Local Rule Rule 4 (Patent): Claim Construction Proceedings

Rule 4 Claim Construction Proceedings 4.1 Inapplicability To Design and Variety of Plant Patents Unless otherwise requested by a party and determined by the Court to be warranted, the provisions of this Local Patent Rule 4 shall not apply to design or variety of plant patents.

4.2 Exchange of Proposed Terms for Construction

(a) Not later than sixty (60) days after the initial Rule 16 Conference 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 (f).

(b) The parties shall thereafter meet and confer for the purpose of limiting the terms in dispute by narrowing or resolving differences, and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement.

4.3 Exchange of Preliminary Claim Constructions and Extrinsic Evidence

(a) Not later than twenty-one (21) days after the exchange of lists pursuant to Local Patent Rule 4.2, the parties shall simultaneously exchange preliminary proposed constructions of each term identified by any 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 (f), 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 preliminary proposed construction and designate any supporting extrinsic evidence including, without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of all witnesses including expert witnesses. Extrinsic evidence shall be identified by production number or by producing a copy if not previously produced. With respect to all witnesses including experts, 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.

4.4 Joint Claim Construction and Prehearing Statement

(a) Not later than twenty-one (21) days after the exchange of Preliminary Claim Constructions under Local Patent Rule 4.3(a), the parties shall complete and file a Joint Claim Construction and Prehearing Statement, which 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 an identification of all references from the intrinsic evidence that support that construction, and an identification of any extrinsic evidence known to the party upon 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 all witnesses including experts;

(3) A prioritization of the disputed terms, based upon their significance to the resolution of the case and the court's construction of those terms and whether they will be case or claim dispositive or substantially conducive to promoting settlement, together with a statement of the significance of each term to the claims and defenses in the case;

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

(5) Whether any party proposes to call any live witnesses to testify 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.

(b) No more than ten (10) patent terms or phrases may be presented to the Court for construction, absent prior leave of Court upon a showing of good cause. The assertion of multiple non-related patents shall, in an appropriate case, constitute good cause. If the parties are unable to agree upon which ten (10) terms are to be presented to the Court for construction, then five (5) shall be allocated to all plaintiffs, jointly, and five (5) to all defendants.

4.5 Completion of Claim Construction Discovery Not later than thirty (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 fact and expert witnesses, identified in the Preliminary Claim Construction Statement (Local Patent Rule 4.3) or Joint Claim Construction and Prehearing Statement (Local Patent Rule 4.4).

4.6 Claim Construction Submissions

(a) Not later than forty-five (45) days after serving and filing the Joint Claim Construction and Prehearing Statement, the parties shall contemporaneously file and serve their opening Markman briefs and any evidence supporting claim construction, including experts' certifications or declarations ("Opening Markman Submissions").

(b) Not later than thirty (30) days after the filing of the Opening Markman Submissions, the parties shall contemporaneously file and serve Responding Markman Submissions and any evidence supporting claim construction, including any responding experts' certifications or declarations.

(c) The parties' Markman opening and responsive briefs are subject to the page limits set forth in Local Rule 7.1(a)(1), absent Court permission to exceed those limitations, granted in advance of filing.

4.7 Claim Construction Hearing Within fourteen (14) days following submission of the briefs and evidence specified in Local Patent Rule 4.6, counsel shall confer and propose to the Court a schedule for a Claim Construction Hearing, to the extent the parties believe and the Court deems it necessary to conduct such a hearing for construction of the claims at issue.