IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
STANDING ORDER FOR PATENT CASES
The following instructions shall apply to all patent cases assigned to Judge Jeffrey S.
White.
Joint Claim Construction Statement
1. The initial joint claim construction statement required by Patent Local Rule 4-3 shall be
truly joint. Disputed terms, phrases, and clauses shall be designated as disputed. All
other terms shall be presumed undisputed. For any term in dispute, the parties must agree
on the identity of the term. With regard to disputed terms, phrases, or clauses, the joint
statement shall list each disputed term, phrase, or clause (listed by claim); each party’s
proposed construction; and support for each party’s proposed construction in table
format.
2. Parties shall attach to the joint claim construction statement copies of all patents in
dispute. Parties shall also make a complete prosecution history for each patent available
to the Court upon request.
Claim Construction
3. As an initial matter, the Court will construe no more than ten terms. If more than ten
terms are at issue, the parties shall meet and confer before the preparation of the joint
claim construction statement on narrowing the selection of terms to be construed by the
Court and shall jointly propose the ten terms requiring construction.
4. If a party genuinely believes that it will require that more than ten terms be
construed, that party may request leave to designate additional terms for construction,
pursuant to Civil Local Rule 7-11(b). The requesting party must demonstrate good cause
and explain why other methods of limiting the claims at issue (such as the selection of
representative claims or any grouping of claims by issues presented) would be
ineffective. The request must be filed no later than two weeks before the deadline for
filing the joint claim construction statement. If good cause is shown, the Court will either
agree to construe all terms or schedule a second claim construction proceeding on the
excess terms. If more than ten terms are submitted for construction without leave of
court, the Court will construe the first ten terms listed in the joint claim construction
statement and sanctions may be imposed.
5. Claim construction briefs shall address each disputed term, but only those that are truly
disputed, following the order of the joint statement. The opening and opposition briefs
shall not exceed 25 pages; the reply brief shall not exceed 15 pages. The Court
anticipates that a meaningful meet and confer between the parties preceding the
preparation of the joint claim construction statement will obviate the need for a party to
propose in its briefs a claim construction that differs from that proposed in the statement.
While the Court encourages the parties to negotiate mutually agreeable constructions, the
Court discourages the parties from proposing new constructions for the first time in reply
briefs or other filings that do not afford the opposing party an opportunity to respond.
However, if it becomes necessary for a party to propose a construction that is different
from the one found in the joint claim construction statement, that party must clearly set
forth the new construction and explain the basis for the change. Additionally, that party
shall revise the joint claim construction statement, so that the Court will have one
document reflecting all current proposed constructions.
6. At the time of filing the reply briefs, the parties shall file an amended, final joint claim
construction statement, including only the remaining disputed terms, phrases, and
clauses.
Tutorial and Claim Construction Hearing
7. The Court will schedule a tutorial to occur one week prior to the claim construction
hearing. Tutorials will be scheduled for Thursdays at 10:00 a.m. Each side will be
permitted 45-60 minutes to present a short summary and explanation of the technology at
issue. The Court encourages counsel to meet and confer and, if possible, to present a
joint tutorial. If the parties cannot agree on a joint presentation, then the patent holder
makes the first presentation. Visual aids are encouraged. The Court prefers that someone
other than counsel make the presentation. Counsel will be permitted to make opening
remarks and then a brief summation following the presentation. No argument will be
permitted. The proceeding is not recorded and parties may not rely on statements made
at the tutorial in other aspects of the litigation.
8. The Court does not conduct prehearing conferences. The parties may address any
prehearing issues at the tutorial.
9. The patent holder will act as the moving party for the purposes of claim construction.
Opening briefs in support of claim construction must be filed at least six weeks before the
date of the claim construction hearing, and the briefing schedule set forth at Patent Local
Rule 4-5 will apply.
10. The Court will not ordinarily hear extrinsic evidence at the claim construction hearing.
Should it become apparent that testimony will be necessary, counsel may submit a
request within two weeks of the hearing to seek the Court’s prior approval for such a
request.
11. Demonstrative exhibits and visual aids are permissible at the hearing as long as they are
based on information contained in the papers already filed. Counsel shall exchange
copies of exhibits no later than forty-eight hours prior to the hearing.
12. Claim construction hearings will take place one week following tutorials. Claim
construction hearings generally will be scheduled for no longer than two hours on
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Thursdays at 10:00 a.m. However, the Court will specially set the hearing on a different
day and for a longer period of time if warranted. Counsel should make a written request
to the Court as soon as it is apparent that a special setting is necessary.
Subsequent Case Management Report
13. Upon issuance of the claim construction ruling, the Court will also set a date for the filing
of a further joint case management status report. In that report, the parties must address
the following topics:
• whether either party wishes to certify the claim construction ruling for immediate
appeal to the Federal Circuit;
• the filing of dispositive motions and timing of those motions;
• if willful infringement has been asserted, whether the allegedly-infringing
party wishes to rely on the advice of counsel defense. If so, the parties should be
prepared to address proposals for resolving any attorney-client privilege issues
that arise, and whether the parties believe bifurcation of the trial into liability and
damages phases would be appropriate;
• anticipated post-claim construction discovery;
• any other pretrial matters; and
• the progress of settlement discussions, if any.
The Court will review the report and, if necessary, schedule a further case management
conference and enter any appropriate orders.
Miscellaneous
14. All stipulated protective orders and filings shall comply with Civil Local Rule 79-5.
Parties shall also submit a complete unredacted chambers copy of any brief or supporting
papers lodged under seal with all confidential material highlighted.
IT IS SO ORDERED.
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE
Rev. 6/2019
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