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4 UNITED STATES DISTRICT COURT
5 NORTHERN DISTRICT OF CALIFORNIA
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7 STANDING ORDER FOR PATENT CASES
(Effective October 23, 2024)
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The following instructions shall apply to all patent cases assigned to Magistrate Judge
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Sallie Kim.
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Joint Claim Construction Statement
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1. The initial joint claim construction statement required by Patent Local Rule 4-3
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Northern District of California
shall be truly joint. Disputed terms, phrases, and clauses shall be designated as disputed. All
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other terms shall be presumed undisputed. For any term in dispute, the parties must agree on the
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identity of the term. With regard to disputed terms, phrases, or clauses, the joint statement shall
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list each disputed term, phrase, or clause (listed by claim); each party’s proposed construction; and
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support for each party’s proposed construction in table format. In their initial joint claim
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construction statement, the parties shall take care to order the claim terms from highest to lowest
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importance.
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2. Parties shall attach to the joint claim construction statement copies of all patents in
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dispute.
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Claim Construction
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3. As an initial matter, the Court will construe no more than ten terms. If more than
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ten terms are at issue, the parties shall meet and confer before the preparation of the joint claim
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construction statement on narrowing the selection of terms to be construed by the Court and shall
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jointly propose the ten terms requiring construction.
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4. If a party genuinely believes construing more than ten terms is necessary, that party
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may request leave to designate additional terms for construction, pursuant to Civil Local Rule 7-
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1 11(b). The requesting party must demonstrate good cause and explain why other methods of
2 limiting the claims at issue (such as the selection of representative claims or any grouping of
3 claims by issues presented) would be ineffective. The request must be filed no later than two
4 weeks before the deadline for filing the joint claim construction statement. If good cause is
5 shown, the Court will either agree to construe all terms or schedule a second claim construction
6 proceeding on the excess terms.
7 5. Claim construction briefs shall address each disputed term, but only those that are
8 truly disputed, following the order of the joint statement. The opening and opposition briefs shall
9 not exceed 25 pages; the reply brief shall not exceed 15 pages. The Court anticipates that the
10 parties will meet and confer before preparing the joint claim construction statement and that such a
11 process will obviate the need for a party to propose in its briefs a claim construction that differs
12 from that proposed in the statement. While the Court encourages the parties to negotiate mutually
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13 agreeable constructions, the Court discourages the parties from proposing new constructions for
14 the first time in reply briefs or other filings which do not afford the opposing party an opportunity
15 to respond. However, if it becomes necessary for a party to propose a construction that is different
16 from the one found in the joint claim construction statement, that party must clearly set forth the
17 new construction and explain the basis for the change. Additionally, that party shall revise the
18 joint claim construction statement, so that the Court will have one document reflecting all current
19 proposed constructions.
20 6. If there have been changes since the joint claim construction statement was filed,
21 the parties shall file an amended, final joint claim construction statement, including only the
22 remaining disputed terms, phrases, and clauses at the time when the reply brief is filed.
23 Tutorial and Claim Construction Hearing
24 7. The Court will schedule a tutorial to occur one week prior to the claim construction
25 hearing. The purpose of the tutorial is for the parties to inform and educate the Court about the
26 technology involved in the case. Each side will be permitted 45-60 minutes to present a short
27 summary and explanation of the technology at issue. The Court encourages counsel to meet and
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1 presentation, then the patent holder makes the first presentation. Visual aids are encouraged. The
2 Court strongly prefers that someone other than counsel make the presentation. Counsel will be
3 permitted to make opening remarks and then a brief summation following the presentation. No
4 argument will be permitted. The proceeding is not recorded, and the parties may not rely on
5 statements made at the tutorial in other aspects of the litigation.
6 8. Depending on the technology involved, the Court may determine that the assistance
7 of a neutral expert would be helpful. In such an instance, the Court may direct the parties to
8 confer and, if possible, reach an agreement as to three experts in the field who would be
9 appropriate to act as a neutral expert to assist the Court during the claim construction proceedings
10 and/or the trial. The Court will then choose one to appoint as a neutral expert pursuant to Federal
11 Rule of Evidence 706. In such a situation, the parties will split the cost of the expert equally.
12 9. The Court generally does not conduct prehearing conferences. However, either
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13 party may request a telephone conference two weeks prior to the hearing, or the parties may
14 address any prehearing issues at the tutorial, if any.
15 10. The patent holder will act as the moving party for the purposes of claim
16 construction. Opening briefs in support of claim construction must be filed at least six weeks
17 before the date of the claim construction hearing, and the briefing schedule set forth at Patent
18 Local Rule 4-5 will apply.
19 11. The Court will not ordinarily hear extrinsic evidence at the claim construction
20 hearing. Should it become apparent that testimony will be necessary, counsel may submit a
21 request within two weeks of the hearing to seek the Court’s prior approval for such a request.
22 12. Demonstrative exhibits and visual aids are permissible at the hearing as long as
23 they are based on information contained in the papers already filed. Counsel shall exchange
24 copies of exhibits no later than forty-eight hours prior to the hearing.
25 13. The claim construction hearing generally will be scheduled for no longer than two
26 hours. The Court will set the hearing date at the initial case management conference.
27 Subsequent Case Management Report
28 14. Within thirty days of the filing of the claim construction ruling, the parties shall file
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1 a further joint case management status report. In that report, the parties must address the
2 following topics:
3 a) whether either party wishes to certify the claim construction ruling for
4 immediate appeal to the Federal Circuit;
5 b) the filing of dispositive motions and timing of those motions;
6 c) if willful infringement has been asserted, whether the allegedly-infringing
7 party wishes to rely on the advice of counsel defense. If so, the parties should be prepared to
8 address proposals for resolving any attorney-client privilege issues that arise, and whether the
9 parties believe bifurcation of the trial into liability and damages phases would be appropriate;
10 d) anticipated post-claim construction discovery;
11 e) any other pretrial matters; and
12 f) the progress of settlement discussions, if any.
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13 The Court will review the report and, if necessary, schedule a further case management
14 conference and enter any appropriate orders.
15 Miscellaneous
16 15. All stipulated protective orders and filings shall comply with Civil Local Rule 79-5.
17 Any party who submits a request to file under seal pursuant to Civil Local Rule 79-5 shall include
18 a statement to inform the Court: (1) whether the document, or portion thereof, has been the subject
19 of a previous request to file under seal; and (2) if so, provide the docket numbers of the request
20 and order on the request, and describe whether the request was granted or denied. Parties shall
21 also submit a complete unredacted chambers copy of any brief or supporting papers lodged under
22 seal with all confidential material highlighted.
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1 16. The Court strongly encourages parties to permit less experienced lawyers to have
2 an important role in hearings and at trial. The Court will extend the time limits for an associate
3 with fewer than five years.
4 IT IS SO ORDERED.
5 Dated: October 23, 2024
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7 ________________________
SALLIE KIM
8 United States Magistrate Judge
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Northern District of California
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1 ATTACHMENT A
2 Model Joint Claim Construction Statement
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Claim Language Plaintiff’s Proposed Construction Defendant’s Proposed
4 (Disputed Terms in and Evidence in Support Construction and Evidence in
5 Bold) Support
1. A method for PROPOSED CONSTRUCTION: PROPOSED CONSTRUCTION:
6 counting wild ducks, birds that quack birds that swim
comprising the steps of .
7 .. INTRINSIC EVIDENCE: INTRINSIC EVIDENCE:
(’123 Patent, Claims 1 & ’123 Patent col. 5:8 (“distinctive ’123 Patent col 5:10 (“ducks may
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2) honking”); Response to Office be found on or near bodies of
9 Action, 4/15/09, at 3 (“This water”); Response to Office
[or] patent is distinguished from the Action, 4/15/09, at 4 (“water
10 prior art in that the quacking of fowl are particularly amenable to
ducks the bird is featured”). being counted by this method”).
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Found in: DICTIONARY/TREATISE DICTIONARY/TREATISE
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’123 Patent, Claims 1, 2 DEFINITIONS: Webster’s DEFINITIONS: Random House
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13 ’456 Patent, Claims 1, 8 Dictionary (“duck: bird that Dictionary (“An aquatic bird”);
quacks”); Field Guide (“bird call: Field Guide (same)
14 quack”);
15 EXTRINSIC EVIDENCE: EXTRINSIC EVIDENCE:
16 McDonald Dep. at 12:10 (“I’d say Marx Dep. at xx:xx (“like a duck
the quacking makes it a duck”); to water”); ’456 Patent at col.
17 ’456 Patent at col. 9:4; Donald 1:38; Daffy Decl. at ¶ 7.
Decl. ¶ 6.
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(Or any other substantially similar format that permits the court to compare terms side by side.)
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20 NOT:
21 Claim Language Plaintiff’s Proposed Construction Defendant’s Proposed
(Disputed Terms in and Evidence in Support Construction and Evidence in
22 Bold) Support
1. A method for ducks wild ducks
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counting wild ducks, ... ...
24 comprising the steps of . birds that quack birds that quack and have never
.. lived in captivity
25 ... ...
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