Summary of Local Patent Rules Affecting Claim Construction Practice (Part 4 of 6)

Presently, eleven federal district courts have enacted local patent rules.  The rules are generally used to help streamline what can be very complicated disputes.  Among these rules are rules that affect claim construction practice in each district court.  Practitioners should be able to benefit from understanding these differences in practice.  In this five-part six-part series, this blog will undertake to briefly summarize the applicable claim construction rules in each of these eleven courts.  Today, we focus on the United States District Courts for the District of Minnesota and the Southern District of California.

11/05/09 Note: Rules for the Southern District of Texas were mistakenly initially included in this post.  This has been corrected.

District of Minnesota (rules available here)

As an initial matter, the majority of this district's local rules affecting claim construction are found in the Court's model Rule 26(f) report for patent cases.  This sample report provides for the following:

• The parties first simultaneously exchange lists of claim terms that each party believes should be construed by the Court;

• After this exchange, the parties meet and confer to narrow the issues.  As part of this meet and confer, the parties are required to exchange their preliminary proposed constructions and disclose extrinsic evidence, including brief descriptions of witness testimony for each witness either party plans to use;

• The parties then notify the Court as to whether they request a claim construction hearing and also file with the court a joint claim construction statement containing:
  
  
  1. agreed-upon constructions;
  2. each party's construction of each disputed claim term, along with identifying all relevant intrinsic and extrinsic evidence; and
  3. identification of witnesses for the hearing, including a summary of each opinion to be offered by any expert witness.

• After filing the joint statement, the Court will issue orders concerning briefing schedules, extrinsic evidence that will be received, and the claim construction hearing (if deemed necessary by the Court);

• Note that the parties are asked to propose deadlines for the initial exchange of claim terms, the initial meet and confer, and the filing of the joint claim construction statement in the Rule 26(f) report.

Southern District of California (rules available here)

• 14 days after service of preliminary invalidity contentions, the parties simultaneously exchange a list of claim terms to be construed, preliminary proposed constructions of each claim term, identification of the structures/acts/materials corresponding to elements governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence used, and brief descriptions of witness testimony supporting the constructions (if applicable);

• 14 days after exchanging proposed constructions, the parties simultaneously exchange responsive claim constructions, identifying whether the party agrees with the other party's proposed construction or identifying an alternative construction, as well as identification of extrinsic evidence used, and brief descriptions of witness testimony supporting the constructions (if applicable);

• The parties then are required to meet and confer to prepare a joint claim construction chart, worksheet, and hearing statement for the Court;

• 14 days after exchanging responsive constructions and related materials, the parties then file the Joint Claim Construction Chat, Joint Claim Construction Worksheet and Joint Hearing Statement;
  
  
  1. the chart includes each party's construction of each disputed claim term, along with identifying all relevant intrinsic and extrinsic evidence;
  2. the worksheet includes agreed-upon constructions as well as those in dispute;
  3. the hearing statement includes the anticipated time needed for a claim construction hearing, and identification of witnesses for the hearing, including a summary of each opinion to be offered by any expert witness;

• 28 days after filing the joint claim construction chart, worksheet and statement, claim construction discovery ends;

• 14 days after claim construction discovery ends, the parties simultaneously file opening briefs;

• 14 days after the opening briefs are filed, the parties simultaneously file responsive briefs;

• Not later than 28 days afer the responsive briefs are filed, the Court will conduct a claim construction hearing if the court believes a hearing is necessary.

While Minnesota's rules are fairly sparse, those of the Southern District of California are much more detailed. 

Stay tuned for parts five and six of this series.  Parts one, two and three of the series can be found at the following links:

• Part I (District of Massachusetts and District of New Jersey)
• Part II (Western District of Pennsylvania and Eastern District of North Carolina)
• Part III (Northern District of Georgia and Western District of Washington)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.