STANDING ORDER IN PATENT CASES
1. Application of Standing Order
(a) This Standing Order applies to patent infringement, validity and
unenforceability actions and proceedings filed in or transferred to this District
except those in which a 26(f) conference was held before the effective date of this
Standing Order. The Court may modify the obligations or deadlines set forth in
this Standing Order based on the circumstances of any particular case, including,
without limitation, the simplicity or complexity of the case as shown by the patents,
claims, technology, products, or parties involved.
(b) The Local Civil Rules and the Standing Order on Scheduling in Civil
Cases also apply to such actions and proceedings, except to the extent they are
inconsistent with this Standing Order.
2. Initial Scheduling Conference
When the parties confer pursuant to Fed. R. Civ. P. 26(f), in addition to the
matters covered by Fed. R. Civ. P. 26, the parties must discuss and address in the
report filed pursuant to Fed. R. Civ. P. 26(f):
(a) any proposed modification of the deadlines or proceedings set forth in
this Standing Order;
(b) proposed format of and deadlines for claim construction filings and
proceedings, including a proposal for any expert discovery the parties propose to
take in connection therewith; and
(c) proposed format of and deadlines for service of infringement,
non-infringement, invalidity and/or unenforceability contentions, including any
proposed deadlines for responses thereto or supplementation thereof.
3. Certification of Disclosures
All statements, disclosures, or charts filed or served in accordance with this
Standing Order are deemed disclosures subject to Rule 26(g) of the Federal Rules
of Civil Procedure.
4. Admissibility of Disclosures
Statements, disclosures or charts governed by this Standing Order are
admissible to the extent permitted by the Federal Rules of Evidence or Civil
Procedure. However, the statements and disclosures provided for in Paragraph 11
of this Standing Order are not admissible for any purpose other than in connection
with motions seeking an extension or modification of the time periods within which
actions contemplated by this Standing Order shall be taken.
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5. Discovery Objections Based on Standing Order
A party may object to a mandatory disclosure under Fed. R. Civ. P. 26(a) or
to a discovery request as conflicting with or premature under this Standing Order
only if the mandatory disclosure or discovery request would require disclosure of
(a) information of the kind dealt with by Paragraphs 6, 7, 8, 10, 11 and 12 of this
Standing Order or (b) responses to such information. Where a party properly
objects to a discovery request or declines to provide information in its initial
disclosures, that party shall provide the requested information by the date on
which it is required to be provided under this Standing Order, or as otherwise
required by the Court, unless there exists another legitimate grounds for objection.
Contentions responsive to information of the kind dealt with by Paragraphs 6, 7, 8,
10, 11 and 12, if sought, may be provided forty-two (42) days after the date on
which the information is provided, unless otherwise required by the Court.
6. Disclosure of Asserted Claims and Infringement Contentions
Unless otherwise specified by the Court, not later than forty-two (42) days
after the filing of the parties’ 26(f) report, a party claiming patent infringement must
serve on all parties a ”Disclosure of Asserted Claims and Infringement
Contentions,” which identifies for each opposing party, each claim of each
patent-in-suit that is allegedly infringed and each product or process of each
opposing party of which the party claiming infringement is aware that allegedly
infringes each identified claim.
7. Invalidity Contentions
Unless otherwise specified by the Court, not later than forty-two (42) days
after service of the ”Disclosure of Asserted Claims and Infringement Contentions,”
each party opposing a claim of patent infringement must serve upon all parties its
”Invalidity Contentions,” if any. Invalidity Contentions must identify each item of
prior art that the party contends allegedly anticipates or renders obvious each
asserted claim, and any other grounds of invalidity, including any under 35 U.S.C.
§ 101 or § 112, or unenforceability of any of the asserted claims.
8. Disclosure Requirement in Patent Cases Initiated by Declaratory Judgment
In all cases in which a party files a pleading seeking a declaratory judgment
that a patent is not infringed, is invalid, or is unenforceable, Paragraph 6 of this
Standing Order shall not apply with respect to such patent unless and until a claim
for patent infringement of such patent is made by a party. If a party does not assert
a claim for patent infringement in its answer to the declaratory judgment pleading,
unless otherwise specified in the Court’s Scheduling Order, the party seeking a
declaratory judgment must serve upon all parties its Invalidity Contentions with
respect to such patent that conform to Paragraph 7 of this Standing Order not later
than forty-two(42) days after the filing of the parties’ 26(f) report.
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9. Duty to Supplement Contentions
The duty to supplement in Fed. R. Civ. P. 26(e) shall apply to the
Infringement Contentions and the Invalidity Contentions required by Paragraphs 6
and 7 of this Standing Order.
10. Opinion of Counsel
Not later than forty-two (42) days after entry of an order ruling on claim
construction, each party that will rely on an opinion of counsel as part of a defense
to a claim of willful infringement or inducement of infringement, or that a case is
exceptional, must produce or make available for inspection and copying the
opinion(s) and any other documents relating to the opinion(s) as to which
attorney-client or work product protection has been waived as a result of such
production.
11. Joint Disputed Claim Terms Chart
By a date specified by the Court, the parties shall cooperate and jointly file a
Joint Disputed Claim Terms Chart listing the disputed claim terms and phrases,
including each party’s proposed construction, together with an identification of all
intrinsic and extrinsic evidence that supports or opposes the construction relied
upon by either party.
12. Claim Construction Briefing
Unless otherwise specified by the Court:
(a) Not later than thirty-five (35) days after filing of the Joint Disputed Claim
Terms Chart pursuant to Paragraph 11 of this Standing Order, the parties must
serve and file opening claim construction briefs and all supporting evidence and
testimony.
(b) Not later than thirty-five (35) days after service of the opening claim
construction briefs, the parties must serve and file responses to the opening claim
construction briefs and any additional supporting evidence and testimony.
13. Confidentiality
(a) Discovery may not be withheld on the basis of confidentiality absent
Court order. Pending entry of a protective order, the parties shall proceed as
follows:
(i) If any document, information including electronically stored
information (“ESI”), or thing (collectively, "Material") produced is deemed
confidential by the producing party, the Material shall be marked with the
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level of confidentiality claimed (e.g. “Confidential”, “Highly Confidential –
Attorneys’ Eyes Only” or “Highly Confidential – Outside Attorneys’ Eyes
Only”), by the disclosing party. Disclosure of the confidential Material shall
be limited to each party’s outside attorney(s) of record and the employees of
such outside attorney(s), except as set forth in 13(b).
(ii) If a party is not represented by an outside attorney, disclosure
of the confidential Material shall be limited to one (1) designated “in house”
attorney, whose identity and job functions shall be disclosed to the
producing party seven (7) days prior to any such disclosure, in order to
permit any motion for protective order or other relief regarding such
disclosure.
(b) After entry of a protective order, the limits on disclosure provided by
such order shall apply.
IT IS SO ORDERED,
/s/ Stefan R. Underhill
Stefan R. Underhill
United States District Judge
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