Local Rule Rule 805: Claim Construction

RULE 805. CLAIM CONSTRUCTION

1. Cases Involving Claims of Infringement or Invalidity (Including Hatch-Waxman Cases)

Unless otherwise ordered by the Cout, in all cases covered by L.R. 804.1 through 804.3, claim construction disclosures and briefing shall proceed as follows:

a) Exchange Proposed Terms for Construction

Fourteen (14) days from the service of the Initial Disclosure of Invalidity Contentions (or from the service of the Initial Disclosure of Infringement Contentions in cases arising under the Hatch-Waxman Act), each party shall simultaneously exchange a list of claim terms, phrases, or clauses which that party contends should be construed or found indefinite by the Court, and identify any claim element which that party contends should be governed by pre-AIA 35 U.S.C. § 112(6) or post-AIA 35 U.S.C. § 112(f).

b) Exchange Preliminary Claim Constructions and Extrinsic Evidence

i. Fourteen (14) days from the exchange of the "Proposed Terms for Construction," 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 pre-AIA 35 U.S.C. § 112(6) or post-AIA 35 U.S.C. § 112(f), identify the structure(s), act(s), or material(s) corresponding to that element.

ii. 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 or indefiniteness positions. 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 the identity and a brief description of the substance of that witness' proposed testimony. The parties may, but need not, exchanges supporting expert declarations at this time.

iii. Within seven (7) days from the exchange of Preliminary Claim Constructions and Extrinsic Evidence the parties shall meet and confer to narrow the issues in dispute and exchange revised lists of terms/constructions.

c) Claim Construction Briefing

i. Not later than thirty-five (35) days from the exchange of the "Preliminary Claim Construction and Extrinsic Evidence," each party shall serve and file an opening brief and any evidence supporting its claim construction. If any party opposing patent infringement contends that any claim terms are indefinite, that party shall raise the issue in its opening claim construction brief. Any expert declaration in support of a party's position must be submitted with its opening brief. All asserted patents shall be attached as exhibits to the opening claim construction brief in searchable PDF form.

ii. Not later than twenty-eight (28) days from the deadline for filing the opening brief, each party shall serve and file a responsive brief and supporting evidence. If any party opposing patent infringement contended that a claim term is indefinite in its opening brief, each party asserting patent infringement shall respond to the indefiniteness issue in its responsive brief. Any expert declaration responding to a party's position set forth in its opening brief must be submitted with its responsive brief.

iii. Not later than fourteen (14) days from the deadline for filing the responsive brief, each party shall serve and file any reply brief and any evidence directly rebutting the supporting evidence contained in an opposing party's response. No expert declarations may be submitted with a reply brief without leave of court, and for good cause.

iv. If a party offers the testimony of a witness to support its claim construction, it must make the witness available for deposition (if the witness is under the control of the party) concerning the proposed testimony. Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied on by the other party. If a witness is deposed based on a declaration submitted in the responsive brief, the parties' deadline for the filing of the reply brief shall be extended by seven (7) calendar days.

d) Joint Claim Construction Statement

Within seven (7) days after the completion of claim construction briefing, the parties, having met and conferred on claim construction, shall file a Joint Claim Construction Statement which shall contain the following information:

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

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

iii. Each party's position on whether a technical tutorial is necessary; and

iv. For any party who proposes to call one or more witnesses at any claim construction hearing, the identity of each such witness, the subject matter of his or her testimony, and an estimate of the time required for the testimony.

2. Cases Seeking Correction of Inventors (35 U.S.C. § 256) and Cases Alleging False Marking (35 U.S.C. § 292)

Fifty-six (56) days from the date of the Scheduling Order, the parties, having met and conferred on claim construction, shall report to the Court as to whether there are any contested issues of claims construction and, if so, shall propose a schedule for serving Claim Construction Statements and Responsive Claim Construction Statements and filing a Joint Claim Construction Statement, opening claim construction briefs, and responsive claim construction briefs.