by these Patent Rules are admissible in

evidence to the extent permitted by the Federal Rules of Evidence or the Federal Rules of

Civil Procedure. However, the statements or disclosures provided for in P.R. 4-1 and 4-2 are

not admissible for any purpose other than in connection with motions seeking an extension

or modification of the deadlines set out in these Patent Rules.


(a) Unless the presiding judge otherwise directs, the scope of discovery is not

limited to the preliminary infringement contentions or preliminary invalidity contentions, but

is governed by the Federal Rules of Civil Procedure.

(b) Except as provided in this paragraph or as otherwise ordered, it is not a

legitimate ground for objecting to an opposing party’s discovery request or declining to

disclose information under FED. R. CIV. P. 26(a)(1) that the discovery request or disclosure

requirement is premature or otherwise conflicts with these Patent Rules. A party may object

to certain categories of discovery requests or may decline to disclose information under FED.

R. CIV. P. 26(a)(1) on the ground that the request or disclosure is premature in light of the

timetable provided in the Patent Rules. The categories are:

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

(2) requests seeking to elicit from the patent claimant a comparison of the

asserted claims and the accused apparatus, product, device, process,

method, act, or other instrumentality;

(3) requests seeking to elicit from an accused infringer a comparison of the

asserted claims and the prior art; and

(4) requests seeking to elicit from an accused infringer the identification of

any opinions of counsel and related documents that it intends to rely

upon as a defense to a willful infringement allegation; however, a party

may not assert a prematurity objection to a request for nonprivileged

information identifying the existence of such opinions of counsel.

(c) When a party properly objects to a discovery request, or declines to provide

information in its initial disclosures under FED. R. CIV. P. 26(a)(1), as set forth above, that

party must provide the requested information on the date it is required to provide the



requested information to an opposing party under these Patent Rules, unless there is another

legitimate ground for objection.



As provided in the Scheduling Order issued by the presiding judge at the initial

scheduling conference, a party claiming patent infringement must serve on all parties a

“Disclosure of Asserted Claims and Preliminary Infringement Contentions,” which must

contain the following information:

(a) each claim of each patent-in-suit that is allegedly infringed by an opposing

party;

(b) for each asserted claim, a specific and separate identification of each accused

apparatus, product, device, process, method, act, or other instrumentality

(“Accused Instrumentality”) of each opposing party, including where possible:

(1) each product, device, and apparatus identified by name or model

number, and

(2) each method or process identified by name, any product, device, or

apparatus that, when used, allegedly results in the practice of the

claimed method or process;

(c) a chart identifying specifically where each element of each asserted claim is

found within each Accused Instrumentality, including for each element that is

allegedly governed by 35 U.S.C. § 112, ¶ 6, the identity of the structures, acts,

or materials in the Accused Instrumentality that performs the claimed function;

(d) for each Accused Instrumentality and each element of each asserted claim,

identification of whether the element is claimed to be literally present or

present under the doctrine of equivalents;

(e) for any patent that claims priority to an earlier application, the priority date to

which each asserted claim allegedly is entitled; and

(f) if a party claiming patent infringement wishes to preserve the right to rely, for

any purpose, on the assertion that its own apparatus, product, device, process,



method, act, or other instrumentality practices the claimed invention, the party

must identify, separately for each asserted claim, each such apparatus, product,

device, process, method, act, or other instrumentality that incorporates or

reflects that particular claim.


(a) With the “Disclosure of Asserted Claims and Preliminary Infringement

Contentions,” the party claiming patent infringement must produce to each opposing party

or make available for inspection and copying, the following:

(1) documents (e.g., contracts, purchase orders, invoices, advertisements,

marketing materials, offer letters, beta site testing agreements, and

third-party or joint development agreements) sufficient to show each

discussion with, disclosure to, or other manner of providing to a third-

party, or sale of or offer to sell, the claimed invention before the

application date for the patent-in-suit;

(2) documents evidencing the conception, reduction to practice, design, and

development of each claimed invention, which were created on or

before the application date for the patent-in-suit or the priority date

identified under P.R. 3-1(e), whichever is earlier;

(3) a copy of the file history for each patent-in-suit; and

(4) license agreements for the patents-in-suit.

(b) The producing party must separately identify by production number which

documents correspond to each category.

(c) A party’s production of a document as required by this paragraph is not an

admission that the document is evidence of or is prior art under 35 U.S.C. § 102.


After service upon it of the “Disclosure of Asserted Claims and Preliminary

Infringement Contentions,” each party opposing a patent infringement claim must serve on

all parties, by the deadline set forth in the Scheduling Order, “Preliminary Invalidity

Contentions” containing the following information:



(a) the identity of each item of prior art that allegedly anticipates each asserted

claim or renders it obvious, including:

(1) each prior art patent identified by its number, country of origin, and

date of issue;

(2) each prior art publication identified by its title, date of publication, and,

author and publisher when feasible;

(3) prior art under 35 U.S.C. § 102(b) identified by the item offered for sale

or publicly used or known; the date the offer or use took place or the

information became known; and the identity of the person or entity that

made the use or that made and received the offer, or the person or entity

that made the information known or to whom it was made known;

(4) prior art under 35 U.S.C. § 102(f) identified by the name of the

person(s) from whom and the circumstances under which the invention

or any part of it was derived; and

(5) prior art under 35 U.S.C. § 102(g) identified by the identities of the

person(s) or entities involved in and the circumstances surrounding the

making of the invention prior to the patent applicant(s);

(b) whether each item of prior art anticipates each asserted claim or renders it

obvious and, if the latter, the detailed bases for these contentions;

(c) a chart identifying where specifically in each alleged item of prior art each

element of each asserted claim is found, including for each element that such party contends

is governed by 35 U.S.C. § 112, ¶ 6, the identity of the structure(s), act(s), or material(s) in

each item of prior art that performs the claimed function; and

(d) any other invalidity grounds including, but not limited to indefiniteness under

35 U.S.C. § 112, ¶ 2, or lack of enablement or written description under 35 U.S.C. § 112, ¶1,

of any of the asserted claims, including the detailed basis for these contentions.

3-4. Production Accompanying Preliminary Invalidity Contentions.

With the “Preliminary Invalidity Contentions,” the party opposing a claim of patent

infringement must produce or make available for inspection and copying:



(a) documents and information sufficient to show the operation of any aspects or

elements of an Accused Instrumentality identified by the patent claimant in its P.R. 3-1(c)

chart (e.g., source code, specifications, schematics, flow charts, artwork, or formulas);

(b) a copy of each item of prior art identified under P.R. 3-3(a) that does not appear

in the file history of the patent(s) at issue; and

(c) documents and information, including summaries when reasonably available,

sufficient to show the amount sold, revenues, costs, and profits of each Accused

Instrumentality identified under P.R. 3-1(b) since the issuance of the patents-in-suit.

3-5. Disclosure Requirement in Patent Cases Seeking Declaratory Judgment.

(a) Invalidity Contentions If No Infringement Claim. In all cases in which a

party seeks a declaratory judgment (“declaratory plaintiff”) that a patent is not infringed, is

invalid, or is unenforceable, P.R. 3-1 and 3-2 do not apply unless and until a party makes a

patent infringement claim. If the declaratory defendant does not assert a patent infringement

claim in its response to the claim, then, by the deadline set in the Scheduling Order, the

declaratory plaintiff must serve on each opposing party its Preliminary Invalidity Contentions

conforming to P.R. 3-3 and must produce or make available for inspection and copying the

documents and information described in P.R. 3-4. The declaratory plaintiff will file its Final

Invalidity Contentions by the deadline in the Scheduling Order.

(b) Application of Rules When No Specified Triggering Event. If the pleadings

in a case do not initially trigger the application of these Patent Rules, but later filings reveal

that patent claims or issues are involved, the parties, as soon as practicable, must confer

about whether these Patent Rules should be applied to the case and notify the presiding judge

of the issue.

(c) Inapplicability. P.R. 3-5 does not apply to cases in which a request for a

declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in

response to a complaint alleging infringement of the same patent.

3-6. Amended and Final Contentions – Leave of Court Not Required.

Each party’s “Preliminary Infringement Contentions” and “Preliminary Invalidity

Contentions” will be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement has good cause to believe that the

material produced by an opposing party under P.R. 3-4 requires amendment of

its “Preliminary Infringement Contentions” with respect to the information



required by P.R. 3-1(c) and (d), leave of court is not required. These amended

contentions must be served within a reasonable time after the opposing party’s

document production.

(b) If a party claiming patent infringement has good cause to believe that the

Court’s Claim Construction Ruling requires “Final Infringement Contentions”

amending its “Preliminary Infringement Contentions” with respect to the

information required by P.R. 3-1(c) and (d), leave of court is not required.

These Final Infringement Contentions must be served by the deadline set in the

Scheduling Order.

(c) By the deadline set in the Scheduling Order, each party opposing a claim of

patent infringement may serve, without leave of court, “Final Invalidity

Contentions” that amend that party’s “Preliminary Invalidity Contentions” with

respect to the information required by P.R. 3-3, if either:

(1) a party claiming patent infringement has served amended infringement

contentions under P.R. 3-6(a) or “Final Infringement Contentions”

under P.R. 3-6(b), or

(2) the party opposing a patent infringement claim has good cause to

believe that the Court’s Claim Construction Ruling requires the

amendment.

3-7. Amendments to Contentions By Leave of Court.

(a) Amendment or modification of the Preliminary or Final Infringement

Contentions or the Preliminary or Final Invalidity Contentions, other than expressly permitted

in P.R. 3-6, may be made only if the presiding judge finds there is good cause for the

requested changes.

(b) Good cause may include, but is not limited to, newly discovered (1) accused

instrumentalities, (2) bases for claiming infringement, or (3) prior art references, provided

that good cause may be found only if the party seeking leave to amend shows that it exercised

diligence in seeking the newly discovered information or documents.

3-8. Willfulness.



(a) If a party opposing a patent infringement claim will rely on an opinion of

counsel as part of a defense to a claim of willful infringement, that party must by the date(s)

set in the Scheduling Order:

(1) produce or make available for inspection and copying each opinion and

documents relating to the opinion as to which that party agrees the

attorney-client privilege or work-product protection has been waived;

and

(2) serve a privilege log identifying any other documents, except those

authored by counsel acting solely as litigation counsel, relating to the

subject matter of the opinion and withheld based on attorney-client

privilege or work product protection claims.

(b) If a party opposing a patent infringement claim does not comply with the

requirements of P.R. 3-8, that party may not rely on an opinion of counsel as

part of a defense to willful infringement unless all parties agree or the

presiding judge permits the defense based on a good cause showing.



(a) By the deadline set in the Scheduling Order, each party must simultaneously

exchange a list of claim terms, phrases, or clauses that the party contends

should be construed by the presiding judge and must identify any claim

element that the party contends should be governed by 35 U.S.C. § 112, ¶ 6.

(b) The parties must then meet and confer for the purposes of finalizing this list,

resolving or narrowing differences, and facilitating the preparation of a Joint

Claim Construction and Prehearing Statement.


(a) By the deadline set in the Scheduling Order, the parties must simultaneously

exchange a proposed “Preliminary Claim Construction” of each element of each claim term,

phrase, or clause in issue. Each “Preliminary Claim Construction” must also identify the

structures, acts, or materials corresponding to each claim element governed by 35 U.S.C.

§ 112, ¶ 6.

(b) At the same time the parties exchange their respective “Preliminary Claim

Constructions,” they must also exchange a preliminary identification of extrinsic evidence



they contend supports their respective claim constructions, such as dictionary definitions,

citations to learned treatises and prior art, and testimony of fact and expert witnesses. The

parties must identify each item of extrinsic evidence by production number or produce a copy

of any such item not previously produced. With respect to each fact or expert witness a party

intends to rely on for claim construction, the party must also provide a brief description of

the substance of that witness’s proposed testimony.

(c) The parties must then meet and confer for the purposes of narrowing the issues

and finalizing preparation of a Joint Claim Construction and Prehearing Statement.


(a) By the deadline set in the Scheduling Order, the parties must file a Joint Claim

Construction and Prehearing Statement that contains the following information:

(1) the construction of those claim terms, phrases, or clauses on which the

parties agree;

(2) each party’s proposed construction of each disputed element of a claim,

together with an identification of all references from the specification or

prosecution history that support that claim construction, and an identification

of extrinsic evidence known to the party on which it intends to rely either to

support its proposed claim construction or to oppose any other party’s

proposed claim construction, such as dictionary definitions, citations to learned

treatises and prior art, and fact and expert witnesses;

(3) the anticipated time necessary for the claim construction hearing;

(4) whether any party proposes to call one or more witnesses at that

hearing, the identity of each witness and, for each such expert witness, a

summary of the witness’s anticipated testimony; and

(5) a list of any other issues that might appropriately be taken up at a

prehearing conference before the Claim Construction Hearing, and proposed

dates, if not previously set, for any such prehearing conference.

(b) At the time of filing the Joint Claim Construction Statement, for each expert

witness a party discloses in response to P.R. 4-3(a)(4), that party must provide to the

opposing parties the materials required by FED. R. CIV. P. 26(a)(2).




The parties must complete by the deadline in the Scheduling Order all discovery

relating to claim construction identified in the Joint Claim Construction and Prehearing

Statement.

4-5. Claim Construction Briefs and Charts.

(a) By the deadlines set in the Scheduling Order:

(1) the party claiming patent infringement must serve and file an opening

brief and any evidence supporting its claim construction;

(2) each opposing party must serve and file its responsive brief and

supporting evidence;

(3) the party claiming patent infringement must serve and file its reply brief

and any evidence directly rebutting the supporting evidence contained

in an opposing party’s response; and

(4) the parties must submit the Joint Claim Construction Chart (see P.R. 4-

5(b)) on electronic media in WordPerfect format or in such other format

as the presiding judge directs.

(b) The Joint Claim Construction Chart must contain:

(1) a column listing in separate rows the complete language of each

disputed claim, with disputed terms in bold type;

(2) separate columns for each party’s proposed construction of each

disputed term;

(3) a column entitled “Court’s Construction” and otherwise left blank; and

(4) the patent and claim numbers where the disputed terms appears.

(c) The parties may also list agreed claim terms in the Joint Claim Construction

Chart. If included, the agreed terms must be marked “[AGREED]” and state in the “Court’s

Construction” column the parties’ agreed construction.

13

(d) The purpose of the Joint Claim Construction Chart is to assist the presiding

judge and the parties in tracking and resolving disputed terms. Accordingly, aside from the

requirements of this rule, the parties are afforded substantial latitude to fashion a chart in a

format that most clearly and efficiently outlines the disputed terms and proposed

constructions.

4-6. Claim Construction Hearing.

The presiding judge will determine if an evidentiary or other form of claim

construction hearing is necessary. The hearing will be conducted on the date set in the

Scheduling Order, unless otherwise reset by the judge.

Patent Order for Conference 12/1/09

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

_____________________________, §

Plaintiff, §

§

v. § CIVIL ACTION NO. H-________

§

____________________________, §

Defendant. §

ORDER SETTING SCHEDULING CONFERENCE,

PROPOSED SCHEDULING ORDER,

SCOPE OF PERMISSIBLE DISCOVERY AND

DIRECTIVE TO CONFER IN PATENT CASES

The Court issues this Order in preparation for the ________, 200_, Initial Case

Management Conference in this patent infringement case. The following are hereby

ORDERED.

PROPOSED DATES FOR SCHEDULING ORDER

Proposed dates for the Scheduling Order in this case will be discussed at the

conference. The parties are directed to meet and confer in accordance with FED. R. CIV. P.

26(f) and Rule 2-1 of the Rules of Practice for Patent Cases in the Houston Division of the

Southern District of Texas (“P.R.”, available at United States District Court for the Southern

District of Texas Court website www.txs.uscourts.gov) no later than 14 days before the

conference. The parties must file no later than 7 days before the conference a “Joint Case

Management Plan” setting forth the information required in P.R. 2-1 and, in brief, their


2Patent Order for Conference 12/1/09

disagreements, if any, on the schedule and procedures to govern this case. The parties also

must submit with the Plan a draft Scheduling Order using the template for patent cases on

the District’s website.

DISCOVERY ORDER

At the Scheduling Conference, the parties may make requests and/or suggestions to

the Court regarding discovery. In the interim, after a review of the pleaded claims and

defenses in this action and in furtherance of the management of the Court’s docket under

FED. R. CIV. P. 16, the Court issues the following DISCOVERY ORDER:

1. Disclosures. In conjunction with disclosures under FED. R. CIV. P. 26(a), and without

awaiting a discovery request, each party must disclose to every other party the

following information:

(a) the correct names of the parties to the lawsuit;

(b) the name, address, and telephone number of any potential parties;

(c) the legal theories and, in general, the factual bases of the disclosing party’s

claims or defenses (the disclosing party need not marshal all evidence that may

be offered at trial);

(d) the name, address, and telephone number of persons having knowledge of

relevant facts, a brief statement of each identified person’s connection with the

case, and a brief, fair summary of the substance of the information known by

such person;

(e) any indemnity and insuring agreements under which any person or entity may

be liable to satisfy part or all of a judgment entered in this action or to

indemnify or reimburse for payments made to satisfy the judgment;

(f) any settlement agreements relevant to the subject matter of this action;

(g) any statement of any party to the litigation;


2. Additional Disclosures.

(a) Each party must provide to every other party the following information:

(i) the disclosures required by the Court’s Patent Rules in accordance with

the deadlines set forth in said rules;

(ii) to the extent that any party pleads a claim for relief or defensive matter

other than those addressed in the Patent Rules, within forty-five (45)

days after the Scheduling Conference or the date the Scheduling Order

is issued by the Court, and without awaiting a discovery request, a copy

of all documents, data compilations and tangible things in the

possession, custody, or control of the party that are relevant to those

additionally pleaded claims or defenses involved in this action; and

(iii) within forty-five (45) days after the production of information under

P.R. 3-4(c), a complete computation of any category of damages

claimed by any party to the action, making available for inspection and

copying, the documents or other evidentiary materials on which such

computation is based, including materials bearing on the nature and

extent of injuries suffered; and authorizations necessary to obtain from

third parties documents on which the calculations are founded.

(b) If feasible, counsel must meet to exchange these and any other disclosures

required by this Order; otherwise, such disclosures must be served as provided

by FED. R. CIV. P. 5.

(c) By written agreement of all parties, alternative forms of disclosure may be

provided in lieu of paper copies. For example, the parties may agree to

exchange images of documents electronically or by means of computer disk;

or the parties may agree to review and copy disclosure materials at the offices

of the attorneys representing the parties instead of requiring each side to

furnish paper copies of the disclosure materials.

(d) Notification of the Court. The parties must promptly file a notice with the

Court that the disclosures required under this order have taken place, but no

detail is required.

3. Testifying Experts. By the date(s) provided in the Scheduling Order, in addition to

the information provided in the Patent Rules, each party shall disclose to the other

parties for each testifying expert:


(a) the expert’s name, address, and telephone number;

(b) the subject matter on which the expert will testify;

(c) the general substance of the expert’s mental impressions and opinions and a

brief summary of the basis for them, or if the expert is not retained by,

employed by, or otherwise subject to the control of the disclosing party,

documents reflecting information such as:

(i) whether the expert is retained by, employed by, or otherwise subject to

the control of the disclosing party;

(ii) all documents, tangible things, reports, models, or data compilations

that have been provided to, reviewed by, or prepared by or for the

expert in anticipation of the expert’s testimony; and

(iii) the expert’s current resume and bibliography.

4. Discovery Limitations. Discovery is limited in this case to the disclosures described

in Paragraphs 1 - 3 together with 60 interrogatories; 60 requests for admissions; a

reasonable number of requests for production or inspection not duplicative of the

Patent Rules disclosures; depositions of the parties; depositions on written questions

of custodians of business records for third parties; and depositions of three expert

witnesses per side. “Side” means a party or a group of parties with a common

interest. If parties seek depositions of third-party witnesses or additional experts, the

parties either must agree or raise the issue with the Court.

5. Privileged Information. There is no duty to disclose privileged documents or

information. However, the parties are directed to meet and confer concerning

privileged documents or information after the Scheduling Conference.

(a) By the date provided in the Scheduling Order, the parties must exchange

privilege logs identifying the documents or information and the basis for any

disputed claim of privilege in a manner that, without revealing information

itself privileged or protected, will enable the other parties to assess the

applicability of the privilege or protection.

(b) If the parties have no disputes concerning privileged documents or

information, then the parties must inform the Court of that fact by the date

provided in the Scheduling Order.


(c) A party may move the Court for an order compelling the production of any

privileged documents or information identified on any other party’s privilege

log. If such a motion is made, the party asserting the privilege must file with

the Court within thirty (30) days of the filing of the motion to compel proof in

the form of declarations or affidavits to support their assertions of privilege,

along with the documents over which privilege is asserted for in camera

inspection.

6. Pretrial Order and Accompanying Disclosures. By the date provided in the

Scheduling Order, each party must provide to every other party the materials and

disclosures regarding the evidence that the disclosing party intends to present at trial

as required by the form Pretrial Order (Appendix B to the Local Rules of the Southern

District of Texas), which information must include but not be limited to the following:

(a) Witness Lists: The name and, if not previously provided, the address and

telephone number, of each witness, separately identifying those whom the

party expects to present at trial and those whom the party may call if the need

arises.

(b) Deposition Designations: The designation of those witnesses whose testimony

is expected to be presented by means of a deposition, with designations to the

transcripts.

(c) Exhibit Lists and Copies: All exhibits must be pre-marked separately

identifying those which the party expects to offer in its case in chief and those

which the party may offer if the need arises.

(d) Objections, together with the grounds therefor, to live witnesses and deposition

designations by another party under subparagraph (b) above. Objections not

so disclosed are deemed waived unless excused by the Court for good cause

shown.

(e) Objections, together with the grounds therefor, to authentication and/or

admissibility of exhibits identified under subparagraph (c) above. Objections

not so disclosed are deemed waived unless excused by the Court for good

cause shown.

(f) Legal Memoranda and Related Material:

(i) Bench trials: proposed findings of fact and conclusions of law with

citation to authority;


(ii) Jury trials: joint proposed jury instructions with citation to authority,

and proposed verdict form.

7. Signatures. The disclosures required by this Order must be made electronically or

in writing and signed by the party making the disclosures. NOTE: Signatures by the

party or counsel constitute a certification that, to the best of the signer’s knowledge,

information and belief, such disclosure is complete and correct as of the time it is

made.

8. Protective Orders. The parties may submit a proposed protective order, preferably

using the form Protective Order for use in patent cases (available at the District’s

website), to ensure the confidentiality of parties’ materials is maintained during this

case to the extent feasible. To propose modifications to the form, see P.R. 2-2.

9. Rules of Practice. The Federal Rules of Civil Procedure, the District’s Local Rules,

and the District’s Local Patent Rules apply in this case, unless otherwise ordered. The

District Local Rules and the Local Patent Rules are available at the District’s website.

10. Discovery Disputes. Counsel are directed to adhere to procedures of the presiding

judge for bringing discovery disputes to the Court’s attention.

11. No Excuses. A party is not excused from the requirements of this Discovery Order

because it has not fully completed its investigation of the case, or because it

challenges the sufficiency of another party’s disclosures, or because another party has

not made its disclosures. Absent court order to the contrary, a party is not excused

from disclosure because there are pending motions to dismiss, to remand or to change

venue. Parties asserting the defense of qualified immunity may submit a motion to

limit disclosure to those materials necessary to decide the issue of qualified immunity.

12. E-Filing. Except for good cause shown or as provided in the Local Rules, all

documents (with the exception of correspondence and those documents referenced in

the District’s Local Rules) in cases pending in this Court must be filed electronically.

The file in each case is maintained electronically. Neither the Clerk’s Office nor the

Court will maintain a paper file except as provided in the District’s Local Rules.

When filing electronically, the Court prefers:

(a) that documents be published to PDF and then filed with the Court,

rather than filing scanned documents; and


(b) proposed orders be included as attachments to motions, not

incorporated within the filed motion and not filed as a separate docket

entry.

13. Duty to Supplement. After disclosure is made pursuant to this Order, each party is

under a duty to supplement or correct its disclosures immediately if the party obtains

information on the basis of which it knows that the information disclosed was either

incomplete or incorrect when made, or is no longer complete or true.

14. Courtesy Paper Copies. The parties must comply with the presiding judge’s

procedures for courtesy copies.

15. Hearing Notebooks. Unless a different time or method is provided by the presiding

judge or in the Scheduling Order in this case, the movant is to provide the Court, no

later than 14 days before any motion hearing, an original and one copy of a hearing

notebook containing all motion papers with the corresponding docket numbers on

each and all pleadings and exhibits appropriately tabbed.

16. Sealed Documents. The filing of sealed documents is disfavored. The Court will not

seal a document unless the movant shows the document contains genuinely

confidential or proprietary material, and otherwise meets the requirements for sealing

filed documents.

SIGNED at Houston, Texas, this ___ day of ________________, 200_.

[JUDGE’S NAME]

UNITED STATES DISTRICT JUDGE

PROPOSED PATENT CASE – SCHEDULING ORDER

[INSERT – CASE CAPTION]

It is hereby ORDERED, after consultation with the parties, that the following

schedule will apply in this case:

0 1/1/05 [sample date: chosen for illustration]

Scheduling Conference (see # 32 re: MEDIATION)

1 [2 weeks after Scheduling Conf.]1/15/05

Comply with P.R. 3-1 and P.R. 3-2: Parties to make disclosureof asserted claims and preliminary infringement contentions& make document production. After this date, it is necessary to obtain leave of court to addand/or amend infringement contentions, pursuant to Patent Rule(P.R.) 3-7.Join additional parties. It is not necessary to file a motion to joinadditional parties before this date. Thereafter, it is necessary toobtain leave of court to join additional parties. Add new patents and/or claims for patents-in-suit. It is notnecessary to file a motion to add additional patents or claimsbefore this date. Thereafter, it is necessary to obtain leave of courtto add patents or claims.

2 [6 weeks after # 1]2/26/05

Comply with P.R. 3-3 and 3-4: Parties to serve preliminaryinvalidity contentions and make document production.Thereafter, it is necessary to obtain leave of Court to add and/oramend invalidity contentions, pursuant to P.R.. 3-7.Add any inequitable conduct allegations to pleadings. Beforethis date, it is not necessary to file a motion for leave to addinequitable conduct allegations to pleadings. Thereafter, it isnecessary to obtain leave of court to add inequitable conductallegations to pleadings.

3 [2 weeks after # 2]3/12/05

Comply with P.R. 4-1: Parties’ exchange of proposed terms andclaim elements needing construction.

4 [3 weeks after # 3]4/2/05

Comply with P.R. 4-2: Parties’ exchange of preliminary claimconstructions and extrinsic evidence.Privilege Logs to be exchanged by parties (or a letter to the Courtstating that there are no disputes as to claims of privilegeddocuments).

2

5 [9 weeks after # 2; 17 weeks afterConf.]4/30/05

Deadline to comply with P.R. 4-3: Filing of joint claimconstruction and pre-hearing statement.

Disclosure of parties’ claim construction experts & service ofFED. R. CIV. P. 26(a)(2) materials

6 [matches # 5]4/30/05

Deadline for all parties to file amended pleadings (pre-claimconstruction). It is not necessary to file a Motion for Leave toAmend before the deadline to amend pleadings. (It will benecessary to file a Motion for Leave to Amend after this deadline.)

NOTE: If the amendment would affect preliminary infringementcontentions or preliminary invalidity contentions, a motion mustbe made pursuant to P.R. 3-7 irrespective of whether theamendment is made prior to this deadline.

7 [22 weeks after Scheduling Conf.] 6/4/05

Each party to provide name, address, phone number, andcurriculum vitae for up to three (3) candidates for a court-appointed special master (see FED. R. CIV. P. 53) or court-appointed expert (see FED. R. EV. 706), with informationregarding the nominee’s availability for Markman hearing or otherassignments as deemed necessary by the court. The parties shallindicate if they agree on any of the nominees.

8 [22 weeks after Scheduling Conf.;generally matches # 7] 6/4/05

Deadline for parties (optional) to provide Court with writtentutorials concerning technology involved in patent in issue. Ifa special master or court-appointed expert is hereafter selected, theparties will provide each tutorial to the master or expert.

9 [2 weeks after # 6; generally 19 weeksafter Scheduling Conf.] 5/14/05

Responses to amended pleadings due.

10 [2 weeks after # 9; 21 weeks afterScheduling Conf.] 5/28/05

Discovery deadline on claim construction issues (see P.R. 4-4)

11 [7 weeks after # 5; 3 weeks after # 10;generally 24 weeks after SchedulingConf.]6/18/05

Comply with P.R. 4-5(a): the party claiming patentinfringement must serve and file a Claim Construction OpeningBrief with its supporting evidence. The moving party is to providethe Court with 2 copies of the binders containing their OpeningBrief and exhibits. If a special master or court-appointed experthas been appointed, the moving party must provide the OpeningBrief on disk or CD along with a hard copy, tabbed and bound innotebook format with exhibits, to the special master or court-appointed expert.

12 [2 weeks after # 11]7/2/05

Comply with P.R. 4-5(b): Responsive Brief and supportingevidence due to party claiming patent infringement. Themoving party is to provide the Court with two (2) courtesy copiesof the Responsive Brief and exhibits. If a special master or court-appointed expert has been appointed, the nonmoving party mustsupply a copy of its Response on disk or CD along with a hardcopy, tabbed and bound in notebook format with exhibits, to thespecial master or court-appointed expert.

3

13 [1 week after # 12]7/9/05

Comply with P.R. 4-5(c): Party claiming infringement shall filea Reply Brief and supporting evidence on claim construction.The moving party is to provide the Court with two (2) copies ofthe Reply Brief and exhibits.

If a special master or court-appointed expert has been appointed,the moving party must provide the Reply Brief on disk or CDalong with a hard copy, tabbed and bound in notebook format withexhibits, to the special master or court-appointed expert.

Parties to file a notice with the Court stating the estimatedamount of time requested for the Claim Construction (Markman)Hearing. The Court will notify the parties if it is unable toaccommodate this request.

14 [1 week before Markman Hearing] 8/6/05

Parties to submit Claim Construction Chart in WordPerfect 8.0(or higher) format in compliance with P.R. 4-5(d).

15 [approx. 15 weeks after # 5; approx. 5weeks after # 13; 32 weeks afterScheduling Hrg.]8/13/05

Claim Construction (Markman) Hearing at ____ _.m. at theUnited States District Court, 515 Rusk Street, Courtroom 9-F,Houston, Texas

16 [Markman ruling within 6 weeks afterMarkman hearing]9/24/05

Court’s Decision on Claim Construction (Markman Ruling) (If ruling is late, parties may seek amendment of remainingdates in Scheduling Order.)

17 [4 weeks after Markman Ruling (# 16)]10/22/05

Deadline for final infringement contentions and to amendpleadings on infringement claims NOTE: Except as provided in P.R. 3-6, if the amendment wouldaffect preliminary or final infringement contentions, a motion mustbe made under P.R. 3-7 irrespective of whether the amendment ismade before this deadline.

18 [6 weeks after Markman Ruling (# 16);2 weeks after # 17]11/5/05

Deadline for final invalidity contentions and to amendpleadings on invalidity claims.NOTE: Except as provided in P.R. 3-6, if the amendment wouldaffect preliminary or final invalidity contentions, a motion mustbe made under P.R. 3-7 irrespective of whether the amendment ismade before this deadline.

19 [matches # 17; ~10.5 mos. afterScheduling Conf.] 10/22/05

Comply with P.R.3-8. All parties furnish documents andprivilege logs pertaining to willful infringement.

20 [4 weeks after # 19 ] [~ 8 weeks afterMarkman Ruling (# 16) and ~11.5mos. after Scheduling Conf.)]11/19/05

Date for designation of expert witnesses on non-constructionissues on which the party has the burden of proof (“BOP”) andservice of expert witness reports. [Refer to Fed. Rules of Civil Proc. for information required.]

21 [4 weeks after # 20]12/17/05

Date for designation of responsive expert witnesses on non-claim construction issues on which party does not have BOP,and service of responsive expert witness reports. [Refer to Fed.Rules of Civil Proc. for information required.]

4

22 [8 weeks after # 21, ~ 5 mos. afterMarkman Ruling (# 16), and ~14.5mos. after Sched. Conf.]2/11/06

Discovery Deadline on all issues.

(If ruling is late, parties may seek amendment of remainingdates in Scheduling Order.)

23 Motions due: 3/11/06 [4+ weeks after# 22] Responsive Briefs due (3 wks): 4/1/06Reply Briefs due (1 wk): 4/8/06

Dispositive and Non-Dispositive Motions and Briefing deadlines

24 [~ 8 weeks. after motions in # 23 filed;~17 mos. from Sched’l’g Conf.] 5/6/06

Court’s ruling on all pending motions

25 [4 weeks after # 24; at least 2 weeksbefore Docket Call] 6/3/06

Joint Pretrial Order due including all components required byLocal Rules and this Court’s Procedures (such as witness lists,exhibit lists and copies of exhibits (see # 29 below), and (a) inbench trials, proposed findings of fact and conclusions of law withcitation to authority and (b) for jury trials, joint proposed juryinstructions with citation to authority, and proposed verdict form).Statement of Expected Length of Trial: _____ days (~6 hourswith jury per day).

26 [same day as JPTO (# 25) – but filedseparately] 6/3/06

Written notice due for request for daily transcript or real timereporting of trial proceedings.

27 [Same day as JPTO (# 25)] 6/3/06

Video and Deposition Designations due. Each party who proposes to offer a deposition by video must filea disclosure identifying the line and page numbers to be offered.

All other parties will have 1 week to file a response requestingcross designation line and page numbers to be included. Each party is responsible for preparation of the final editedvideo in accordance with their parties’ designations and theCourt’s rulings on objections.

28 [same day as JPTO (# 25)] 6/3/06

Motions in Limine due.

29 [1 week after JPTO filed (# 25)] 6/10/06

Objections to opponents’ proposed witnesses, proposed exhibits,designated deposition testimony, and any other matters due.

30 [1 day before Docket Call – 3 p.m.]6/17/06

The parties are directed to confer and advise the Court about (a)which limine requests the parties agree to.

31 [18.5 mos. after Scheduling Conf.; ~20mos. after case filed] 6/18/06

9:00 a.m. Docket Call/ Final Pretrial Conference at the UnitedStates District Court, 515 Rusk Street, Houston, Texas.

5

32 MEDIATION is requiredprior to Docket Call, 6/17/06

The Court refers most patent cases to mediation.The parties should discuss proposed mediatorsand timing of mediation prior to the SchedulingConference and be prepared wi threcommendations for the Court.

Mediation to be completed by this date. The parties must selecta mediator for this case. The parties and mediator must complywith S.D. TEXAS LOCAL RULE 16.

33 [generally, the first day of jury trial]~ July, 2006

9:00 a.m. JURY SELECTION at the United States District Court

34 [Generally same date as jury selection# 33] ~ July, 2006

JURY TRIAL (9:30 a.m.) commences, subject to Court’s criminaldocket

OTHER REQUIREMENTS and LIMITATIONS:

(a) All depositions to be read into evidence as part of the parties’ case-in-chief must beEDITED (with notice to opposing parties) to exclude all unnecessary, repetitious, andirrelevant testimony. ONLY those portions relevant to the issues in controversy may be readinto evidence.

(b) The Court will refuse to entertain any motion to compel discovery filed after the date of thisOrder unless the movant advises the Court within the body of the motion that counsel for theparties have first conferred in a good faith attempt to resolve the matter. See SouthernDistrict of Texas Local Rules 7.1, 7.2.

(c) The following excuses will neither warrant a continuance nor justify a failure to complywith the discovery deadline:

(i) the fact that there are motions for summary judgment or motions to dismiss pending;

(ii) the fact that one or more of the attorneys is set for trial in another court on the sameday, unless the other setting was made prior to the date of this order or was made asa special provision for the parties in the other case;

(iii) the failure to complete discovery prior to trial, unless the parties can demonstratethat it was impossible to complete discovery despite their good faith effort to do so.

(d) Exhibits

(i) Each party must provide the Court with a courtesy copy of exhibits and exhibit lists.The presiding judge’s preferred format for Exhibit Lists is available on the Court’swebsite at www.txs.uscourts.gov under Court Procedures.

(ii) If exhibits are voluminous, provide only specific pages that pertain to the issues onthe two courtesy copies. The original exhibits that are agreed upon by the parties,should be ready to be tendered to the Clerk of the Court at the beginning of trial.

6

Other exhibits that are admitted during trial should be tendered to the Clerk of theCourt immediately after admission.

(iii) The parties are to label all proposed exhibits with the following information on eachlabel: Designation of Plaintiff’s or Defendant’s Exhibit Number and Case Number. For example:

SIGNED at Houston, Texas, this ___ day of _______________, 200_.

_________________________________

[JUDGE’S NAME]

UNITED STATES DISTRICT JUDGE

Plaintiff’s Exhibit

Exhibit No. ______________

Case No. ________________

Defendant’s Exhibit

Exhibit No. _______________

Case No. _________________

Patent Protective Order 12/1/09

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

_____________________, §

Plaintiff, §

§

v. § CIVIL CASE NO. H-_______

§

§

_____________________, §

Defendant. §

PROTECTIVE ORDER

1. Proceedings and Information Governed. This Order ("Protective Order") is made

under Rule 26(c) of the Federal Rules of Civil Procedure (“FED. R. CIV. P.”).

This Protective Order applies to any document, information, or other tangible or

intangible thing (collectively, “documents”) furnished by a party to any other party, as well

as documents furnished by non-parties who receive subpoenas in connection with this action,

if and when the documents are designated by a party or non-party as “Confidential

Information” or “Highly Confidential Information” in accordance with the terms of this

Protective Order. This Protective Order also applies to copies, excerpts, abstracts, analyses,

summaries, descriptions, or other forms of recorded information or data containing,

reflecting, or disclosing all or parts of designated documents.

2. Designation and Maintenance of Documents and Information.

A. “Confidential Information” designation means that the document contains trade

secrets or commercial information not publicly known, which trade secrets or commercial

information is of technical or commercial advantage to its possessor, in accordance with FED.

R. CIV. P. 26(c)(7), or other information required by law or agreement to be kept confidential.

B. The “Highly Confidential Information” designation means that the document

contains information that the producing party deems especially sensitive, which may include,

but is not limited to, confidential research and development, financial, technical, marketing,

2Patent Protective Order 12/1/09

any other sensitive trade secret information, or information capable of being utilized for the

preparation or prosecution of a patent application dealing with such subject matter.

C. “Confidential Information” and “Highly Confidential Information” does not

include, and this Protective Order does not apply to, documents already in the knowledge or

possession of the party to whom disclosure is made unless that party is already bound by an

agreement not to disclose such information, or information that has been disclosed to the

public or third persons in a manner making such information no longer confidential.

3. Documents Produced in Discovery and Depositions.

A. Documents and things produced during the course of this litigation within

the scope of paragraph 2(A) or 2(B) above, may be designated by the producing party as

containing “Confidential Information” by placing on each page and each thing a legend

substantially as follows:

CONFIDENTIAL INFORMATION

SUBJECT TO PROTECTIVE ORDER

Documents and things produced during the course of this litigation within the scope of

paragraph 2(A) above may be designated by the producing party as containing “Highly

Confidential Information” by placing on each page and each thing a legend substantially as

follows:

HIGHLY CONFIDENTIAL INFORMATION

SUBJECT TO PROTECTIVE ORDER

B. Depositions

(i) For deposition testimony or exhibits to be entitled to protection under

this Order, a party must designate the testimony and exhibits disclosed at a deposition as

“Confidential Information” or “Highly Confidential Information” by requesting the reporter

to so designate the transcript or any portion of the transcript at the time of the deposition.

(ii) If no such designation is made at the time of the deposition, any party

has fourteen (14) days after delivery by the court reporter of the transcript of the deposition

session to designate, in writing to the other parties and to the court reporter, what portions

of the transcript and which exhibits the party designates as “Confidential Information” and

“Highly Confidential Information.”


(iii) During the transcription and following fourteen (14) day period after a

deposition session, the transcript and exhibits must be treated as Highly Confidential

Information, unless the disclosing party consents to less confidential treatment of the

information.

(iv) Each party and the court reporter must attach a copy of any final and

timely written designation notice to the transcript and each copy of the transcript in its

possession, custody or control, and the portions designated in such notice must thereafter be

treated in accordance with this Protective Order. It is the responsibility of counsel for each

party to maintain materials containing Confidential Information or Highly Confidential

Information in a secure manner and appropriately identified so as to allow access to such

information only to such persons and under such terms as is permitted under this Protective

Order.

(v) If no such designation is made at the deposition or within the fourteen

(14) day period following delivery of the transcript, then the entire deposition will be

considered devoid of Confidential Information or Highly Confidential Information.

4. Inadvertent Failure to Designate.

A. The inadvertent failure to designate a documents as “”Confidential

Information” or “Highly Confidential Information” will not be a waiver of a claim that the

document contains confidential information, and will not prevent the producing party from

designating such information as confidential at a later date in writing, so long as the

designation is done with particularity.

B. In the event a producing party late designates a document as “Confidential

Information” or “Highly Confidential Information,” the document must be treated by the

receiving party as confidential from the time of receipt of the notice of the “Confidential

Information” or “Highly Confidential Information” designation.

5. Challenges to Designations.

A party’s designation of documents “Confidential Information” or “Highly

Confidential Information” is not binding if the procedures below are followed:

A. A receiving party may challenge a producing party’s designation at any time.

Any receiving party may request in writing that the producing party change the designation.

The producing party within fourteen (14) days after receipt of a written challenge, must

advise the receiving party whether or not it will change the designation.


B. If the parties are unable to reach agreement after the expiration of this fourteen

(14) day period, they shall confer. If they cannot resolve the issue, the receiving party may

seek an order to alter the confidential status of the designated information.

C. Until the presiding judge has ruled on a dispute under this paragraph, the

“Confidential Information” or “Highly Confidential Information” designation will remain

in full force and effect, and the document continues to be protected by this Protective Order.

6. Disclosure and Use of Confidential Information.

A. Information designated as “Confidential Information” or “Highly Confidential

Information” may only be used for purposes of preparation, trial, and appeal of this action.

“Confidential Information” or “Highly Confidential Information” may not be used under any

circumstances for prosecuting any patent application, for patent licensing, or for any other

purpose.

B. Subject to paragraph 9 below, “Confidential Information” may be disclosed by

the receiving party only to the following individuals, provided that such individuals are

informed of the terms of this Protective Order: (a) two employees of the receiving party

who are required in good faith to provide assistance in the conduct of this litigation,

including any settlement discussions, and who are identified as such in writing to counsel for

the designating party in advance of the disclosure; (b) two in-house counsel who are

identified by the receiving party; (c) outside counsel of record for the receiving party; (d)

supporting personnel employed by (b) and (c), such as paralegals, legal secretaries, data entry

clerks, legal clerks, and private photocopying services; (e) experts or consultants; and (f)

any persons requested by counsel to furnish services such as document coding, image

scanning, mock trial, jury profiling, translation services, court reporting services,

demonstrative exhibit preparation, or the creation of any computer database from documents.

C. Subject to paragraph 9 below, “Highly Confidential Information” may be

disclosed by the receiving party only to the following individuals, provided that such

individuals are informed of the terms of this Protective Order: (a) outside counsel of record

for the receiving party; (b) supporting personnel employed by outside counsel, such as

paralegals, legal secretaries, data entry clerks, legal clerks, private photocopying services;

(c) experts or consultants; and (d) those individuals designated in paragraph 6(F)(c) below.

D. Further, prior to disclosing “Confidential Information” or “Highly Confidential

Information” to a receiving party's proposed expert, consultant, or employees, the receiving

party must provide to the producing party a signed Confidentiality Agreement in the form

attached as Exhibit A, the resume or curriculum vitae of the proposed expert or consultant,


the expert or consultant's business affiliation, and any current and past consulting

relationships in the industry. The producing party will thereafter have fourteen (14) days

from receipt of the Confidentiality Agreement to object to any proposed individual. The

objection must be made for good cause and in writing, stating with particularity the reasons

for the objection. Failure to object within fourteen (14) days constitutes approval. If the

parties are unable to resolve any objection, the receiving party may apply to the presiding

judge to resolve the matter. There will be no disclosure to any proposed individual during

the fourteen (14) day objection period, unless that period is waived by the producing party,

or if any objection is made, until the parties have resolved the objection, or the presiding

judge has ruled upon any resultant motion.

E. Counsel is responsible for the adherence by third-party vendors to the terms

and conditions of this Protective Order. Counsel may fulfill this obligation by obtaining a

signed Confidentiality Agreement in the form attached as Exhibit B.

F. “Confidential Information” or “Highly Confidential Information” may be

disclosed to a person who is not already allowed access to such information under this

Protective Order if: (a) the information was previously received or authored by the person

or was authored or received by a director, officer, employee or agent of the company for

which the person is testifying as a designee under FED. R. CIV. P. 30(b)(6); (b) the

designating party is the person or is a party for whom the person is a director, officer,

employee, consultant or agent; or (c) counsel for the party designating the material agrees

that the material may be disclosed to the person.

In the event of disclosure under this section 6(F), only the reporter, the person, his or

her counsel, the presiding judge, and persons to whom disclosure may be made and who are

bound by this Protective Order, may be present during the disclosure or discussion of

Confidential Information.

Disclosure of material pursuant to this section 6(F) does not constitute a waiver of the

confidential status of the material so disclosed.

7. Non-Party Information.

The existence of this Protective Order must be disclosed to any person producing

documents, tangible things, or testimony in this action who may reasonably be expected to

desire confidential treatment for such documents, tangible things or testimony. Any such

person may designate documents, tangible things, or testimony confidential pursuant to this

Protective Order.


8. Filing Documents With the Court.

Any party may submit Confidential Information to the court under seal by designating

the document “sealed” in the CM/ECF system of the court or may deliver the document for

filing by the Clerk’s Office. If a party delivers a copy to the court, the document must be in

a sealed envelope bearing the caption of this action and a label containing the following:

CONFIDENTIAL INFORMATION

[ case caption]

This envelope, which is being filed under seal,

contains documents that are subject to a Protective Order

governing the use of confidential discovery material.

9. No Prejudice.

Producing or receiving “Confidential Information” or “Highly Confidential

Information,” or otherwise complying with the terms of this Protective Order, will not: (a)

operate as an admission by any party that any particular “Confidential Information” or

“Highly Confidential Information” contains or reflects trade secrets or any other type of

confidential or proprietary information; (b) prejudice the rights of a party to object to the

production of information or material that the party does not consider to be within the scope

of discovery; (c) prejudice the rights of a party to seek a determination by the presiding

judge that particular materials be produced; (d) prejudice the rights of a party to apply to the

presiding judge for further protective orders; or (e) prevent the parties from agreeing in

writing to alter or waive the provisions or protections provided for in this Protective Order

with respect to any particular information or material.

10. Conclusion of Litigation.

Within sixty (60) days after final judgment in this action, including the exhaustion of

all appeals, or within sixty (60) days after dismissal pursuant to a settlement agreement, each

party or other person subject to the terms of this Protective Order is under an obligation to

destroy or return to the producing party all materials and documents containing “Confidential

Information” or “Highly Confidential Information,” and to certify to the producing party that

this destruction or return has been done. However, outside counsel for any party is entitled

to retain all court papers, trial transcripts, exhibits, and attorney work provided that any such

materials are maintained and protected in accordance with the terms of this Protective Order.


11. Other Proceedings.

By entering this Protective Order and limiting the disclosure of information in this

case, the presiding judge does not intend to preclude another court from finding that

information may be relevant and subject to disclosure in another case. Any person or party

subject to this Protective Order who may be subject to a motion to disclose another party's

information designated “Confidential” or “Highly Confidential” pursuant to this Protective

Order must promptly notify that party of the motion so that the party may have an opportunity

to appear and be heard on whether that information should be disclosed.

12. Remedies.

It is ORDERED that this Protective Order will be enforced by the sanctions set forth

in FED. R. CIV. P. 37(a) and any other sanctions as may be available to the presiding judge,

including the power to hold parties or other violators of this Protective Order in contempt.

All other remedies available to any person injured by a violation of this Protective Order are

fully reserved.

13. Relief from Protective Order.

Any party may petition the presiding judge for good cause shown if the party desires

relief from a term or condition of this Protective Order.

Signed at Houston, Texas, this ____ day of ___________, 20_ .

____________________________________

[Judge’s Name]

United States District Judge

Patent Protective Order 12/1/09

Exhibit A

[CAPTION]

CONFIDENTIALITY AGREEMENT FOR EXPERT,CONSULTANT OR EMPLOYEES OF ANY PARTY

I, ______________________________, under penalty of perjury, 28 U.S.C. § 1746, that:

1. Information, including documents and things, designated as "ConfidentialInformation" or "Highly Confidential Information," as defined in the Protective Order entered in theabove-captioned action ("Protective Order"), is being provided to me pursuant to the terms andrestrictions of the Protective Order.

2. I have been given a copy of and have read the Protective Order.

3. I am familiar with the terms of the Protective Order and I agree to comply with andto be bound by its terms.

4. I submit to the jurisdiction of the United States District Court for the SouthernDistrict of Texas for enforcement of the Protective Order.

5. I agree not to use any “Confidential Information” or “Highly ConfidentialInformation” disclosed to me pursuant to the Protective Order except for purposes of the above-captioned litigation and not to disclose any of this information to persons other than thosespecifically authorized by the Protective Order, without the express written consent of the party whodesignated the information as confidential or by order of the presiding judge.

6. I also agree to notify any stenographic, clerical or technical personnel who arerequired to assist me of the terms of this Protective Order and of its binding effect on them and me.

7. I understand that I am to retain all documents or materials designated as or containing“Confidential Information” or “Highly Confidential Information” in a secure manner, and that allsuch documents and materials are to remain in my personal custody until the completion of myassigned duties in this matter, whereupon all such documents and materials, including all copiesthereof, and any writings prepared by me containing any “Confidential Information” or “HighlyConfidential Information” are to be returned to counsel who provided me with such documents andmaterials.

Signed at _______________, _________, this ________, day of ___________, 20__.

_______________________________Signature


Exhibit B

[CAPTION]

CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS

I, ______________________________, under penalty of perjury, 28 U.S.C. § 1746, that:

1. Information, including documents and things, designated as "ConfidentialInformation" or "Highly Confidential Information" as defined in the Protective Order entered in theabove-captioned action ("Protective Order"), is being provided to me pursuant to the terms andrestrictions of the Protective Order.

2. I have been given a copy of and have read the Protective Order.

3. I am familiar with the terms of the Protective Order and I agree to comply with andto be bound by its terms.

4. I submit to the jurisdiction of the United States District Court for the SouthernDistrict of Texas for enforcement of the Protective Order.

5. I agree not to use any Confidential Information or Highly Confidential Informationdisclosed to me pursuant to the Protective Order except for purposes of the above-captionedlitigation and not to disclose any of this information to persons other than those specificallyauthorized by the Protective Order, without the express written consent of the party who designatedthe information as confidential or by order of the presiding judge.

Signed at _______________, _________, this ________, day of ___________, 20__.

__________________________________Signature

TABLE OF CONTENTS

Page

91004-1100/LEGAL14664182.1 -i-

A. SCOPE OF RULES ........................................................................................................... 1

100 Title. ....................................................................................................................... 1

101 Scope and Construction. ........................................................................................ 1

102 Effective Date. ....................................................................................................... 1

B. GENERAL PROVISIONS ................................................................................................ 1

110 Joint Status Report. ................................................................................................ 1

111 Confidentiality. ...................................................................................................... 2

112 Discovery Regarding Contentions. ........................................................................ 3

C. PATENT INITIAL DISCLOSURES ................................................................................. 3

120 Disclosure of Asserted Claims and Infringement Contentions. ............................. 3

121 Non-Infringement and Invalidity Contentions. ...................................................... 4

122 Document Production Accompanying Invalidity Contentions. ............................. 5

123 Disclosure Requirement in Patent Cases for Declaratory Judgment. .................... 5

124 Amended Contentions. ........................................................................................... 5

125 Filing of Contentions. ............................................................................................ 6

D. CLAIM CONSTRUCTION PROCEEDINGS .................................................................. 6

130 Exchange of Proposed Terms and Claim Elements for Construction. ................... 6

131 Exchange of Preliminary Claim Constructions and Extrinsic Evidence. .............. 6

132 Joint Claim Construction and Prehearing Statement. ............................................ 7

133 Completion of Claim Construction Discovery. ..................................................... 8

134 Claim Construction Briefs. .................................................................................... 8

135 Claim Construction Hearing. ................................................................................. 8

E. WILLFULNESS ................................................................................................................ 8

SCHEDULE UNDER DRAFT LOCAL RULES ........................................................ Appendix 1

SAMPLE JOINT CLAIM CHART .............................................................................. Appendix 2

PAT 1 91004-1100/LEGAL14664182.1

A. SCOPE OF RULES

100 Title.

These rules are entitled Supplemental Patent Rules and may be cited as “Local Patent Rules.”

101 Scope and Construction.

These rules apply to all civil actions filed in or transferred to this Court which allege infringement of a utility patent or which seek a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. These rules are designed to streamline the pre-trial and claim construction process, and generally to reduce the cost of patent litigation. The rules set forth a schedule for claim construction, including contentions, disclosures and briefing. The deadlines through the Claim Construction Hearing for an infringement action are illustrated in Appendix 1 attached hereto. The Court may eliminate or modify the obligations and deadlines set forth in these Local Patent Rules based on the circumstances of any particular case, including, without limitation, the complexity of the case or the number of patents, claims, products, or parties involved. The Civil Local Rules of this Court shall also apply to these actions, except to the extent that they are inconsistent with these Local Patent Rules.

102 Effective Date.

These Local Patent Rules shall take effect on January 1, 2009 and shall apply to any case filed thereafter and to any pending case in which the Rule 26(f) discovery conference has not yet taken place.

B. GENERAL PROVISIONS

110 Joint Status Report.

When the parties confer with each other pursuant to Fed. R. Civ. P. 26(f) and CR 16(a), in addition to the matters covered by Fed. R. Civ. P. 26, the parties shall discuss and address in the Joint Status Report the following topics:

(1) Whether changes should be made in the timing, form, or requirement for disclosures under Rule 26(a), including a statement as to when disclosures under Rule 26(a)(1) were made or will be made;

(2) The subjects on which discovery may be needed, when discovery should be completed, and whether discovery should be conducted in phases or be limited to or focused upon particular issues;

(3) Whether changes should be made in the limitations on discovery imposed under these rules or by local rule, and what other limitations should be imposed;

PAT 2 91004-1100/LEGAL14664182.1

(4) Any other orders that should be entered by the court under Rule 26(c) or under Rule 16(b) and (c);

(5) Any proposed modification of the deadlines provided for in these Local Patent Rules, and the effect of any such modification on the date and time of the Claim Construction Hearing, if any;

(6) Whether confidentiality concerns affect the disclosures contemplated in these rules and, if so, the parties' position on how they should be addressed;

(7) Whether and/or when a tutorial might be scheduled to assist the Court to understand the underlying technology;

(8) Whether discovery should be allowed before the disclosures required by Patent Local Rule 120;

(9) Whether any party plans to bring a motion for preliminary injunction or a dispositive motion before the Claim Construction Hearing and, if so, the nature of such motion;

(10) The need for and any specific limits on discovery relating to claim construction, including depositions of witnesses, including expert witnesses;

(11) Whether the Court should appoint an expert to hear and make recommendations on claim construction issues;

(12) The nature of the Claims Construction Hearing (e.g., an evidentiary hearing);

(13) Proposed deadlines for discovery, dispositive motions, mediation, and trial dates; and

(14) Whether the Court should hold a Scheduling Conference to address the issues raised in the Joint Status Report.

111 Confidentiality.

To the extent a party claims that documents or information to be produced under these Local Patent Rules are confidential, the parties shall negotiate, in good faith, an agreement to protect the confidentiality of such documents or information and/or the form of an order to accomplish such protection. Any proposed protective order will be governed in all respects by Federal Rule of Civil Procedure 26 and Local Rule 5(g).

To the extent the parties cannot reach an agreement and the Court has not entered a protective order, any document or information produced under these Patent Local Rules deemed confidential by the producing party shall be marked "confidential" or with some other confidential designation (such as "Confidential – Outside Attorneys Eyes Only") by the

PAT 3 91004-1100/LEGAL14664182.1

disclosing party and disclosure of the confidential document or information shall be limited to each party’s outside attorney(s) of record and the employees of such outside attorney(s).

This confidentiality restriction shall apply only between the parties, and does not entitle such documents or information to be filed under seal without leave of Court.

112 Discovery Regarding Contentions.

Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate ground for objecting to an opposing party’s discovery request (e.g., interrogatory, document request, request for admission, deposition question), or declining to provide information otherwise required to be disclosed pursuant to Fed. R. Civ. P. 26(a)(1), that the discovery request or disclosure requirement is premature in light of, or otherwise conflicts with, these Local Patent Rules. A party may object, however, to disclosing under Fed. R. Civ. P. 26(a)(1) or responding to discovery requests seeking the following categories of information on the ground that they are premature in light of the timetable provided in the Local Patent Rules:


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

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

(d) Requests seeking to elicit from an accused infringer the identification of any opinions of counsel, and related documents, that it intends to rely upon as a defense to an allegation of willful infringement.

Where a party properly objects to a discovery request or disclosure obligation on the ground set forth above, the requesting party may file a motion to compel to resolve the objection. If no motion is filed or the court upholds the objection, the producing party shall provide the requested information on the date on which it is required to provide the requested information to an opposing party under these Local Patent Rules, unless there exists another legitimate ground for objection.

C. PATENT INITIAL DISCLOSURES

120 Disclosure of Asserted Claims and Infringement Contentions.

Within 15 days of the Scheduling Conference or, if there is no Scheduling Conference, entry of the case schedule, a party claiming patent infringement shall serve on all parties a “Disclosure of Asserted Claims and Infringement Contentions.” The “Disclosure of Asserted Claims and Infringement Contentions” shall contain the following information:

PAT 4 91004-1100/LEGAL14664182.1

(a) Each claim ("Asserted 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. § 217 asserted;

(b) For each Asserted Claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Device”) of each opposing party. 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, allegedly results in the practice of the claimed method or process;

(c) A chart identifying specifically where each element of each Asserted Claim is found within each Accused Device, including for each claim element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Device that performs the claimed function;

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

(e) Whether each element of each asserted claim is claimed to be literally present and/or present under the doctrine of equivalents in the Accused Device; and

(f) For any patent that claims the priority of an earlier application, the priority date to which each asserted claim allegedly is entitled.

121 Non-Infringement and Invalidity Contentions.

Not later than 30 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Non-Infringement and Invalidity Contentions” which shall contain the following information:

(a) For each Asserted Claim against that party, a chart stating whether the party admits that that element is present in the Accused Device or contends that it is absent from the Accused Device. If the party contends that an element is absent from the Accused Device, it shall set forth in detail the basis for that contention.

(b) Each item of prior art that allegedly anticipates each Asserted Claim or renders it obvious. Prior art patents shall be identified by number, country of origin, and date of issue. Each prior art publication shall be identified by its title, date of publication, and where feasible, author and publisher. Public uses or sales shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity 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

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made known. A claim that the invention was derived from a third party shall be identified by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived. A claim of prior inventorship shall be identified by providing the identities of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);

(c) Whether each item of prior art anticipates each Asserted Claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination must be identified; and

(d) A chart identifying where specifically in each alleged item of prior art each element of each Asserted Claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function.

122 Document Production Accompanying Invalidity Contentions.

With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying a copy of each item of prior art identified pursuant to Local Patent Rule 121(b) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an accurate English translation of the portion(s) relied upon must be produced.

123 Disclosure Requirement in Patent Cases for Declaratory Judgment.

(a) In all cases in which a party files a complaint or other pleading seeking a declaratory judgment that a patent is invalid, Local Patent Rule 120 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant does not assert a claim for patent infringement, no later than 14 days after the defendant serves its answer, or 14 days after the Scheduling Conference, whichever is later, the party seeking a declaratory judgment must serve upon each opposing party its Preliminary Invalidity Contentions that conform to Local Patent Rule 121 and produce or make available for inspection and copying the documents described in Local Patent Rule 122.

(b) Inapplicability of Rule. This Patent L.R. 123 shall not apply to cases in which a request for a declaratory judgment that a patent is invalid is filed in response to a complaint for infringement of the same patent.

124 Amended Contentions.

Amendment of the Infringement Contentions or the Invalidity Contentions may be 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 the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Device which was

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not discovered, despite diligent efforts, before the service of the Infringement Contentions. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

125 Filing of Contentions.

The contentions referred to above should not be filed with the Court unless they are the subject of a motion, in which case they may be attached as appropriate to the motion papers as necessary.

D. CLAIM CONSTRUCTION PROCEEDINGS

130 Exchange of Proposed Terms and Claim Elements for Construction.

(a) Within 20 days of service of the contentions needed to be served pursuant to Local Patent Rule 121, each party shall serve on the other a list of claim terms, phrases, or clauses which that party contends should be construed by the Court, and identify any claim element which that party contends should be governed by 35 U.S.C. § 112(6).

(b) The parties shall thereafter meet and confer, by telephone or in person, for the purposes of finalizing this list, narrowing or resolving differences, and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement.

131 Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

(a) Not later than 30 days after the exchange of “Proposed Terms and Claim Elements for Construction” pursuant to Local Patent Rule 130, each party shall serve proposed constructions of each claim term, phrase, or clause that the parties have identified for claim construction purposes. Each such “Preliminary Claim Construction” shall also, for each element that any party contends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that element.

(b) At the same time the parties exchange their respective “Preliminary Claim Constructions,” they shall each also provide a preliminary identification of extrinsic evidence, including, without limitation, dictionary definitions, treatises, prior art, and testimony of percipient and expert witnesses, that they contend support their respective claim constructions. The parties shall identify each such item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, percipient or expert, the parties shall also provide a brief description of the substance of that witness’s proposed testimony.

(c) The parties shall thereafter meet and confer, by telephone or in person, for the purposes of narrowing the issues and finalizing preparation of a Joint Claim Construction and Prehearing Statement.

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132 Joint Claim Construction and Prehearing Statement.

Not later than 45 days after service of the “Preliminary Claim Constructions,” the parties shall complete and file a Joint Claim Construction and Prehearing Statement, which shall contain the following information:


(b) Each party’s proposed construction of each disputed claim term, phrase, or clause, together with an identification of all references from the specification or prosecution history that support that construction, and an identification of any extrinsic evidence on which it intends to rely either to support its proposed construction of the claim or to oppose any other party’s proposed construction of the claim in the format of the Sample Joint Claim Chart in Appendix 2 to these Local Patent Rules;

(c) The ten most important disputed claim terms. If the parties cannot agree on such terms, then they shall set forth the disputed terms upon which they agree, and each party shall identify any additional terms it believes should be construed, with a brief explanation as to why it believes the construction of such terms are important. The Court will construe a maximum of ten claim terms at the initial Markman hearing, unless the Court determines otherwise. Prioritization should be guided by the twin goals of narrowing the issues and choosing the ten claim terms for which a claim construction would be most productive in terms of setting the groundwork for possible settlement.

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

(e) The proposed order of presentation at the Claim Construction Hearing;

(f) The parties’ position on whether, why, and the extent to which the Court should consider live testimony at the Claim Construction Hearing, including the identity of any witnesses a party proposes to call, and for each expert, the disclosure required by Fed. R. Civ. P. 26(a)(2)(B) as to opinions to be offered at the Claim Construction Hearing;

(g) The parties’ position as to whether there should be a tutorial on the subject matter of the patent(s) at issue and, if so, the timing of such a tutorial;

(h) Whether a pre-hearing conference, prior to the Claim Construction Hearing, is necessary and, if so, the proposed subjects to be addressed and proposed dates for such conference; and

(i) Whether the parties believe the Court should appoint an independent expert.

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133 Completion of Claim Construction Discovery.

Not later than 50 days after service and filing of the Joint Claim Construction and Prehearing Statement, the parties shall complete all discovery relating to claim construction, including any depositions with respect to claim construction of any witnesses, including experts, identified in the Joint Claim Construction and Prehearing Statement.

134 Claim Construction Briefs.

(a) Not later than 55 days after serving and filing the Joint Claim Construction and Prehearing Statement, each shall serve and file an opening brief and any evidence supporting its claim construction.

(b) The cover page of an opening brief shall note, under the title, “Due Date: [Date],” where the date shall be the date that the responsive brief is due. No reply briefs shall be filed unless otherwise ordered by the Court.

(c) Not later than 15 days after service of an opening brief, each party shall serve and file a responsive brief.

(d) Opening briefs shall be limited to 24 pages per side, and responsive briefs shall be limited to 12 pages per side, unless the parties receive permission prior to the due date to file over-length briefs.

135 Claim Construction Hearing.

Subject to the convenience of the Court’s calendar, the Court shall conduct a Claim Construction Hearing, to the extent the parties or the Court believe a hearing is necessary for construction of the claims at issue. Any claim construction hearing shall be limited to ten claim terms, unless the Court rules otherwise.

E. WILLFULNESS

140 Willfulness.

Not later than 30 days after service by the Court of its Claim Construction Ruling, each party opposing a claim of patent infringement that will rely on an opinion of counsel as part of a defense to a claim of willful infringement shall:

(a) Produce or make available for inspection and copying the opinion(s) and any other documents relating to the opinion(s) as to which that party agrees the attorney-client or work product protection has been waived; and

(b) Serve a privilege log identifying any other documents, except those authored by counsel acting solely as trial counsel, relating to the subject matter of the opinion(s)

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which the party is withholding on the grounds of attorney-client privilege or work product protection.

A party opposing a claim of patent infringement who does not comply with the requirements of this Local Patent Rule 140 shall not be permitted to rely on an opinion of counsel as part of a defense to willful infringement absent a stipulation of all parties or by order of the Court, which shall be entered only upon a showing of good cause.

APPENDIX 1 91004-1100/LEGAL14664182.1

Schedule Under Draft Local Patent Rules

Event Days After Scheduling Conference

Rule

Scheduling Conference 0

Disclosure of Asserted Claims 15 120

Non-infringement and Invalidity Contentions 45 121

Proposed Terms for Construction 65 130(a)

Preliminary Claim Construction 95 131(a)

Joint Claim Construction 140 132(a)

Construction Expert Disclosures 140 132(f)

Completion of Claim Construction Discovery 190 133

Opening Claim Construction Brief 195 134(a)

Responsive Claim Construction Brief 210 134(c)

Claim Construction Hearing Per Court Order 135

Draft Supplemental Patent Rules

APPENDIX 2 91004-1100/LEGAL14664182.1

Sample Joint Claim Chart

Claim Language (Disputed Terms in Bold) ‘123 Patent

Plaintiff’s Proposed Construction and Evidence in Support

Defendant’s Proposed Construction and Evidence in Support

1. A method for mending fences [or] fences Found in claim numbers: ‘123 Patent: y, z ‘456 Patent: a, b

fence Proposed Construction: A structure that keeps things out. Intrinsic Evidence: ‘123 Patent col _:__ (“keeps stray animals out” ); Prosecution History at __ (“this method is more effective than the prior art in reinforcing the fence, and therefore in keeping out unwanted intruders”). Dictionary/Treatise Definitions: Merriam-Webster Dictionary (“a barrier intended to prevent . . . intrusion”). Extrinsic Evidence: R. Frost Depo. at xx:xx (“Good fences make good neighbors”); ‘000 Patent at col _:__; Vila Decl. at ¶__.

fence Proposed Construction: A structure that keeps things in. Intrinsic Evidence: ‘123 Patent col _:__ (“keeps young children from leaving the yard “); Prosecution History at __ (“dilapidated fences meant to pen in cattle are particularly amenable to this method”). Dictionary/Treatise Definitions: Merriam-Webster Dictionary (“a barrier intended to prevent . . . intrusion”). Extrinsic Evidence: C. Porter Depo. at xx:xx (“Don’t fence me in” ); ‘111 Patent at col _:__; Thomas Decl. at ¶__.

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