Local Rule Rule 2 (Patent): General Provisions

Rule 2 General Provisions 2.1 Initial Scheduling Conference

(a) Consistent with the local rules of this Court and General Order No. 25, upon the filing in or removal or transfer to this Court of an action which falls within the scope of these rules, the Court will schedule a Rule 16 conference to be conducted by the magistrate judge assigned to the case. That conference may be held in-person or by telephone, depending upon the practices of the particular magistrate judge assigned.

(b) At least twenty-one (21) days prior to the scheduled Rule 16 conference the parties must confer, in person or by telephone, pursuant to Fed. R. Civ. P. 26(f) to formulate a discovery plan and to address the following topics:

(1) Proposed modification of the obligations or deadlines set forth in these local patent rules to ensure that they are suitable for the circumstances of the particular case;

(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;

(4) How the parties intend to educate the Court with respect to the patent(s) at issue; and

(5) The need for alteration of the standard confidentiality order to supercede that which would otherwise be entered by the court pursuant to Local Patent Rule 2.2.

(c) Not later than fourteen (14) days prior to the scheduled Rule 16 conference the parties shall jointly submit a Civil Case Management Plan, in the form of that approved by the Court pursuant to General Order No. 25, completed to address the various issues raised in that form, based upon the parties' discussions during their Rule 26(f) meeting.

(d) One of the topics to be addressed at the Rule 16 conference is the timing and scope of mandatory disclosures required pursuant to Fed. R. Civ. P. 26(a)(1). Among the disclosures which ordinarily must be made pursuant to Rule 26(a)(1) in cases covered by these rules is information and documentation regarding proof of patent ownership or standing to assert patent infringement claims.

(e) Following the initial conference conducted by the court pursuant to Fed. R. Civ. P. 16, the assigned magistrate judge may, in his or her discretion, schedule and conduct such further status conferences, either telephonically or in person, as deemed appropriate. It is contemplated that such a conference may be conducted within sixty (60) to ninety (90) days following the initial Rule 16 conference, and that during that conference the parties will be asked to discuss what efforts, if any, they have made to attempt to settle the case and how the court may assist their settlement efforts such as, for example, by scheduling a settlement conference or ordering mediation, either paid or through the court's Alternative Dispute Resolution program.

2.2 Confidentiality

(a) Not later than fourteen (14) days prior to the initial Rule 16 Conference and after conferring regarding the matter the parties may, if desired, submit either a stipulated protective order pursuant to Fed. R. Civ. P. 26(c) or, if agreement cannot be reached, may each submit a counter proposed protective order for the Court's consideration, highlighting for the Court any areas of disagreement. In the event that the parties do not request the entry of a different Rule 26(c) confidentiality order at or prior to the Rule 16 scheduling conference, or if otherwise deemed appropriate, the Court will enter a protective order pursuant to Fed. R. Civ. P. 26(c) in the form of that provided on the Court's webpage at "www.nynd.uscourts.gov."

2.3 Relationship to Federal Rules of Civil Procedure

(a) 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 local patent 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 these local patent rules:

(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, design, variety of plant 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 advice of counsel received, and related documents.

(b) 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 disclosed to an opposing party under these local patent rules or as set by the Court, unless there exists another legitimate ground for objection.

2.4 Exchange of Expert Materials

(a) Disclosures of claim construction expert materials and depositions of such experts are governed by Local Patent Rule 4.1 et seq., unless otherwise ordered by the Court.

(b) Unless otherwise ordered by the Court, the disclosure of expert materials related to issues other than claim construction will not be required until claim construction issues have been decided, and shall be governed by the provisions of Local Patent Rule 5.1 et seq.