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4 UNITED STATES DISTRICT COURT
5 NORTHERN DISTRICT OF CALIFORNIA
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7 STANDING ORDER FOR CLAIM CONSTRUCTION IN PATENT CASES BEFORE
8 JUDGE JAMES DONATO
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10 These instructions apply to all patent cases assigned to Judge James Donato.
11 JOINT CLAIM CONSTRUCTION STATEMENT
12 1. The initial joint claim construction statement required by Patent Local Rule 4-3
Northern District of California
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13 must be truly joint. Disputed terms, phrases, and clauses must be designated as disputed. All
14 other terms will be presumed to be undisputed. For any term in dispute, the parties must agree on
15 the identity of the term. With regard to disputed terms, phrases, or clauses, the joint statement will
16 list each disputed term, phrase, or clause (listed by claim); each party’s proposed construction; and
17 support for each party’s proposed construction side by side. A model construction statement is
18 attached to this Order.
19 2. Parties must attach to the joint claim construction statement copies of all patents in
20 dispute. Parties must also make a complete prosecution history for each patent available to the
21 Court upon request.
22 CLAIM CONSTRUCTION
23 3. As an initial matter, the Court will generally construe no more than ten terms. If
24 multiple terms present identical issues, they may be grouped together or a representative term may
25 be chosen, and each group or representative term may be considered a single term for purposes of
26 the ten-term limit. If more than ten terms are at issue, the parties must meet and confer before the
27 preparation of the joint claim construction statement to narrow the number of terms that are to be
28 construed by the Court and shall jointly propose the ten terms requiring construction.
1 4. If a party genuinely believes that it will require that more than ten terms be
2 construed, that party may request leave to designate additional terms for construction, pursuant to
3 Civil Local Rule 7-11. The requesting party must demonstrate good cause and explain why other
4 methods of limiting the terms at issue (such as the selection of representative terms or any
5 grouping of terms by issues presented) would be ineffective. The request must be filed no later
6 than two weeks before the deadline for filing the joint claim construction statement. If good cause
7 is shown, the Court will either agree to construe all terms or schedule a second claim construction
8 proceeding on the excess terms. If more than ten terms are submitted for construction without
9 leave of court, the Court will construe only the first ten terms listed in the joint claim construction
10 statement and sanctions may be imposed.
11 5. Claim construction briefs must address each disputed term, but only those that are
12 truly disputed, following the order of the joint statement. The opening and opposition briefs may
Northern District of California
United States District Court
13 not exceed 20 pages; the reply brief may not exceed 10 pages. The Court anticipates that a
14 meaningful meet and confer between the parties preceding the preparation of the joint claim
15 construction statement will eliminate the need for a party to propose in its briefs a claim
16 construction that differs from that proposed in the statement. While the Court encourages the
17 parties to negotiate mutually agreeable constructions, the parties may not propose new
18 constructions for the first time in reply briefs or other filings that do not afford the opposing party
19 an opportunity to respond. If for some exceptional reason a party needs to propose a different
20 construction in its brief than that found in the joint claim construction statement, that party must
21 submit a short request for consideration to the Court that clearly sets forth the new construction
22 and explains the basis for the change.
23 6. At the time of filing the reply briefs, the parties shall file an amended, final joint
24 claim construction statement if there has been any change in the parties’ claim construction
25 positions, including in the amended statement only the remaining disputed terms, phrases, and
26 clauses.
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1 TUTORIAL AND CLAIM CONSTRUCTION HEARING
2 7. The Court may schedule a tutorial to occur one to two weeks prior to the claim
3 construction hearing. Each side will generally be permitted 30-45 minutes to present a short
4 summary and explanation of the technology at issue. The patent holder makes the first
5 presentation. Demonstrations and visual aids are encouraged. The Court has a strong preference
6 for individuals other than counsel to make the presentations. Inventors, company personnel and
7 individuals who work directly with the technology are often good candidates. Counsel may make
8 introductory remarks. No argument is permitted. The proceeding is not recorded and parties may
9 not use or rely on statements made at the tutorial in the litigation.
10 8. If a tutorial is scheduled, each party should file a written technology synopsis that
11 provides, in plain and accessible language, background information about the technology and
12 science to be discussed at the tutorial. The synopsis is due at least 7 court days before the
Northern District of California
United States District Court
13 tutorial, and should not exceed 12 pages. Do not include a rewrite of any portion of the patent or
14 claim construction statements, or argument on any legal issue such as invalidity, infringement,
15 patentability and so on. The synopsis should be a neutral overview of the technology related to
16 the tutorial.
17 9. Depending on the technology involved, the Court may determine that the assistance
18 of a neutral expert would be helpful. In that case, the Court may direct the parties to confer and, if
19 possible, reach an agreement as to three experts in the field who would be appropriate to act as a
20 neutral expert to assist the Court during the claim construction proceedings and/or the trial. The
21 Court will then choose one to appoint as a neutral expert pursuant to Federal Rule of Evidence
22 706. The parties will split the cost of the expert equally.
23 10. Prehearing conferences generally are not held. However, either party may request a
24 telephone conference within two weeks prior to the hearing, or the parties may address any
25 prehearing issues at the tutorial.
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1 11. The patent holder will act as the moving party for the purposes of claim
2 construction. Opening briefs in support of claim construction must be filed at least six weeks
3 before the date of the claim construction hearing, and the briefing schedule set forth at Patent
4 Local Rule 4-5 will apply.
5 12. The Court will not ordinarily hear extrinsic evidence at the claim construction
6 hearing. Should it become apparent that testimony will be necessary, counsel may request a
7 telephone conference with the Court within two weeks of the hearing to seek the Court’s approval.
8 13. Demonstrative exhibits and visual aids are permissible at the hearing as long as
9 they are based on information contained in the papers already filed. Counsel will exchange copies
10 of exhibits no later than 48 hours prior to the hearing.
11 14. The claim construction hearing generally will be scheduled for no longer than 3
12 hours on a Thursday afternoon. The Court, however, will specially set the hearing on a different
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United States District Court
13 day and for a longer period of time if warranted. Counsel should request a telephone conference
14 with the Court as soon as it is apparent that a special setting is necessary.
15 SUBSEQUENT CASE MANAGEMENT REPORT
16 15. Upon issuance of the claim construction ruling, the Court will also set a date for the
17 filing of a further joint case management status report. In that report, the parties must address the
18 following topics:
19 a. whether either party wishes the Court to certify the claim construction ruling
for immediate appeal to the Federal Circuit;
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b. the filing of dispositive motions, and the timing of those motions;
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c. if willful infringement has been asserted, whether the allegedly-infringing party
22 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
23 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;
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e. any other pretrial matters; and
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f. the progress of settlement discussions, if any.
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1 The Court will review the reports, and if necessary, schedule a further case management
2 conference and enter any appropriate orders.
3 IT IS SO ORDERED.
4 Dated: January 5, 2017
5 ______________________________________
JAMES DONATO
6 United States District Judge
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1 Sample Claim Chart
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Claim Language Plaintiff’s Proposed Defendant’s Proposed
3 (Disputed Terms in Bold) Construction and Evidence Construction and Evidence
4 in Support in Support
’xxx Patent
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1. A method for counting PROPOSED PROPOSED
7 ducks, comprising the CONSTRUCTION: a bird CONSTRUCTION: a bird
steps of: that quacks. that swims.
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[or] DICTIONARY/TREATISE DICTIONARY/TREATISE
9 DEFINITIONS: Webster’s DEFINITIONS: Random
ducks Dictionary (A duck: bird House Dictionary (A duck:
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that quacks); Field Guide an aquatic bird); Field
11 Found in claim (A bird call: quack). Guide (same).
numbers:
12 INTRINSIC EVIDENCE: INTRINSIC EVIDENCE:
Northern District of California
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’xxx Patent: y,z ’xxx Patent col. _:__ ’xxx Patent col _:__ (Ducks
13 ’xxx Patent: a,b (A distinctive honking); may be found on or near
14 Prosecution History at __ bodies of water);
(This patent is distinguished Prosecution History at __
15 from the prior art in that the (Water fowl are particularly
quacking of the bird is amenable to being counted
16 featured). by this method).
17 EXTRINSIC EVIDENCE: EXTRINSIC EVIDENCE:
18 McDonald Depo. at xx:xx G. Marx Depo at xx:xx (A:
(A: I’d say the quacking Like a duck to water); ’456
19 makes it a duck); ’123 Patent at col _:__; Daffy
Patent at col _:__; Donald Decl. at xx.
20 Decl. at xx.
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22 (Or any other substantively similar format that permits the court to compare terms side by side.)
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