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 a 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 Massachusetts and the District of New Jersey.
District of Massachusetts (rules available here)
- The parties first simultaneously exchange a list of claim terms to be construed and proposed constructions. The suggested date for this exchange is 120 days after completion of preliminary disclosures;
- 20 days (suggested) after exchanging the list of claim terms and proposed constructions, the parties simultaneously file opening claim construction briefs. The Court suggests that opening briefs be limited to 25 pages, absent leave of Court;
- 10 days (suggested) after filing opening briefs, the parties simultaneously file reply briefs. The Court suggests that reply briefs be limited to 15 pages, absent leave of Court;
- 15 days (suggested) after filing reply briefs, the parties finalize the list of disputed terms and file a joint claim construction and prehearing statement containing the following information:
- the anticipated time needed for the Markman hearing and identification of proposed witnesses to testify at the hearing;
- procedural information concerning technology tutorials (if needed);
- the order of presentation at the hearing (term-by-term, party-by-party, etc.); and
- a joint claim construction chart showing the terms at issue, the parties' proposed constructions, and supporting evidence.
- The Court suggests limiting of the number of claim terms to no more than 10 per patent, and asks the parties to prioritize them in order of importance for the Court.
District of New Jersey (rules available here)
- First, the parties exchange a list of claim terms for construction and identify any terms which should be governed by 35 U.S.C. § 112 ¶ 6;
- After this initial exchange of terms, the parties are required to meet and confer to limit the terms in dispute;
- 21 days after exchanging initial lists, the parties exchange preliminary proposed constructions of all terms in dispute (including all terms suggested by both the patentee and accused infringer), including information related to construction under 35 U.S.C. § 112 ¶ 6 (if applicable), and specifically identifying all intrinsic and extrinsic evidence used in support of the proposed constructions;
- After this exchange of proposed constructions, the parties are required to meet and confer again to narrow the issues;
- 30 days after exchanging proposed constructions, the parties file a joint claim construction and prehearing statement containing the following information:
- agreed upon claim constructions;
- each party's proposed construction of each disputed term with identification of all references to intrinsic and extrinsic evidence to be used in support of the party's construction and in opposition to the other party's proposed construction;
- an identification of the most significant terms, including identifying terms that are case or claim dispositive or that would help in promoting settlement;
- the anticipated time needed for the Markman hearing; and
- identification of witnesses that may called at the Markman hearing, including a summary of testimony.
- 30 days after filing of the joint claim construction and prehearing statement, claim construction discovery ends;
- 45 days after filing of the joint claim construction and prehearing statement, the parties simultaneously file opening Markman briefs;
- 60 days after filing opening briefs, the parties simultaneously file response briefs;
- 14 days after filing response briefs, the parties propose a Markman hearing schedule to the Court.
In both Massachusetts and New Jersey, the parties simultaneously file both opening and responsive Markman briefs. Also, in both courts the parties are asked to inform the court of which terms are the most important. New Jersey's adds two mandatory meet and confers prior to the filing of briefs, in order to both narrow the list of terms to be construed and to narrow the disputes in proposed constructions. Massachusetts' court adds a request that the parties to narrow the list of terms to ten per patent.
Stay tuned for parts two through five six of this series.
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