In addition to the initial mediation provided for in Loc. R. Civ. P. 16(a), a second and third
mediation for patent cases shall be conducted as follows:
(a) Not later than twenty-one (21) days after the exchange of proposed claim
constructions, the parties shall hold a second mediation consistent with this Court’s Alternative
Dispute Resolution plan (Loc. R. Civ. P. 16(a)); and
(b) Not later than forty-two (42) days after entry of the claim construction order, the
parties shall hold a third mediation consistent with this Court’s Alternative Dispute Resolution plan
(Loc. R. Civ. P. 16(a)).
____________________________________________________________________________________
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APPENDIX A
TIMELINE
Event Deadline
Rule 26(f) Meeting 21 days prior to Case Management Conference
Filing of Civil Case Management Plan 7 days prior to Case Management Conference
Patentee: Initial Infringement Contentions 14 days after Case Management Conference
Accused Infringer: Non-Infringement and 56 days after Initial Infringement Contentions
Invalidity Contentions
Patentee: Responses to Invalidity Contentions 28 days after Non-Infringement and Invalidity
Contentions
Final Infringement and Invalidity Contentions 20 weeks after Initial Infringement Contentions
Final Non-Infringement Contentions and Final 28 days after Final Infringement and Invalidity
Responses to Invalidity Contentions Contentions
Exchange of Claim Terms for Construction 7 days after Final Infringement and Invalidity
Contentions
Exchange of Proposed Constructions 21 days after Exchange of Claim Terms for
Construction
Joint Claim Construction Statement 28 days after Exchange of Proposed
Construction
Completion of Claim Construction Discovery 28 days after filing of Joint Claim Construction
Statement
Patentee: Opening Markman Submissions 42 days after filing of Joint Claim Construction
Statement
Accused Infringer: Responding Markman 28 days after Opening Markman Submission
Submissions
Patentee: Reply Markman Brief 14 days after Responsive Markman Brief
Accused Infringer: Surreply Markman Brief 14 days after Reply Markman Brief
Advice of Counsel Disclosure 28 days after claim construction order
Initial Expert Reports (non-claim construction) 56 days after claim construction order
Responsive Expert Reports 28 days after service of Initial Expert Reports
Completion of All Discovery 112 days after claim construction order
Filing of Dispositive Motions 42 days after close of all discovery
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APPENDIX B
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
Plaintiff,
v. Civil Action No. _______________
Defendant.
[MODEL] ORDER REGARDING E-DISCOVERY IN PATENT CASES
The Court ORDERS as follows:
1. This Order supplements all other discovery rules and orders. It
streamlines Electronically Stored Information (“ESI”) production to promote a “just,
speedy, and inexpensive determination” of this action, as required by Federal Rule of
Civil Procedure 1.
2. This Order may be modified in the Court’s discretion or by agreement
of the parties. The parties shall jointly submit any proposed modifications within 30
days after the Federal Rule of Civil Procedure 16 conference. If the parties cannot
resolve their disagreements regarding these modifications, the parties shall submit their
competing proposals and a summary of their dispute.
3. Costs will be shifted for disproportionate ESI production requests
pursuant to Federal Rule of Civil Procedure 26. Likewise, a party’s nonresponsive or
dilatory discovery tactics will be cost-shifting considerations.
4. A party’s meaningful compliance with this Order and efforts to
promote efficiency and reduce costs will be considered in cost-shifting determinations.
5. Absent a showing of good cause, general ESI production requests
under Federal Rules of Civil Procedure 34 and 45, or compliance with disclosure
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requirements of the Local Patent Rules, shall not include metadata. However, fields
showing the date and time that the document was sent and received, as well as the
complete distribution list, shall generally be included in the production if such fields
exist.
6. General ESI production requests under Federal Rules of Civil
Procedure 34 and 45, or compliance with disclosure requirements of the Local Patent
Rules, shall not include email or other forms of electronic correspondence (collectively
“email”). To obtain email parties must propound specific email production requests.
7. Email production requests shall only be propounded for specific issues,
rather than general discovery of a product or business.
8. Email production requests shall be phased to occur after the parties
have exchanged initial disclosures, infringement contentions and accompanying
documents pursuant to the Local Patent Rules, and invalidity contentions and
accompanying documents pursuant to the Local Patent Rules.
9. Email production requests shall identify the custodian, search terms,
and time frame. The parties shall cooperate to identify the proper custodians, proper
search terms and proper timeframe.
10. Each requesting party shall limit its email production requests to a total
of five custodians per producing party for all such requests. The parties may jointly
agree to modify this limit without the Court’s leave. The Court shall consider
contested requests for up to five additional custodians per producing party, upon
showing a distinct need based on the size, complexity, and issues of this specific case.
Should a party serve email production requests for additional custodians beyond the
limits agreed to by the parties or granted by the Court pursuant to this paragraph, the
requesting party shall bear all reasonable costs caused by such additional discovery.
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11. Each requesting party shall limit its email production requests to a total
of five search terms per custodian per party. The parties may jointly agree to modify
this limit without the Court’s leave. The Court shall consider contested requests for
up to five additional search terms per custodian, upon showing a distinct need based
on the size, complexity, and issues of this specific case. The search terms shall be
narrowly tailored to particular issues. Indiscriminate terms, such as the producing
company’s name or its product name, are inappropriate unless combined with
narrowing search criteria that sufficiently reduce the risk of overproduction. A
conjunctive combination of multiple words or phrases (e.g., “computer” and “system”)
narrows the search and shall count as a single search term. A disjunctive combination
of multiple words or phrases (e.g., “computer” or “system”) broadens the search, and
thus each word or phrase shall count as a separate search term unless they are variants
of the same word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is
encouraged to limit the production and shall be considered when determining whether
to shift costs for disproportionate discovery. Should a party serve email production
requests with search terms beyond the limits agreed to by the parties or granted by the
Court pursuant to this paragraph, the requesting party shall bear all reasonable costs
caused by such additional discovery.
12. The receiving party shall not use ESI that the producing party asserts
is attorney-client privileged or work product protected to challenge the privilege or
protection.
13. Pursuant to Federal Rule of Evidence 502(d), the inadvertent
production of a privileged or work product protected ESI is not a waiver in the pending
case or in any other federal or state proceeding.
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14. The mere production of ESI in a litigation as part of a mass production
shall not itself constitute a waiver for any purpose.
15. Except as expressly stated herein, nothing is this Order affects the
parties’ discovery obligation under the Federal or Local Rules.
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APPENDIX C
CLAIM LIMITATION ACCUSED [STEP OR BASIS OF INFRINGEMENT
COMPONENT] CONTENTION
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APPENDIX D
CLAIM LIMITATION PRIOR ART OR BASIS OF INVALIDITY
OTHER EVIDENCE CONTENTION
CLAIM LIMITATION ACCUSED [STEP BASIS OF NON-
OR COMPONENT] INFRINGEMENT
CONTENTION
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