IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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v. : CIVIL ACTION NO.
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JOINT REPORT OF RULE 26(f) MEETING
In accordance with Federal Rule of Civil Procedure 26(f), counsel for the parties
conferred on _____________ and submit the following report of their meeting for the
Court’s consideration:
Date and time of Rule 16 Conference: _______________________________________
Plaintiff’s Counsel participating in the Rule 16 conference: _________________
Defendant’s Counsel participating in the Rule 16 conference: _______________
Jury trial _______ Non-Jury Trial _______ Arbitration _______
1. Discussion of Claims, Defenses, and Relevant Issues
You should assume that the Court has read the complaint and answer and is
familiar with the claims. However, the facts supporting those claims and defenses
are unknown. Therefore, counsel shall set forth concisely the controlling facts that
the parties contend support their claims and defenses. Each party shall provide a
brief factual summation of the case which should be provided as an attachment,
double spaced in 12-point font.
If counsel contends that one or more issues of fact or law will be dispositive,
they should specifically identify such issues.
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2. Informal Disclosures
Except in exceptional cases with a substantial quantity of documents, the
parties are expected to have identified and produced documents falling within the
definition of initial disclosures under Rule 26(a)(1) in advance of the Conference with
sufficient time for opposing counsel to review them and be prepared to address them.
When did the parties participate with Rule 26(a)’s duty of self-executing
disclosure? _______________________________
If the parties have not made initial disclosures within the time required by the
Court’s Order scheduling the pretrial conference, they should explain why not.
3. Formal Discovery
The discovery deadline should normally be no more than 90 - 120 days from
the date of that the Court provided notice of the Rule 16 conference, not from the date
of the conference itself. However, because of the nature of patent litigation, the Court
allows for discovery to extend beyond this typical range, within reason. The parties
will determine a joint schedule for discovery. This schedule should specifically
contemplate document production and discovery cut off date(s).
a. The parties should determine, with reason, the number of admissions
and interrogatories and hours of depositions each side 1 is permitted.
1 In the event that the Court consolidates related cases for pretrial purposes,
with regard to calculating limits imposed by this Order, a “side” shall be interpreted
as if the cases were proceeding individually. For example, in consolidated cases the
plaintiff may serve up to 30 interrogatories on each defendant, and each defendant
may serve up to 30 interrogatories on the plaintiff.
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i. Requests for Admission: Each side is permitted a maximum of
__________ requests for admission.
ii. Interrogatories: Each side is permitted a maximum of __________
interrogatories, including contention interrogatories.
iii. Depositions: Each side is limited a total of __________ hours of
taking testimony by deposition upon oral examination.
b. Discovery Disputes: A party may not file a Motion to Compel discovery
unless: (1) lead counsel have met and conferred in good faith to try to
resolve the dispute, and (2) the party has contacted the Court’s law clerk
(with opposing counsel) to arrange a conference with the Court to
summarize the dispute and the parties’ respective positions. After
hearing from the parties, the Court will determine if further briefing is
required.
c. Miscellaneous Discovery Matters:
i. The parties should set forth a statement identifying any pending
or completed litigation, including IPRs, involving one or more of
the asserted patents. Parties should advise whether they expect
to institute any further related litigation in this or other Districts
within the next year, as well as any IPRs and, if so, when.
ii. If one or more of the patents-in-suit have already been licensed or
the subject of a settlement agreement, either (1) Plaintiff shall
provide the licenses and/or settlement agreements to Defendant
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no later than the time of the initial Rule 16 Conference, or (2) if
Plaintiff requires a Court Order to make such disclosures,
Plaintiff shall file any necessary proposed orders no later than
twenty-four hours before the Rule 16 Conference.
iii. Please advise the Court if the parties agree to stay all fact
discovery until after the Claim Construction Hearing.
Is electronic discovery needed: ______ If so, have the parties reached an
agreement on how to conduct electronic discovery? ________. If the parties
cannot reach an agreement, in most cases, the Court will enter an order incorporating
default standards. The default order can be viewed at www.paed.uscourts.gov.
4. Protective Order
Pending entry of the final Protective Order, the Court issues the following
interim Protective Order to govern the disclosure of confidential information in this
matter:
If any document or information produced in this matter is deemed
confidential by the producing party and if the Court has not entered a
protective order, until a protective order is issued by the Court, the
document shall be marked “confidential” or with some other confidential
designation (such as “Confidential – Outside Attorneys Eyes Only”) by
the disclosing party and disclosure of the confidential document or
information shall be limited to each party’s outside attorney(s) of record
and the employees of such outside attorney(s).
If a party is not represented by an outside attorney, disclosure of the
confidential document or information shall be limited to one designated
“in house” attorney, whose identity and job functions shall be disclosed
to the producing party 5 days prior to any such disclosure, in order to
permit any motion for protective order or other relief regarding such
disclosure. The person(s) to whom disclosure of a confidential document
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or information is made under this local rule shall keep it confidential
and use it only for purposes of litigating the case.
5. Claim Construction Identification
If a party proposes a construction of a term to be its “plain and ordinary”
meaning, the party must explain what that meaning is. If a term is arguably a
means-plus-function term, and a party does not propose a function and a structure,
it is waiving any right to propose a function and a structure at a later time. The
parties shall exchange a list of those claim term(s)/phrase(s) that they believe need
construction and their proposed claim construction of those term(s)/phrase(s). 2 This
document will not be filed with the Court.
Subsequent to exchanging that list, the parties will meet and confer to prepare
a Joint Claim Construction Chart. The Joint Claim Construction Chart should
identify for the Court the term(s)/phrase(s) of the claim(s) in issue and should include
each party’s proposed construction of the disputed claim language with citation(s)
only to the intrinsic evidence in support of their respective proposed constructions.
The Joint Claim Construction Chart should include an explanation of why resolution
of the dispute makes a difference. A copy of the patent(s) in issue as well as those
portions of the intrinsic record relied upon shall be submitted with the Joint Claim
Construction Chart. In this joint submission, the parties shall not provide argument.
2 If a party proposes a construction of a term to be its “plain and ordinary”
meaning, the party must explain what that meaning is. If a term is arguably a
means-plus-function term, and a party does not propose a function and a structure,
it is waiving any right to propose a function and a structure at a later time
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6. Claim Construction Briefing
Parties shall serve, but not file, their opening and answering briefs. Each
party is permitted one reply brief. The parties shall copy and paste their unfiled
briefs into one brief, with their positions on each claim term in sequential order, in
substantially the form below. The parties will then file this brief with the Court.
Joint Claim Construction Brief
I. Representative Claims
II. Agreed-upon Constructions
III. Disputed Constructions
A. [TERM 1] 3
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s Reply Position
4. Defendant’s Sur-Reply Position
B. [TERM 2]
1. Plaintiff’s Opening Position
2. Defendant’s Answering Position
3. Plaintiff’s Reply Position
4. Defendant’s Sur-Reply Position
Etc. The parties need not include any general summaries of the law relating to claim
construction. If there are any materials that would be submitted in an appendix, the
parties shall submit them in a Joint Appendix.
3 For each term in dispute, there should be a table or the like setting forth the
term in dispute, the parties’ competing constructions, and why resolution of the
dispute matters. The table does not count against the word limits.
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7. Hearing on Claim Construction – Markman Hearing
The parties will propose a mutually agreed upon date where the Court will
hear argument on claim construction. When the Joint Claim Construction Brief is
filed, the parties shall simultaneously file a motion requesting the claim construction
hearing, state that the briefing is complete, and state how much total time the parties
are requesting that the Court should allow for the argument.
Absent prior approval of the Court, the parties shall not present testimony at
the argument. The Court is open to the presentation of live technology tutorials when
they may be of benefit. The parties may also submit tutorials in electronic form by
the deadline for submission of the Joint Claim Construction Brief. If a party intends
to present a live tutorial, it should be directed to the underlying technology (rather
than argument related to infringement or validity).
The Court will consider the parties suggestions on the order of argument at
the Markman hearing. However, if the parties do not suggest a different procedure,
the Court will allow the Plaintiff to pick the first term and then alternate by term.
As a general rule, if one side proposes “plain and ordinary meaning” as its
construction or asserts that a term is indefinite, the other party shall go first.
8. Expert Testimony
The parties will determine the schedule for disclosure of expert testimony.
This should contemplate the initial 26(a)(2) disclosure of expert testimony by the
party with the initial burden of proof, supplemental disclosure to contradict or rebut
evidence on the same matter identified by another party, and reply export reports
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from the party with the initial burden of proof. Along with the submissions of the
expert reports, the parties shall advise of the dates and times of their experts’
availability for deposition. This schedule is separate from any expert witnesses used
at the Markman Hearing.
a. No other expert reports will be permitted without either the consent of
all parties or leave of the Court. If any party believes that an expert
report does not comply with the rules relating to timely disclosure or
exceeds the scope of what is permitted in that expert report, the
complaining party must notify the offending party within one week of
the submission of the expert report. The parties are expected to
promptly try to resolve any such disputes, and, when they cannot
reasonably be resolved, use the Court’s Discovery Dispute Procedure or
the complaint will be waived.
b. To the extent any objection to expert testimony is made pursuant to the
principles announced in Daubert v. Merrell Dow Pharm., Inc., 509 U.S.
579 (1993), as incorporated in Federal Rule of Evidence 702, it shall be
made by motion no later than the deadline for dispositive motions set
forth herein, unless otherwise ordered by the Court.
9. Case Dispositive Motions
The parties will determine a date whereby all case dispositive motions shall be
served and filed. No case dispositive motion under Rule 56 may be filed more than
ten days before the above date without leave of the Court.
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10. Applications by Motion
Except as otherwise specified herein, any application to the Court shall be by
written motion.
11. Pretrial Conference
As needed, after ruling on dispositive motions, the Court will hold a final
pretrial conference in Court with counsel.
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12. Default Schedule 4
DEADLINE
ITEM
Plaintiff Defendant
Exchange Rule 26(a) disclosures 3 weeks before Rule 16
Parties to file Rule 26(f) report with 2 weeks before Rule 16
comprehensive proposed case schedule
Plaintiff’s identification of accused products and 2 weeks before
the asserted patent(s) they allegedly infringe Rule 16
Plaintiff serves initial infringement contentions 2 weeks before
chart 5 Rule 16
Defendant serves initial invalidity contentions 6 1 week before
Rule 16
RULE 16 CONFERENCE
Joinder of parties and amendment of pleadings
Submit proposed protective order
Defendant’s technical document production
Completion of document production by parties
Exchange term(s)/phrase(s) for claim construction
Exchange claim constructions of term(s)/phrase(s)
Parties disclose extrinsic evidence 7
Filing of joint claim construction chart
Opening claim construction brief
Responsive claim construction brief
Reply claim construction brief
Sur-reply claim construction brief
Joint claim construction brief
MARKMAN HEARING
Serve final infringement contentions
Serve final invalidity contentions
Close of fact discovery
Opening expert reports
Responsive expert reports
Reply expert reports
Close expert discovery
Dispositive motions deadline (with opening briefs)
Dispositive motions opposition briefs
Dispositive motions reply briefs
FINAL PRE-TRIAL CONFERENCE
TRIAL
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4 The parties are permitted to amend this template scheduling order within
reason (add and/or remove events as needed). The parties are expected add tentative
dates for deadlines for each event. If the parties cannot agree, the parties shall
submit a separate motion for their respective scheduling order, briefly setting forth
their positions on items where they cannot agreement. The Court will have
previously set the date for the Rule 16 Conference. Parties should propose dates for
the Markman Hearing, Final Pre-Trial Conference, and Trial. These dates will be
finalized by the Court at the Rule 16 Conference or a later date.
5 The chart should set forth where in the accused product(s) each of the asserted
claim(s) are found. Plaintiff should also produce a copy of the file history for each
patent in suit.
6 Defendant should serve invalidity contentions in the form of (1) a chart setting
forth where in the prior art references each element of the asserted claim(s) are found,
(2) an identification of any limitations the defendant contends are indefinite or lack
written description under section 112, and (3) an identification of any claims the
defendant contends are directed to ineligible subject matter under section 101.
Defendant should also supply documents in support of any invalidity contentions.
7 The parties shall disclose any extrinsic evidence, including the identity of any
expert witness they may rely upon with respect to claim construction/indefiniteness.
With respect to any expert identified, the parties shall also provide a summary of the
witness’s expected testimony including the opinions to be expressed and a general
description of the basis.
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