Judge Phyllis J. Hamilton
Courtroom 3, 3rd Floor
Kelly Collins, Courtroom Deputy
(510) 637-1296
STANDING ORDER FOR
PATENT CASES
The following instructions shall apply to all patent cases assigned to Judge
Phyllis Hamilton.
Joint Claim Construction Statement
1. The joint claim construction statement required by Pat. L. R. 4-3 must be
truly joint. Disputed terms, phrases, and clauses must be clearly designated as
disputed. All other terms will be presumed undisputed. For any term in dispute, the
parties must agree on what the term actually is. With regard to disputed terms,
phrases, or clauses, the joint statement must list each disputed term, phrase, or clause
(listed by claim); each party’s proposed construction; and support for each party’s
proposed construction side by side. A model joint claim construction statement is
attached to this order.
2. Parties must attach to the joint claim construction statement copies of all
patents in dispute. Parties must 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 in dispute, the parties must 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 must jointly propose the ten terms requiring
construction.
4. If a party genuinely believes that it will require that more than
approximately ten terms be construed, that party may move pursuant to Civ. L. R. 7-11
for leave to designate additional terms for construction. The requesting party must
demonstrate good cause and explain why other methods of limiting the claims at issue
(such as selecting representative claims or grouping 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, if necessary, schedule a second claim construction
proceeding on the terms that exceed ten. 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.
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5. Claim construction briefs must address each disputed term, but only those
that are truly disputed. The disputed terms must be addressed by both parties in the
same order as they appear in the joint claim construction statement. Additionally, the
parties shall advise the court terms disputed in the joint claim construction statement
are no longer disputed in the briefs. And of course, the briefs may not address disputes
that are not set forth in the joint claim construction statement. The court anticipates that
a meaningful meet and confer 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 which do not
afford the opposing party an opportunity to respond. However, if it becomes necessary
for a party to propose a different construction in its brief than that 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.
Tutorial and Claim Construction Hearing
6. The court will schedule a tutorial to occur two to four weeks prior to the
claim construction hearing. Each side will be permitted 30-45 minutes to present a
summary of the background of the technology involved, an explanation of the nature of
the problem the inventor sought to solve, and reference to the prior art in existence at
the time of conception. The patent holder will make the first presentation. Visual aids
are encouraged. The court prefers that someone other than counsel make the
presentation. No argument or examination will be permitted. The proceeding is not
recorded and statements made during the tutorial may not be cited as judicial
admissions against a party.
7. Prehearing conferences are not generally held. However, either party
may request a telephone conference within two weeks prior to the hearing, or the
parties may address any prehearing issues at the tutorial.
8. 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 L. R. 4-5 will apply.
9. The court will not ordinarily hear extrinsic evidence at the claim
construction hearing. Should it become apparent that testimony will be necessary,
counsel may request a telephone conference with the court within two weeks of the
hearing to seek the court’s approval.
10. 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.
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11. The claim construction hearing will generally be scheduled for no longer
than 3 hours on Wednesday’s law and motion calendar. However, the court will
specially set the hearing on a different day and for a longer period of time if warranted.
Counsel should request a telephone conference with the court as soon as it is apparent
that a special setting is necessary.
Subsequent Case Management Conference
12. Upon issuance of the claim construction ruling, the court will also set a
date for a further case management conference. In the case management statement to
be filed 7 calendar days prior to the conference, the parties must address the following
topics:
a) anticipated post-claim construction discovery;
b) the filing of dispositive motions;
c) 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;
d) the progress of settlement discussions, if any;
e) any other pretrial matters.
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Sample Claim Construction Statement
Claim Language Plaintiff’s Proposed Construction Defendant’s Proposed Construction
(Disputed Terms and Evidence in Support and Evidence in Support
in Bold)
‘xxx Patent
1. A method for duck duck
counting ducks,
comprising the PROPOSED CONSTRUCTION: a PROPOSED CONSTRUCTION: a
steps of: bird that quacks. bird that swims
[or] DICTIONARY/TREATISE DICTIONARY/TREATISE
DEFINITIONS: Webster’s DEFINITIONS: Random House
ducks Dictionary (“duck: bird that Dictionary (“an aquatic bird”); Field
quacks”); Field Guide (“bird call: Guide (same)
Found in claim quack”);
numbers: INTRINSIC EVIDENCE: ‘xxx Patent
INTRINSIC EVIDENCE: ‘xxx col _:__ (“ducks may be found on or
‘xxx Patent: y, z Patent col. _:__ (“distinctive near bodies of water”); Prosecution
honking”); Prosecution History at __ History at __ (“water fowl are
‘yyy Patent: a, b (“This patent is distinguished from particularly amenable to being
the prior art in that the quacking of counted by this method”).
the bird is featured”).
EXTRINSIC EVIDENCE: G. Marx
EXTRINSIC EVIDENCE: Depo at xx:xx (“like a duck to
McDonald Depo. at xx:xx (“I’d say water”); ‘456 Patent at col _:__; Daffy
the quacking makes it a duck”); ‘123 Decl. at ¶ __.
Patent at col _:__; Donald Decl. at ¶
__ .
(Or any other substantively similar format that permits the court to compare terms side by side)
NOT:
Claim Language Plaintiff’s Proposed Defendant’s Proposed
(Disputed Terms in Construction and Evidence in Construction and Evidence in
Bold) Support Support
‘xxx Patent
1. A method for duck counting ducks
counting ducks . . .
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