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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Tuesday
Oct272009

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

Presently, twelve 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 six-part series, this blog has undertaken to briefly summarize the applicable claim construction rules in each of these twelve courts. Today, in the final part of this series, we focus on the United States District Courts for the Southern District of Texas and the Northern District of California.

Southern District of Texas (rules available here)

  • 2 weeks after serving preliminary invalidity contentions, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms;
  • 3 weeks after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 4 weeks after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. anticipated length of time needed for claim construction hearing;
    4. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
    5. a list of issues to be taken up at a prehearing conference prior to the claim construction hearing;
  • 4 weeks after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 1 week after claim construction discovery ends, the parties may provide the Court with written technology tutorials for the patent at issue (optional);
  • 3 weeks after claim construction discovery ends, the party claiming patent infringement files its opening claim construction brief;
  • 2 weeks after the opening brief filing, the opposing parties file their responsive briefs;
  • 1 week after the responsive brief filing, the party claiming infringement files its reply brief;
  • 1 week before the claim construction hearing, the parties must jointly submit a claim construction chart to the court containing each disputed term, each party's construction of that disputed term, a blank column for the court's construction, and agreed-upon constructions of terms (optional);
  • The Court will then conduct a claim construction hearing, if necessary.


Northern District of California (rules available here)

  • First, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms and jointly identify the 10 terms that are the most significant or case or claim dispositive;
  • 20 days after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, and identification of intrinsic and extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 30 days after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. identification of the most significant claim terms, up to a maximum of 10 terms, including identification of terms that will be case or claim dispositive;
    4. anticipated length of time needed for claim construction hearing;
    5. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
  • 30 days after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 15 days after claim construction discovery ends, the party claiming patent infringement (or the party asserting invalidity if there is no infringement issue in the case) files its opening claim construction brief;
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs;
  • 7 days after the responsive brief filing, the party claiming infringement (or the party asserting invalidity if there is no infringement issue in the case) files its reply brief;
  • 2 weeks after the reply brief filing, the Court will then conduct a claim construction hearing, if necessary, subject to the convenience of the Court's calendar.

As can be seen, the rules for the Southern District of Texas and Northern District of California are quite similar, except that the Northern District of California requires the parties to inform the Court of the ten most significant claim terms to be construed, including identification of those terms that may be case or claim dispositive.

The author will be working on drafting a more concise summary (potentially a chart) to show the differences between all twelve districts that have local patent rules.  In the meantime, parts one through five of this 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)
  • Part IV (District of Minnesota and Southern District of California)
  • Part V (Northern District of Illinois and Eastern District of Texas)

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