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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Thursday
Oct082009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 5 of 6)

Now that the Northern District of Illinois has officially instituted its set of local patent rules, there are twelve federal district courts that 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 will undertake to briefly summarize the applicable claim construction rules in each of these twelve courts.  Today, we focus on the United States District Courts for the Northern District of Illinois and the Eastern District of Texas.

Note that this was formerly a five-part series but given the new Northern District of Illinois patent rules, it has been turned into a six-part series for ease of reading.

Northern District of Illinois (rules available here)

  • The parties first simultaneously exchange lists of claim terms to be construed as well as proposed constructions, elements that should be governed by 35 U.S.C. § 112 ¶ 6, and the function and structure/acts/materials corresponding to such 112 ¶ 6 elements;
  • Within seven days after this initial exchange, the parties are required to meet and confer to narrow the list of claim terms to no more than ten (absent prior leave of court upon a showing of good cause) and also certify whether each term is outcome-determinative;
    • Here, the comments to the rules note that while more than ten terms may be disputed between the parties, "construction of outcome-determinative or otherwise significant claim terms may lead to settlement or entry of summary judgment" and the ten-term limitation "is intended to require the parties to focus upon outcome-determinative or otherwise significant disputes."
  • Within 35 days of the initial exchange, the parties opposing infringement file their opening claim construction brief, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties opposing infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.
  • At the same time the opening claim construction brief is filed, the parties are also required to file a Joint Appendix containing the patent(s) in dispute and the prosecution history of each patent (the Joint Appendix is to be used by both parties for citation of intrinsic evidence);
  • Within 28 days of the opening claim construction brief filing, the parties claiming infringement file their responsive claim construction briefs, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties claiming infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.  Also, if the responsive claim construction brief contains citation to witness testimony, the parties opposing infringement receive an additional seven days to file their reply brief.  The responsive claim construction brief must also describe all objections to the extrinsic evidence identified in the opening briefs.
  • Within 14 days (or 21 days if the parties claiming infringement are offering witness testimony) of the responsive claim construction brief filing, the parties opposing infringement file their reply briefs, which may not exceed 15 pages absent leave of court, including all objections to any extrinsic evidence identified in the responsive claim construction brief;
    • Here, the comments to the rules note that the committee opted for consecutive claim construction briefs and having the alleged infringer file the opening brief "to promote a meaningful exchange regarding the contested points."
  • Within 7 days of the reply claim construction brief filing, the parties are required to file a joint claim construction chart setting forth the terms in dispute and each party's proposed construction as well as a joint status report containing each party's proposals for the nature and form of the claim construction hearing;
  • The Court may hold a claim construction hearing within 28 days of the reply brief filing and will issue an order describing the schedule and procedures for the hearing.

Eastern District of Texas (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;
  • 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, 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;
  • 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. 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;
  • 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 files its opening claim construction brief (limit of 30 pages, unless otherwise ordered by the Court);
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs (limit of 30 pages, unless otherwise ordered by the Court);
  • 7 days after the responsive brief filing, the party claiming infringement files its reply brief (limit of 10 pages, unless otherwise ordered by the Court);
  • 10 days 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);
  • 14 days after the reply brief filing, the Court will conduct a claim construction hearing, if necessary.

As can be seen from the above, the Northern District of Illinois and Eastern District of Texas do not allow for simultaneous exchange of claim construction briefs.  However, the order of briefing is reversed between these two districts, with the patent holder filing the opening brief in Texas and the alleged infringer filing the opening brief in Illinois.

Stay tuned for part six of this series.  Parts one through four 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)

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