UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
JUDGE EDWARD J. DAVILA
STANDING ORDER FOR PATENT CASES
I. Application of Standing Order
Unless otherwise indicated by the Court, this Standing Order applies to all actions
asserting claims for patent infringement and for declaratory judgment of non-
infringement assigned to Judge Edward J. Davila.
Parties and counsel shall comply with all aspects of this Standing Order, the
Standing Order for Civil Cases, the Federal Rules of Civil Procedure, the Civil
and Patent Local Rules, and all General Orders of the Northern District of
California.
II. Patent Disclosures
Cross-references: Patent L.R. 3-1–3-6
Referral to Magistrate Judge. Any dispute regarding any party’s Patent
Disclosures are referred to the assigned Magistrate Judge. Requests to amend a
party’s Infringement or Invalidity Contentions are likewise referred to the
assigned Magistrate Judge.
III. Joint Claim Construction and Prehearing Statement
Cross-reference: Patent L.R. 4-3
A. Contents. Any disputed terms, phrases, and clauses (hereinafter, for simplicity,
“terms”) 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, the joint statement shall list each term, each
party’s proposed construction, and support for each party’s construction side by
side. Parties are reminded that proposed constructions should be suitable for
incorporation in a jury instruction. A model statement is included as Attachment
A to this Order.
B. Attachments. Parties shall attach to the joint claim construction statement one
copy of each patent in dispute. Parties shall also be prepared to make the complete
prosecution history for each patent available to the Court upon request.
IV. Claim Construction Briefing
Cross-references: Patent L.R. 4-3 & 4-5
A. Scope. As an initial matter, the Court will construe only those terms designated
by the parties as “most significant” pursuant to Patent L.R. 4-3(c). The claim
construction briefs shall address each of those terms and only those terms.
B. Enlarging the Scope. If any party genuinely believes that construing more than
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ten terms is necessary, that party may request leave to designate additional terms
for construction by filing an administrative motion under 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. If all parties agree that more than ten terms should be construed, the
motion should be made jointly. Any such request, whether unilateral or joint,
must be made on or before the deadline for filing the Joint Claim Construction
and Prehearing Statement. If good cause is shown, the Court may agree to
construe all terms or schedule a second claim construction proceeding on the
excess terms.
C. Format. The opening and responsive briefs shall not exceed 25 pages; the reply
brief shall not exceed 15 pages.
D. Timing. Briefing deadlines are usually set forth in a Patent Scheduling Order.
Otherwise, the default schedule established by Patent L.R. 4-5 applies.
E. Evolving Claim Construction Positions. The Court encourages the continuing
negotiation of mutually agreeable constructions even during the briefing process.
However, parties are discouraged 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. 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. Concurrently with the filing of the reply briefs, the parties shall file an
amended joint claim construction statement if there has been any change in the
parties’ claim construction positions.
V. Tutorial and Claim Construction Hearing
Cross-reference: Patent L.R. 4-6
A. Scheduling. By default, the Court will schedule a tutorial and claim construction
hearing for a half day (i.e., three hours) on a Tuesday, Wednesday, or Thursday.
The Court may allocate more time for the tutorial and hearing upon a showing of
good cause made by stipulation or administrative motion.
B. Prehearing Conference. Generally, the Court does not hold prehearing
conferences. The parties may raise any prehearing issues on the day of the
hearing. Many administrative and prehearing matters may also be resolved by
contacting the Courtroom Deputy, Adriana Kratzmann, at (408) 535-5356, or,
if necessary, by administrative motion.
C. Tutorial. The purpose of the tutorial is for the parties to inform and educate the
Court about the technology involved in the case. The parties will have one hour—
30 minutes per side—for the tutorial. Unless the parties agree otherwise, the
patent holder makes the first presentation. Demonstrations and visual aids are
encouraged. Any experts present are encouraged to participate. No argument or
cross-examination will be permitted, but the Court may pose questions to parties
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and witnesses. Statements made at the tutorial may not be used against a party in
other aspects of the litigation. The Court encourages the parties to make a joint
presentation and will entertain requests for additional time in those circumstances.
D. Claim Construction. The parties will have two hours—one hour per side—for
the claim construction hearing. The hearing will proceed term-by-term with the
patentee arguing first on odd-numbered terms. The parties’ arguments should
focus on intrinsic evidence, i.e., the patent itself and the prosecution history. Live
testimony at claim construction is disfavored; it will be allowed only by court
order upon an administrative motion explaining why the testimony would be
useful. Such a motion must be filed at least 14 days before the hearing.
E. Demonstratives. Demonstrative exhibits and visual aids are permissible at the
tutorial and the claim construction hearing as long as they are based on
information contained in papers previously filed.
No later than one week prior to the tutorial and/or claim construction hearing,
counsel shall exchange copies of any exhibits and visual aids, and shall submit
to the Court three bound copies of the exhibits and visual aids.
VI. Subsequent Case Management Conference
Cross-references: Civil L.R. 16-9 & 16-10; Standing Order for All Judges of the
Northern District of California re Contents of Joint Case Management Statement
A. At the time the claim construction ruling issues, the Court will also set a further
case management conference. In a joint case management statement to be filed no later
than 7 days before the conference, the parties must address the following topics:
1) whether either party wishes to certify the claim construction ruling for
immediate appeal to the Federal Circuit;
2) the filing of dispositive motions, and timing of those motions;
3) if willful infringement has been asserted, whether the party accused of
infringement 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;
4) anticipated post-claim construction discovery;
5) any other pretrial matters;
6) the progress of settlement discussions, if any; and
7) any changes or updates to any of the information requested in the Standing
Order for All Judges of the Northern District of California re Contents of
Joint Case Management Statement that have arisen since the filing of the
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parties’ previous case management statement.
The Court will review the statement to determine whether the conference
is necessary, and will enter any appropriate orders.
VII. Dispositive Motions
A. Application. To the extent it contains requirements that differ from any other
standing order applicable to civil cases, this section controls in cases asserting
claims for patent infringement or for declaratory judgment of non-infringement.
B. Summary Judgment. Before filing a summary judgment motion on issues of
infringement or invalidity, a party must meet and confer with opposing counsel to
prepare one joint statement of undisputed facts. The statement should be filed
concurrently with the motion. Separate statements are not permitted. Once a hearing
date for the motion has been set and the briefing is closed, the moving party shall
compile a three ring binder to be lodged with the Court containing (1) the statement
of undisputed facts, (2) the motion and any supporting memorandum of law, (3) the
opposition memorandum, (4) any reply memorandum, and (5) any exhibits in
support or opposition to the motion, which shall be clearly labeled. At the beginning
of each binder the moving party shall include jointly prepared charts signed by all
parties’ counsel formatted as shown in Attachment B to this order. Each statement
in the chart shall be supported by appropriate citations to the motion papers and or
exhibits.
VIII. Miscellaneous
Opportunities for Junior Lawyers. The Court strongly encourages parties to
permit less experienced lawyers to have an important role in hearings and at trial.
IT IS SO ORDERED.
Dated: May 3, 2019
________________________________
EDWARD J. DAVILA
United States District Judge
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ATTACHMENT A
Model Joint Claim Construction Statement
Claim Language Plaintiff’s Proposed Construction and Defendant’s Proposed Construction
(Disputed Terms in Bold) Evidence in Support and Evidence in Support
1. A method for counting PROPOSED CONSTRUCTION: PROPOSED CONSTRUCTION:
wild ducks, comprising birds that quack birds that swim
the steps of . . .
(’123 Patent, Claims 1 & INTRINSIC EVIDENCE: INTRINSIC EVIDENCE:
2) ’123 Patent col. 5:8 (“distinctive ’123 Patent col 5:10 (“ducks may be
honking”); Response to Office found on or near bodies of water”);
[or] Action, 4/15/09, at 3 (“This patent is Response to Office Action, 4/15/09,
distinguished from the prior art in at 4 (“water fowl are particularly
ducks that the quacking of the bird is amenable to being counted by this
featured”). method”).
Found in:
’123 Patent, Claims 1, 2 DICTIONARY/TREATISE DICTIONARY/TREATISE
’456 Patent, Claims 1, 8 DEFINITIONS: Webster’s DEFINITIONS: Random House
Dictionary (“duck: bird that Dictionary (“An aquatic bird”); Field
quacks”); Field Guide (“bird call: Guide (same)
quack”);
EXTRINSIC EVIDENCE: EXTRINSIC EVIDENCE:
McDonald Dep. at 12:10 (“I’d say Marx Dep. at xx:xx (“like a duck to
the quacking makes it a duck”); ’456 water”); ’456 Patent at col. 1:38;
Patent at col. 9:4; Donald Decl. ¶ 6. Daffy Decl. ¶ 7.
(Or any other substantially similar format that permits the Court to compare terms side by
side.) NOT:
Claim Language Plaintiff’s Proposed Construction Defendant’s Proposed Construction
(Disputed Terms in Bold) and Evidence in Support and Evidence in Support
1. A method for counting ducks wild ducks
wild ducks, comprising ... ...
the steps of . . . birds that quack birds that quack and have never lived
in captivity
... ...
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ATTACHMENT B
Chart 1
Summary of Infringement Issues
Patent Claim Elements Stipulated Accused Product(s) Defense(s) Asserted
Construction or Court
Construction
’000 Patent, Claim 1
An apparatus apparatus means Riverside Model 2 —
comprising: “device”
1. a handle handle means “a part Riverside Model 2 the product lacks a
held by the human part no. 80015 handle
hand”
... ... ... ...
Chart 2
Summary of Invalidity Issues
Patent Claim Basis of Summary of Summary of Comments
Challenge Argument in Argument in
Support Opposition
’123 Patent, Lack of disclosure The specification The reference is to This issue is
Claim 1 of best mode states that the a different controlled by the
inventor was invention Court’s
aware of a specific construction of the
undisclosed term “wild ducks”
method (See ’123
Patent col. 3:5-10.)
(Or other substantially similar formats that give a structured overview of the issues presented.)
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