Summary of Local Patent Rules Affecting Claim Construction Practice (Part 2 of 6)

Presently, eleven federal district court 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 Western District of Pennsylvania and the Eastern District of North Carolina.

Western District of Pennsylvania (rules available here)

• The parties first simultaneously exchange a list of claim terms to be construed and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• Within 10 days of this exchange, the parties are required to meet and confer to narrow the list of claim terms in dispute and prepare a Joint Disputed Claim Terms Chart to be filed with the Court, including proposed constructions and intrinsic evidence related to each claim term;

• 30 days after filing the Joint Disputed Claim Terms Chart, the Plaintiff (or the Defendant in cases where an alleged infringer has filed a DJA of non-infringement/invalidity and the Defendant patent holder has counterclaimed for infringement) files its opening claim construction brief, including proposed constructions of each claim term in dispute, the function and structure for each 35 U.S.C. § 112 ¶ 6 term, extrinsic evidence, and the anticipated length of time needed to present its case at the claim construction hearing;

• 20 days after the opening brief filing, the opposing party files its response brief, including the same information as required in the opening brief and a concise (under five-page) statement regarding the opening party's offer of extrinsic evidence;

• 15 days after the response brief filing, the opening party files its reply brief, including a concise (under five-page) statement regarding the opposing party's offer of extrinsic evidence;

• Prior to the claim construction hearing (which is routinely scheduled to be 15 days after the reply brief filing, subject to the Court's availability), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

Eastern District of North Carolina (rules available here)

• 15 days after service of the Preliminary Non-Infringement and Invalidity Contentions, the parties simultaneously exchange a list of claim terms for construction and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• 20 days after this exchange, the parties simultaneously exchange preliminary proposed constructions of each claim term, the structures/acts/materials associated with potential 35 U.S.C. § 112 ¶ 6 claim elements, and extrinsic evidence each party intends to rely upon;

• The parties are required to meet an confer to narrow both the list of proposed terms for construction and to resolve differences in proposed constructions;

• 45 days after the exchange of preliminary proposed constructions, the parties are required to file a Joint Claim Construction Statement containing:
  
  
  1. Agreed upon constructions;
  2. Each party's proposed construction of terms in dispute, along with identification of intrinsic and extrinsic evidence;
  3. Anticipated length of time needed for the Claim Construction Hearing; and
  4. A statement indicating whether any party intends to provide live testimony at the hearing, including the identity of witnesses and a summary of expert opinions to be offered live at the hearing.

• 30 days after filing the Joint Claim Construction Statement, claim construction discovery ends;

• 45 days after filing the Joint Claim Construction Statement, the parties simultaneously file opening claim construction briefs;

• 20 days after filing opening briefs, the parties simultaneously file response briefs;

• Prior to the claim construction hearing (which the Court will conduct to the extent it believes a hearing is necessary), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

Neither of these districts appear to have rules constraining the number of terms that the Courts will construe or the length of claim construction briefs. While the Western District of Pennsylvania does not allow for the exchange of simultaneous briefs, the Eastern District of North Carolina does. Unlike the courts of Massachusetts and New Jersey (discussed in part one of the series), neither of the Pennsylvania or North Carolina courts require the parties to identify the most important claim terms to be construed.

Stay tuned for parts three through five six of this series. Part one of the series can be found here.

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