UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
STANDING ORDER FOR PATENT CASES
Judge Yvonne Gonzalez Rogers
(Revised March 13, 2024)
1. Joint Claim Construction Statement:
a. The initial claim construction statement required by Patent Local Rule 4-3 shall be 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. For each claim, each party shall identify with specificity the
intended impact of the proposed constructions on the merits of the case.
b. With respect 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;
support for each party’s proposed construction side by side; and each party’s impact
statement for each term to be construed. A model construction statement is attached
hereto as Exhibit A.
c. 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.
2. Claim Construction
a. 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.
b. 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.
c. 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.
d. 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 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.
e. At the time of filing the reply briefs, the parties shall file an amended joint claim
construction statement, including only the remaining disputed terms, phrases, and
clauses.
3. Tutorial and Claim Construction Hearing
a. The Court will schedule a tutorial to occur one to three weeks prior to the claim
construction hearing. Each side will be permitted 45-60 minutes to present a short
summary and explanation of the technology at issue. The party who intends to describe
the technology broadly precedes a more narrow description of the technology. Visual
aids are encouraged. The parties shall contact the Courtroom Deputy, Aris Garcia, at
(510) 637-3540 to make arrangements for testing any audio-visual equipment prior to the
tutorial if in person or Zoom requirements if remote.
b. Parties can decide who should make the presentation. No argument will be permitted.
As a general matter, the tutorial is not recorded. Parties may not rely on statements made
at the tutorial in other aspects of the litigation. The Court, however, encourages the
parties to make a joint presentation and will entertain requests for additional time in those
circumstances.
c. Prehearing conferences generally are not 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.
d. 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.
e. 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.
f. Demonstrative exhibits and visual aids are permissible at the hearing so long as they are
based on information contained in the papers already filed. Counsel shall exchange
copies of exhibits, as well as provide copies to the Court, no later than twenty-four
hours prior to the hearing, and shall bring printed copies to the hearing. If a party
requires use of audio-visual equipment in the courtroom, the party shall contact the
Courtroom Deputy, Edwin Cuenco, to make an appointment to test that equipment on a
date at least one day in advance of the hearing.
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g. The claim construction hearing generally will be scheduled for no longer than three (3)
hours on either Wednesday or Friday afternoon.
4. Subsequent Case Management Conference
a. Upon issuance of the claim construction ruling, the Court will also set a date for a further
joint case management conference. In a joint case management statement to be filed
fourteen (14) days prior to the conference, the parties must address the following topics:
i. whether either party wishes to certify the claim construction ruling for
immediate appeal to the Federal Circuit;
ii. the filing of dispositive motions, and timing of those motions;
iii. 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;
iv. anticipated post-claim construction discovery;
v. any other pretrial matters; and
vi. the progress of settlement discussions, if any.
b. The Court will review the reports and, if necessary, schedule a further case
management conference and enter any appropriate orders.
5. Miscellaneous
a. All stipulated protective orders and filings shall comply with Civil Local Rule 79-5.
b. For documents submitted in connection with administrative motions to seal, parties shall
provide chambers copies of the unredacted documents with proposed redacted material
highlighted, as required Civil Local Rule 79-5(d)(1)(D), only. Do not submit chambers
copies of the redacted versions of documents sought to be sealed.
Dated: March 13, 2024
YVONNE GONZALEZ ROGERS
United States District Judge
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Exhibit A
Sample Claim Construction Statement
‘xxx Patent Plaintiff’s Proposed Defendant’s Proposed
Claim Language Construction and Evidence in Construction and Evidence in
Support Support
1. “A method for PROPOSED CONSTRUCTION: PROPOSED CONSTRUCTION:
counting ducks, Duck: a bird that quacks Duck: a bird that swims
comprising the steps of: .
. .” DICTIONARY/TREATISE DICTIONARY/TREATISE
[or alternatively] DEFINITIONS: DEFINITIONS:
Webster’s Dictionary (“duck: Random House Dictionary (“An
Ducks bird that quacks”); aquatic bird”);
Found in claim numbers: Field Guide (“bird call: quack”) Field Guide (same)
‘xxx Patent: y, z
INTRINSIC EVIDENCE: INTRINSIC EVIDENCE:
‘xxx Patent col. _: ‘xxx Patent col _: (“ducks
(“distinctive honking”); may be found on or near bodies
Prosecution History at of water”);
(“This patent is distinguished Prosecution History at (“water
from the prior art in that the fowl are particularly amenable to
quacking of the bird is featured”). being counted by this method”).
EXTRINSIC EVIDENCE: EXTRINSIC EVIDENCE:
McDonald Depo. at xx:xx (“I’d G. Marx Depo at xx:xx (“like a
say the quacking makes it a duck to water”); ‘456 Patent at
duck”); ‘123 Patent at col _: ; col _: ; Daffy Decl. at ¶ .
Donald Decl. at ¶ .
Plaintiff’s Impact
Statement:
Defendant’s Impact
Statement:
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