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UNITED STATES DISTRICT COURT
4 NORTHERN DISTRICT OF CALIFORNIA
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6 STANDING ORDER FOR PATENT CASES BEFORE
DISTRICT JUDGE HAYWOOD S. GILLIAM, JR.
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8 CONFORMITY TO RULES
9 1. Parties and counsel shall follow the Federal Rules of Civil Procedure, the Patent
10 Local Rules, and the General Orders of the Northern District of California, except as superseded
11 by this Court’s standing orders.
12 REFERRAL TO MAGISTRATE JUDGE
Northern District of California
United States District Court
13 2. Any dispute regarding any party’s patent disclosures pursuant to Patent Local Rules
14 3-1 to 3-5 typically is referred to the assigned Magistrate Judge. Requests to amend or strike a
15 party’s infringement contentions or invalidity contentions are likewise typically referred to the
16 assigned Magistrate Judge.
17 JOINT CLAIM CONSTRUCTION STATEMENT
18 3. The initial joint claim construction statement required by Patent Local Rule 4-3
19 must be truly joint. Disputed terms, phrases, and clauses must be designated as disputed. All
20 other terms will be presumed to be undisputed. For any term in dispute, the parties must agree on
21 the identity of the term. With regard to disputed terms, phrases, or clauses, the joint statement will
22 list each disputed term, phrase, or clause (listed by claim); each party’s proposed construction; and
23 support for each party’s proposed construction side by side. A model claim construction statement
24 is attached to this Order.
25 4. Parties must attach to the joint claim construction statement copies of all patents in
26 dispute. Parties must also make a complete prosecution history for each patent available to the
27 Court upon request.
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1 CLAIM CONSTRUCTION
2 5. The Court will generally construe no more than 10 terms. If multiple terms present
3 identical issues, they may be grouped together or a representative term may be chosen, and each
4 group or representative term may be considered a single term for purposes of the ten-term limit. If
5 more than ten terms are at issue, the parties must meet and confer before the preparation of the
6 joint claim construction statement to narrow the number of terms that are to be construed by the
7 Court and shall jointly propose the ten terms requiring construction.
8 6. If a party has a good-faith basis for believing that more than ten terms need to be
9 construed, that party may request leave to designate additional terms for construction, pursuant to
10 Civil Local Rule 7-11. The requesting party must demonstrate good cause and explain why other
11 methods of limiting the terms at issue (such as the selection of representative terms or any
12 grouping of terms by issues presented) would be ineffective. The request must be filed no later
Northern District of California
United States District Court
13 than two weeks before the deadline for filing the joint claim construction statement. If good cause
14 is shown, the Court will either agree to construe all terms or schedule a later proceeding to
15 construe the remaining terms before trial. If more than ten terms are submitted for construction
16 without leave of court, the Court will construe only the first ten terms listed in the joint claim
17 construction statement and sanctions may be imposed.
18 TUTORIAL AND CLAIM CONSTRUCTION HEARING
19 7. All hearings and appearances will be held in Courtroom 2 on the 4th Floor of the
20 United States Courthouse, 1301 Clay Street, Oakland, California.
21 8. At the tutorial, each side will generally be permitted 45 minutes to present a short
22 summary and explanation of the technology at issue. The patentee presents first. Non-
23 argumentative demonstrations and visual aids are encouraged, and the Court generally prefers that
24 someone other than counsel make the presentation. No argument will be permitted.
25 9. Depending on the technology involved, the Court may determine that the assistance
26 of a neutral expert would be helpful. In that case, the Court may direct the parties to confer and, if
27 possible, reach an agreement as to three experts in the field who would be appropriate to act as a
28 neutral expert to assist the Court during the claim construction proceedings and/or the trial. The
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1 Court will then choose one of the three to appoint as a neutral expert pursuant to Federal Rule of
2 Evidence 706. The parties will split the cost of the expert equally.
3 10. At the claim construction hearing, each side will generally be permitted 90 minutes
4 to present its argument. Claim construction will proceed like a typical oral argument, not a
5 PowerPoint lecture. Demonstrative exhibits and visual aids that are duplicative of the arguments
6 made in the parties’ claim construction briefs are strongly discouraged.
7 11. If the either party wishes to present testimony at the claim construction hearing,
8 counsel must seek leave of Court by filing an administrative motion pursuant to Civil Local Rule
9 7-11 at least seven days in advance of the hearing.
10 SUBSEQUENT CASE MANAGEMENT REPORT
11 12. Upon issuance of the claim construction ruling, the Court will also set a date for the
12 filing of a further joint case management status report. In that report, the parties must address the
Northern District of California
United States District Court
13 following topics:
a. whether either party wishes the Court to certify the claim construction ruling
14 for immediate appeal to the Federal Circuit;
15 b. the filing of dispositive motions, and the timing of those motions;
c. if willful infringement has been asserted, whether the allegedly-infringing party
16 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
17 that arise, and whether the parties believe bifurcation of the trial into liability
and damages phases would be appropriate;
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d. anticipated post-claim construction discovery;
19 e. proposed deadlines and court dates for the remainder of the case schedule;
f. any other pretrial matters; and
20 g. the progress of settlement discussions, if any.
21 The Court will review the reports and, if necessary, schedule a further case management
22 conference and enter any appropriate orders.
23 IT IS SO ORDERED.
24 Dated: March 10, 2017
25 ______________________________________
HAYWOOD S. GILLIAM, JR.
26 United States District Judge
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1 Sample Claim Chart
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’123 Patent
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Claim Language (Disputed Plaintiff’s Proposed Defendant’s Proposed
4 Terms in Bold) Construction and Evidence in Construction and Evidence in
Support Support
5 1. A method for counting a bird that quacks a bird that swims
ducks, comprising the steps of:
6 INTRINSIC EVIDENCE: ’123 INTRINSIC EVIDENCE: ’123
[or] Patent col. _:__ (“a distinctive Patent col. _:__ (“Ducks may
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honking”); Prosecution History be found on or near bodies of
8 ducks at __ (“This patent is water.”); Prosecution History
distinguished from the prior art at __ (“Water fowl are
9 Found in asserted claim in that the quacking of the bird particularly amenable to being
numbers: a, b, c, d is featured.”). counted by this method.”).
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11 DICTIONARY/TREATISE DICTIONARY/TREATISE
DEFINITIONS: Webster’s DEFINITIONS: Random
12 Dictionary (“A duck: bird that House Dictionary (“A duck: an
Northern District of California
quacks”); Field Guide (“A bird aquatic bird”).
United States District Court
13 call: quack”).
EXTRINSIC EVIDENCE: G.
14 EXTRINSIC EVIDENCE: Marx Depo. at __:__ (“Like a
15 McDonald Depo. at __:__ duck to water.”); Daffy Decl.
(“I’d say the quacking makes it at __.
16 a duck.”); Donald Decl. at __.
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(Or any other substantively similar format that permits the Court to compare terms side by side.)
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