Attorneys who appear in civil and criminal cases in this court shall comply with the following
standards of practice in this district:
(a) In fulfilling his or her primary duty to the client, a lawyer must be ever conscious of the
broader duty to the judicial system that serves both attorney and client.
(b) A lawyer owes candor, diligence, and utmost respect to the judiciary.
(c) A lawyer owes, to opposing counsel, a duty of courtesy and cooperation, the observance
of which is necessary for the efficient administration of our system of justice and the
respect of the public it serves.
(d) A lawyer unquestionably owes, to the administration of justice, the fundamental duties of
personal dignity and professional integrity.
(e) Lawyers should treat each other, the opposing party, the court, and court staff with courtesy
and civility and conduct themselves in a professional manner at all times.
(f) A client has no right to demand that counsel abuse the opposite party or indulge in
offensive conduct. A lawyer shall always treat adverse witnesses and suitors with fairness
and due consideration.
(g) In adversary proceedings, clients are litigants and though ill feeling may exist between
clients, such ill feeling should not influence a lawyer’s conduct, attitude, or demeanor
toward opposing lawyers.
(h) A lawyer should not use any form of discovery or the scheduling of discovery as a means
of harassing opposing counsel or counsel’s client.
(i) Lawyers will be punctual in communications with others and in honoring scheduled
appearances and will recognize that neglect and tardiness are demeaning to the lawyer and
to the judicial system.
(j) If a fellow member of the bar makes a just request for cooperation or seeks scheduling
accommodation, a lawyer will not arbitrarily or unreasonably withhold consent. The court
is not bound to accept agreements of counsel to extend deadlines imposed by rule or court
order.
(k) Effective advocacy does not require antagonistic or obnoxious behavior, and members of
the bar will adhere to the higher standard of conduct which judges, lawyers, clients, and
the public may rightfully expect.
(l) The court also encourages attorneys to be familiar with the Codes of Pretrial and Trial
Conduct promulgated by the American College of Trial Lawyers, which can be found on
the court’s website, located at txed.uscourts.gov, and to conduct themselves accordingly.
(m) If the lawyer, in the exercise of his or her professional legal judgment, believes that the
client is best served by the use of generative artificial intelligence technology, then the
lawyer is cautioned that certain technologies may produce factually or legally inaccurate
content and should never replace the lawyer’s most important asset – the exercise of
independent legal judgment. If a lawyer chooses to employ generative artificial
intelligence technology in representing a client, the lawyer continues to be bound by the
requirements of Federal Rule of Civil Procedure 11, Local Rule AT-3, and all other
applicable standards of practice and must review and verify all content to ensure that it
complies with all such standards.
SECTION IV: ADMIRALTY RULES
LOCAL ADMIRALTY RULE (a) Authority and Scope
(a)(1) Authority. The local admiralty rules of the United States District Court for the Eastern
District of Texas are promulgated by a majority of the judges as authorized by and subject to
the limitation of Federal Rule of Civil Procedure 83 (Federal Rule or Rules).
(a)(2) Scope. The local admiralty rules apply only to civil actions that are governed by
Supplemental Rule A of the Supplemental Rules for Certain Admiralty and Maritime Claims
(Supplemental Rule or Rules). All other local rules are applicable in these cases, but to the extent
that another local rule is inconsistent with the applicable local admiralty rules, the local admiralty
rules shall govern.
(a)(3) Citation. The local admiralty rules may be cited by the letters “LAR” and the lower case
letters and numbers in parentheses that appear at the beginning of each section. The lower case
letter is intended to associate the local admiralty rule with the Supplemental Rule that bears the
same capital letter.
(a)(4) Definitions. As used in the Local Admiralty Rules, the word “Rule” followed by a
numeral (e.g., Rule 12) means a Federal Rule of Civil Procedure; the word “Rule” followed
by a capital letter (e.g., Rule C) means a Supplemental Rule for Certain Admiralty and
Maritime Claims; the word “court” means the district court issuing these LARs; the term
“judicial officer” means the United States district judge or a United States magistrate judge;
the word “clerk” means the clerk of the district court and includes deputy clerks of court; the
word “Marshal” means the United States Marshal and includes deputy Marshals; the word
“keeper” means any person or entity appointed by the Marshal to take physical custody of and
maintain the vessel or other property under arrest or attachment; and the term “substitute
custodian” means the individual or entity who, upon motion and order of the court, assumes
the duties of the Marshal or keeper with respect to the vessel or other property arrested or
attached.
(a)(5) Bonds. When a bond is posted under the Local Admiralty Rules for any reason, it should
be electronically filed in the case by the posting party. The paper original of the bond shall be
retained by the posting party unless otherwise directed by the court.
LOCAL ADMIRALTY RULE (b) Maritime Attachment and Garnishment
(b)(1) Use of State Procedures. When the plaintiff invokes a state procedure in order to attach
or garnish as permitted by the Rules or the Supplemental Rules, the process of attachment or
garnishment shall identify the state law upon which the attachment or garnishment is based.
LOCAL ADMIRALTY RULE (c) Actions in Rem: Special Provisions
(c)(1) Intangible Property. The summons to show cause why property should not be deposited in
court issued pursuant to Supplemental Rule C(3)(c) shall direct the person having control of
intangible property to show cause no later than seven days after service why the intangible
property should not be delivered to the court to abide the judgment. A judicial officer for good
cause shown may lengthen or shorten the time. Service of the warrant has the effect of arresting
the intangible property and bringing it within the control of the court. Service of the summons
to show cause requires a garnishee wishing to retain possession of the property to establish
grounds for doing so, including specification of the measures taken to segregate and safeguard
the intangible property arrested. The person who is served may, upon order of the court, deliver
or pay over to the person on whose behalf the warrant was served or to the clerk of the court the
intangible property proceeded against to the extent sufficient to satisfy the plaintiff’s claim. If
such delivery or payment is made, the person served is excused from the duty to show cause.
The person asserting any ownership interest in the property or a right of possession may show
cause as provided in Supplemental Rule C(6)(a) why the property should not be delivered to the
court.
(c)(2) Publication of Notice of Action and Arrest. The notice required by Rule C(4) shall be
published at least once in a newspaper named in LAR (g)(2), and plaintiff’s attorney shall file
with the clerk a copy of the notice as it was published. The notice shall contain:
(A) The court, title, and number of the action;
(B) The date of the arrest;
(C) The identity of the property arrested;
(D) The name, address, and telephone number of the attorney for Plaintiff;
(E) A statement that a person asserting any ownership interest in the property or a
right of possession pursuant to Supplemental Rule C(6) must file a statement of
such interest with the clerk and serve it on the attorney for plaintiff within
fourteen days after publication;
(F) A statement that an answer to the complaint must be filed and served within
twenty-one days after filing the statement of ownership interest in the property or
right of possession, and that otherwise, default may be entered and condemnation
ordered;
(G) A statement that applications for intervention under Federal Rule 24 by persons
asserting maritime liens or other interests shall be filed within thirty days after
publication; and
(H) The name, address, and telephone number of the Marshal, keeper, or substitute
custodian.
(c)(3) Default In Action In Rem.
(A) Notice Required. A party seeking a default judgment in an action in rem must
satisfy the judge that due notice of the action and arrest of the property has been
given:
(1) By publication as required in LAR (c)(2), and
(2) By service upon the Marshal and keeper, substitute custodian, master, or
other person having custody of the property, and
(3) By mailing such notice to every other person who has not appeared in the
action and is known to have an interest in the property.
(B) Persons with Recorded Interests.
(1) If the defendant property is a vessel documented under the laws of the
United States, plaintiff must attempt to notify all persons named in the
United States Coast Guard certificate of ownership.
(2) If the defendant property is a vessel numbered as provided in the Federal
Boat Safety Act, plaintiff must attempt to notify the persons named in the
records of the issuing authority.
(3) If the defendant property is of such character that there exists a
governmental registry of recorded property interests and/or security
interests in the property, the plaintiff must attempt to notify all persons
named in the records of each such registry.
(c)(4) Entry of Default and Default Judgment. After the time for filing an answer has expired,
the plaintiff may move for entry of default under Federal Rule 55(a). Default will be entered
upon showing that:
(A) Notice has been given as required by LAR (c)(3)(A); and
(B) Notice has been attempted as required by LAR (c)(3)(B), where appropriate; and
(C) The time to answer by claimants of ownership to or possession of the property
has expired; and
(D) No answer has been filed or no one has appeared to defend on behalf of the
property.
The plaintiff may move for judgment under Rule 55(b) at any time after default has been entered.
LOCAL ADMIRALTY RULE (d) Possessory, Petitory, and Partition Actions
(d)(1) Return Date. In a possessory action under Rule D, a judicial officer may order that the
statement of interest and answer be filed on a date earlier than twenty-one days after arrest.
The order may also set a date for expedited hearing of the action.
LOCAL ADMIRALTY RULE (e) Actions In Rem and Quasi In Rem: General Provisions
(e)(1) Itemized Demand for Judgment. The demand for judgment in every complaint filed
under Rule B or C shall allege the dollar amount of the debt or damages for which the action
was commenced. The demand for judgment shall also allege the nature of other items of
damage. The amount of the special bond posted under Rule E(5)(a) may be based upon these
allegations.
(e)(2) Salvage Action Complaints. In an action for salvage award, the complaint shall allege
the dollar value of the vessel, cargo freight, and other property salved or other basis for an
award, and the dollar amount of the award sought.
(e)(3) Verification of Pleadings. Every complaint in Rule B, C, and D actions shall be verified
upon oath or solemn affirmation or in the form provided by 28 U.S.C. § 1746 by a party or by
an authorized officer of a corporate party. If no party or authorized corporate officer is present
within the district, verification of a complaint may be made by an agent, attorney in fact, or
attorney of record, who shall state the sources of the knowledge, information, and belief
contained in the complaint; declare that the document verified is true to the best of that
knowledge, information, and belief; state why verification is not made by the party or an
authorized representative thereof; and state that the affiant or declarant is authorized so to
verify. A verification not made by a party or authorized corporate officer will be deemed to
have been made by the party as if verified personally. If the verification was not made by a
party or authorized representative, any interested party may move, with or without requesting
a stay, for the personal oath of a party or an authorized representative, which shall be procured
by commission or as otherwise ordered.
(e)(4) Review by Judicial Officer. Unless otherwise required by the judicial officer, the review
of complaints and papers called for by Rules B(1) and C(3) does not require the affiant party
or attorney to be present. The applicant for review shall include a form of order to the clerk
which, upon signature by the judicial officer, will direct the arrest, attachment, or garnishment
sought by the applicant. In exigent circumstances, the certification of the plaintiff or his
attorney under Rules B and C shall consist of an affidavit or a declaration pursuant to 28 § 1746
describing in detail the facts establishing the exigent circumstances.
(e)(5) Return of Service. The party who requests a warrant of arrest or process of attachment or
garnishment shall provide instructions to the Marshal. A person specially appointed by the
court under Rules B or C who has served process of maritime attachment and garnishment or
a warrant of arrest that seized property shall promptly file a verified return showing the name
of the individual on whom the process or warrant was served, the identity of the person or
entity on whom service was made, the documents served, the manner in which service was
completed (e.g., personal delivery), and the address, date, and time of service.
(e)(6) Property in Possession of United States Officer. When the property to be attached or
arrested is in the custody of an employee or officer of the United States, the Marshal will deliver
a copy of the complaint and warrant of arrest or summons and process of attachment or
garnishment to that officer or employee if present, and otherwise to the custodian of the property.
The Marshal will instruct the officer or employee or custodian to retain custody of the property
until ordered to do otherwise by a judicial officer.
(e)(7) Security for Costs. In an action under the Rules, a party may move upon notice to all
parties for an order to compel an adverse party to post security for costs with the clerk pursuant
to Rule E(2)(b). Unless otherwise ordered, the amount of security shall be $500. The party so
ordered shall post the security within seven days after the order is entered. A party who fails to
post security when due may not participate further in the proceedings, except by order of the
court. A party may move for an order increasing the amount of security for costs.
(e)(8) Adversary Hearing. The adversary hearing following arrest or attachment or garnishment
provided for in Supplemental Rule E(4)(f) shall be conducted by a judicial officer within three
days, unless otherwise ordered. The person(s) requesting the hearing shall notify all persons
known to have an interest in the property of the time and place of the hearing.
(e)(9) Appraisal. An order for appraisal of property so that security may be given or altered will
be entered upon motion. If the parties do not agree in writing upon an appraiser, a judicial
officer will appoint the appraiser. The appraiser shall be sworn to the faithful and impartial
discharge of the appraiser’s duties before any federal or state officer authorized by law to
administer oaths. The appraiser shall give one day’s notice of the time and place of making the
appraisal to counsel of record. The appraiser shall promptly file the appraisal with the clerk and
serve it upon counsel of record. The appraiser’s fee shall be paid in the first instance by the
moving party, but it is taxable as an administrative cost of the action.
(e)(10) Security Deposit for Seizure of Vessels. The first party who seeks arrest or attachment
of a vessel or property aboard a vessel shall deposit a sum deemed sufficient by the Marshal to
cover the expenses of the Marshal including, but not limited to, dockage, keepers, maintenance,
and insurance. The security deposit for seizure of a vessel or property aboard a vessel is $5,000
if there is a substitute custodian, and $10,000 if the vessel or property is to remain in the custody
of the Marshal. The Marshal is not required to execute process until the deposit is made. The
party shall advance additional sums from time to time at the Marshal’s request to cover
estimated expenses. A party who fails to advance such additional costs as required by the
Marshal may not participate further in the proceedings except by order of the court. The
Marshal may, upon notice to all parties, petition the court for an order to be issued forthwith
releasing the vessel if additional sums are not advanced within three days after the initial
request.
(e)(11) Intervenor’s Claims.
(A) Presentation of Claim. When a vessel or other property has been arrested,
attached, or garnished, and is in the hands of the Marshal or custodian substituted
therefor, anyone having a claim against the vessel or property is required to
present it by filing an intervening complaint and obtain a warrant of arrest, and
not by filing an original complaint, unless otherwise ordered by a judicial officer.
No formal motion is required. The intervening party shall serve a copy of the
intervening complaint and warrant of arrest upon all parties to the action and
shall forthwith deliver a conformed copy of the complaint and warrant of arrest
to the Marshal, who shall deliver the copies to the vessel or custodian of the
property. Intervenors shall thereafter be subject to the rights and obligations of
parties, and the vessel or property shall stand arrested, attached, or garnished by
the intervenor. An intervenor shall not be required to advance a security deposit
to the Marshal for the intervenor’s seizure of a vessel as required by LAR (e)(10),
but will receive the funds back, less the intervenor’s share of the Marshal’s fees
and expenses as stated in LAR (e)(11)(B).
(B) Sharing Marshal’s Fees and Expenses. An intervenor shall owe a debt to the
preceding plaintiffs and intervenors, enforceable on motion, consisting of the
intervenor’s share of the Marshal’s fees and expenses in the proportion that the
intervenor’s claim bears to the sum of all the claims asserted against the property.
If any party plaintiff permits vacation of an arrest, attachment, or garnishment,
the remaining plaintiffs shall share the responsibility to the Marshal for fees and
expenses in proportion to the remaining claims asserted against the property and
for the duration of the Marshal’s custody because of each such claim.
(e)(12) Custody of Property.
(A) Safekeeping of Property. When a vessel or other property is brought to
the Marshal’s custody by arrest or attachment, the Marshal shall arrange
for adequate safekeeping, which may include the placing of keepers on
or near the vessel. A substitute custodian in place of the Marshal may be
appointed by order of the court. Notice of the application to appoint a
substitute custodian must be given to all parties and the Marshal. The
application must show the name of the proposed substitute custodian,
the fee, if any, to be charged by the proposed substitute custodian, the
location of the vessel during the period of custody, and the proposed
insurance coverage.
(B) Insurance. The Marshal may order insurance to protect the Marshal, his
deputies, keepers, and substitute custodians, from liabilities assumed in
arresting and holding the vessel, cargo, or other property, and in
performing whatever services may be undertaken to protect the vessel,
cargo, or other property, and in maintaining the court’s custody. The
arresting or attaching party shall reimburse the Marshal for premiums
paid for the insurance and where possible shall be named as an additional
insured on the policy. The party who applies for removal of the vessel,
cargo, or other property to another location, for designation of a
substitute custodian, or for other relief that will require an additional
premium, shall reimburse the Marshal therefor. The premiums charged
for the liability insurance shall be paid in the first instance by the initial
party obtaining the arrest and holding of the property but are taxable as
administrative costs of the action while the vessel, cargo, or other
property is in custody of the court.
(C) (i) Cargo Handling, Repairs, and Movement of the Vessel. Following
arrest or attachment of a vessel, cargo handling will cease unless an order
of the court is received by the Marshal. No movement of or repairs to
the vessel shall take place without order of the court. The applicant for
an order under this rule shall give notice to the Marshal and to all parties
of record.
(ii) Insurance. If an applicant shows adequate insurance to indemnify
the Marshal for liability, the court may order the Marshal to permit cargo
handling, repairs, or movement of the vessel, cargo, or other property.
The costs and expenses of such activities shall be borne as ordered by
the court. Any party of record may move for an order to dispense with
keepers or to remove or place the vessel, cargo, or other property at a
specified facility, to designate a substitute custodian, or for similar relief.
Notice of the motion shall be given to the Marshal and to all parties of
record. The judicial officer will require that adequate insurances on the
property will be maintained by the successor to the Marshal, before
issuing the order to change arrangements.
(D) Claims by Suppliers for Payment of Charges. A person who furnishes
supplies or services to a vessel, cargo, or other property in custody of the
court who has not been paid and claims the right to payment as an
expense of administration shall submit an invoice to the clerk in the form
of a verified claim at any time before the vessel, cargo, or other property
is released or sold. The supplier must serve copies of the claim on the
Marshal, substitute custodian if one has been appointed, and all parties
of record. The court may consider the claims individually or schedule a
single hearing for all claims.
(e)(13) Sale of Property.
(A) Notice. Unless otherwise ordered upon good cause shown or as provided by law,
notice of sale of property in an action in rem shall be published on at least four
days, between three and thirty-one days prior to the day of the sale.
(B) Payment of Bid. These provisions apply unless otherwise ordered in the order
of sale:
(i) The person whose bid is accepted shall immediately pay the Marshal the
full purchase price if the bid is $1,000, or less.
(ii) If the bid exceeds $1,000, the bidder shall immediately pay a deposit of
at least $1,000 or 10% of the bid, whichever is greater, and shall pay the
balance within three days.
(iii) If an objection to the sale is filed within the period in LAR (e)(13)(F),
the bidder is excused from paying the balance of the purchase price until
three days after the sale is confirmed.
(iv) Payment shall be made by certified check or by cashier’s check.
(C) Late Payment. If the successful bidder does not pay the balance of the purchase
price within the time allowed, the bidder shall pay the Marshal the cost of
keeping the property from the due date until the balance is paid, and the Marshal
may refuse to release the property until this charge is paid.
(D) Default. If the successful bidder does not pay the balance of the purchase price
within the time allowed, the bidder shall be in default, and the judicial officer
may accept the second highest bid or arrange a new sale. The defaulting bidder’s
deposit shall be forfeited and applied to any additional costs incurred by the
Marshal because of the default, the balance being retained in the registry of the
court awaiting its order.
(E) Report of the Sale by Marshal. At the conclusion of the sale, the Marshal shall
forthwith file a written report with the court setting forth the notice given of: the
fact of sale; the date of the sale; the names, addresses, and bid amounts of the
bidders; the price obtained; and any other pertinent information.
(F) Time and Procedure for Objection to Sale. An interested person may object to
the sale by filing a written objection with the clerk within three days following
the sale, serving the objection on all parties of record, the successful bidder, and
the Marshal, and depositing a sum with the Marshal that is sufficient to pay the
expense of keeping the property for at least seven days. Payment to the Marshal
shall be by certified check or cashier’s check. The court shall hold a hearing on
the confirmation of the sale.
(G) Confirmation of Sale. If no objection to the sale has been filed, the sale shall be
confirmed by order of the court no sooner than three days nor later than five
days from the court’s receipt of the Marshal’s written report. The Marshal shall
transfer title to the purchaser upon the order of the court.
(H) Disposition of Deposits.
(i) If the objection is sustained, sums deposited by the successful bidder will
be returned to the bidder forthwith. The sum deposited by the objector
will be applied to pay the fees and expenses incurred by the Marshal in
keeping the property until it is resold, and any balance remaining shall
be returned to the objector. The objector will be reimbursed for the
expense of keeping the property from the proceeds of a subsequent sale.
(ii) If the objection is overruled, the sum deposited by the objector will be
applied to pay the expense of keeping the property from the day the
objection was filed until the day the sale is confirmed, and any balance
remaining will be returned to the objector forthwith.
(e)(14) Presentation of Matters. If the judge to whom a case has been assigned is not readily
available, any matter under the Local Admiralty Rules may be presented to any other judge
in the district without reassigning the case.
LOCAL ADMIRALTY RULE (f) Limitation of Liability
(f)(1) Security for Costs. The amount of security for costs under Rule F(1) shall be $1,000,
and security for costs may be combined with the security for value and interest unless
otherwise ordered.
(f)(2) Order of Proof at Trial. In an action where vessel interests seek to limit their liability,
the damage claimants shall offer their proof first, whether the right to limit arises as a claim
or as a defense.
LOCAL ADMIRALTY RULE (g) Special Rules
(g)(1) Newspapers for Publishing Notices. Unless otherwise ordered by the court, every
notice required to be published under the Local Admiralty Rules or any rules or statutes
applying to admiralty and maritime proceedings shall be published in the following
newspaper[s] of general circulation in the District:
Beaumont Enterprise
(g)(2) Use of State Procedures. When the plaintiff invokes a state procedure in order to attach
or garnish as permitted by the Federal Rules of Civil Procedure or the Supplemental Rules
for Certain Admiralty and Maritime Claims, the process of attachment or garnishment shall
identify the state law upon which the attachment or garnishment is based.
SECTION V: PATENT RULES
1. SCOPE OF RULES
LOCAL PATENT RULE 1-1 Title
These are the Rules of Practice for Patent Cases before the Eastern District of Texas. They should
be cited as “P. R. __.”
LOCAL PATENT RULE 1-2 Scope and Construction
These rules apply to all civil actions filed in or transferred to this Court which allege
infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim,
or which seek a declaratory judgment that a utility patent is not infringed, is invalid or is
unenforceable. The Court may accelerate, extend, eliminate, or modify the obligations or
deadlines set forth in these Patent Rules based on the circumstances of any particular case,
including, without limitation, the complexity of the case or the number of patents, claims,
products, or parties involved. If any motion filed prior to the Claim Construction Hearing
provided for in P. R. 4-6 raises claim construction issues, the Court may, for good cause shown,
defer the motion until after completion of the disclosures, filings, or ruling following the Claim
Construction Hearing. The Civil Local Rules of this Court shall also apply to these actions,
except to the extent that they are inconsistent with these Patent Rules. The deadlines set forth
in these rules may be modified by Docket Control Order issued in specific cases.
LOCAL PATENT RULE 1-3 Effective Date
These Patent Rules shall take effect on February 22, 2005, and shall apply to any case filed
thereafter and to any pending case in which more than 9 days remain before the Initial
Disclosure of Asserted Claims is made. The parties to any other pending civil action shall meet
and confer promptly after February 22, 2005, for the purpose of determining whether any
provision in these Patent Rules should be made applicable to that case. No later than 7 days
after the parties meet and confer, the parties shall file a stipulation setting forth a proposed
order that relates to the application of these Patent Rules. Unless and until an order is entered
applying these Patent Local Rules to any pending case, the Rules previously applicable to
pending patent cases shall govern.
2. GENERAL PROVISIONS
LOCAL PATENT RULE 2-1 Governing Procedure
(a) Initial Case Management Conference. Prior to the Initial Case Management
Conference with the Court, when the parties confer with each other 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 Case Management Statement filed pursuant to Fed. R. Civ. P. 26(f), the following
topics:
(1) Proposed modification of the deadlines provided for in the Patent Rules, and the effect
of any such modification on the date and time of the Claim Construction Hearing, if
any;
(2) Whether the Court will hear live testimony at the Claim Construction Hearing;
(3) The need for and any specific limits on discovery relating to claim construction,
including depositions of witnesses, including expert witnesses;
(4) The order of presentation at the Claim Construction Hearing; and
(5) The scheduling of a Claim Construction Prehearing Conference to be held after the
Joint Claim Construction and Prehearing Statement provided for in P. R. 4-3 has been
filed.
(6) Whether the court should authorize the filing under seal of any documents containing
confidential information.
(b) Further Case Management Conferences. To the extent that some or all of the matters
provided for in P. R. 2-1 (a)(1) - (5) are not resolved or decided at the Initial Case Management
Conference, the parties shall propose dates for further Case Management Conferences at which
such matters shall be decided.
(c) Electronic Filings. All patents attached as exhibits to any filing submitted electronically
shall be in searchable PDF format. Any other documents attached as exhibits to any filing
submitted electronically should be in searchable PDF format whenever possible.
LOCAL PATENT RULE 2-2 Confidentiality
If any document or information produced under these Patent Local Rules 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 or information is made under this
local rule shall keep it confidential and use it only for purposes of litigating the case.
LOCAL PATENT RULE 2-3 Certification of Initial Disclosures
All statements, disclosures, or charts filed or served in accordance with these Patent Rules must
be dated and signed by counsel of record. Counsel’s signature shall constitute a certification
that to the best of his or her knowledge, information, and belief, formed after an inquiry that is
reasonable under the circumstances, the information contained in the statement, disclosure, or
chart is complete and correct at the time it is made.
LOCAL PATENT RULE 2-4 Admissibility of Disclosures
Statements, disclosures, or charts governed by these Patent Rules are admissible to the extent
permitted by the Federal Rules of Evidence or Procedure. However, the statements or disclosures
provided for in P. R. 4-1 and 4-2 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 these Patent Rules must be taken.
LOCAL PATENT RULE 2-5 Relationship to Federal Rules of Civil Procedure
Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate ground
for objecting to an opposing party’s discovery request (e.g., interrogatory, document request,
request for admission, deposition question) or declining to provide information otherwise
required to be disclosed pursuant to Fed. R. Civ. P. 26(a)(1) that the discovery request or
disclosure requirement is premature in light of, or otherwise conflicts with, these Patent Rules.
A party may object, however, to responding to the following categories of discovery requests
(or decline to provide information in its initial disclosures under Fed. R. Civ. P. 26(a)(1)) on
the ground that they are premature in light of the timetable provided in the Patent Rules:
(a) Requests seeking to elicit a party’s claim construction position;
(b) Requests seeking to elicit from the patent claimant a comparison of the asserted claims and
the accused apparatus, product, device, process, method, act, or other instrumentality;
(c) Requests seeking to elicit from an accused infringer a comparison of the asserted claims and
the prior art; and
(d) Requests seeking to elicit from an accused infringer the identification of any opinions of
counsel, and related documents, that it intends to rely upon as a defense to an allegation of
willful infringement.
Where a party properly objects to a discovery request (or declines to provide information in its
initial disclosures under Fed.R.Civ.P. 26(a)(1)) as set forth above, that party shall provide the
requested information on the date on which it is required to provide the requested information
to an opposing party under these Patent Rules, unless there exists another legitimate ground for
objection.
LOCAL PATENT RULE 2-6 Assignment of Related Cases
Separately filed cases related to the same patent shall be assigned to the same judge, i.e., the
judge assigned to the first related case.
3. PATENT INITIAL DISCLOSURES
LOCAL PATENT RULE 3-1 Disclosure of Asserted Claims and Infringement Contentions
Not later than 10 days before the Initial Case Management Conference with the Court, a party
claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and
Infringement Contentions.” Separately for each opposing party, the “Disclosure of Asserted
Claims and Infringement Contentions” shall contain the following information:
(a) Each claim of each patent in suit that is allegedly infringed by each opposing party;
(b) Separately for each asserted claim, each accused apparatus, product, device, process, method,
act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the
party is aware. This identification shall be as specific as possible. Each product, device, and
apparatus must be identified by name or model number, if known. Each method or process
must be identified by name, if known, or by any product, device, or apparatus which, when
used, allegedly results in the practice of the claimed method or process;
(c) A chart identifying specifically where each element of each asserted claim is found within
each Accused Instrumentality, including for each element that such party contends is
governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or material(s) in the
Accused Instrumentality that performs the claimed function;
(d) Whether each element of each asserted claim is claimed to be literally present or present
under the doctrine of equivalents in the Accused Instrumentality;
(e) For any patent that claims priority to an earlier application, the priority date to which each
asserted claim allegedly is entitled; and
(f) If a party claiming patent infringement wishes to preserve the right to rely, for any purpose,
on the assertion that its own apparatus, product, device, process, method, act, or other
instrumentality practices the claimed invention, the party must identify, separately for each
asserted claim, each such apparatus, product, device, process, method, act, or other
instrumentality that incorporates or reflects that particular claim.
LOCAL PATENT RULE 3-2 Document Production Accompanying Disclosure
With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming
patent infringement must produce to each opposing party or make available for inspection and
copying:
(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials,
offer letters, beta site testing agreements, and third party or joint development agreements)
sufficient to evidence each discussion with, disclosure to, or other manner of providing to a
third party, or sale of or offer to sell, the claimed invention prior to the date of application for
the patent in suit. A party’s production of a document as required herein shall not constitute
an admission that such document evidences or is prior art under 35 U.S.C. § 102;
(b) All documents evidencing the conception, reduction to practice, design, and development of
each claimed invention, which were created on or before the date of application for the patent
in suit or the priority date identified pursuant to P. R. 3-1(e), whichever is earlier; and
(c) A copy of the file history for each patent in suit.
The producing party shall separately identify by production number which documents
correspond to each category.
LOCAL PATENT RULE 3-3 Invalidity Contentions
Not later than 35 days after the Initial Case Management Conference with the Court, each party
opposing a claim of patent infringement, shall serve on all parties its “Invalidity Contentions”
which must contain the following information:
(a) The identity of each item of prior art that allegedly anticipates each asserted claim or
renders it obvious. Each prior art patent shall be identified by its number, country of origin, and
date of issue. Each prior art publication must be identified by its title, date of publication, and
where feasible, author and publisher. Prior art sales or public disclosures under pre-AIA 35
U.S.C. § 102(b) / post-AIA 35 U.S.C. § 102(a)(1) shall be identified by specifying the item
offered for sale or publicly used or the information known, the date the offer or use took place
or the information became known, and the identity of the person or entity which made the use
or which made and received the offer, or the person or entity which made the information known
or to whom it was made known. Prior art under pre-AIA 35 U.S.C. § 102(f) shall be identified
by providing the name of the person(s) from whom and the circumstances under which the
invention or any part of it was derived. Prior art under pre-AIA 35 U.S.C. § 102(g) shall be
identified by providing the identities of the person(s) or entities involved in and the
circumstances surrounding the making of the invention before the patent applicant(s). Prior art
references under post-AIA 35 U.S.C. § 102(a)(1) showing that the claimed invention was
otherwise available to the public shall be identified by specifying the form and nature of the
reference, the manner in which the reference was made public, and the date on which the
reference was made public;
(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a
combination of items of prior art makes a claim obvious, each such combination, and the
motivation to combine such items, must be identified;
(c) A chart identifying where specifically in each alleged item of prior art each element of
each asserted claim is found, including for each element that such party contends is governed
by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or material(s) in each item of
prior art that performs the claimed function; and
(d) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112 ¶ 2 or
enablement or written description under 35 U.S.C. § 112 ¶ 1 of any of the asserted claims.
LOCAL PATENT RULE 3-4 Document Production Accompanying Invalidity Contentions
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must
produce or make available for inspection and copying:
(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other
documentation sufficient to show the operation of any aspects or elements of an Accused
Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart; and
(b) A copy of each item of prior art identified pursuant to P. R. 3-3(a) which does not appear
in the file history of the patent(s) at issue. To the extent any such item is not in English, an
English translation of the portion(s) relied upon must be produced.
LOCAL PATENT RULE 3-5 Disclosure Requirement in Patent Cases for Declaratory
Judgment
(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files
a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is
invalid, or is unenforceable, P. R. 3-1 and 3-2 shall not apply unless and until a claim for patent
infringement is made by a party. If the defendant does not assert a claim for patent infringement
in its answer to the complaint, no later than 10 days after the defendant serves its answer, or 10
days after the Initial Case Management Conference, whichever is later, the party seeking a
declaratory judgment must serve upon each opposing party its Invalidity Contentions that
conform to P. R. 3-3 and produce or make available for inspection and copying the documents
described in P. R. 3-4. The parties shall meet and confer within 10 days of the service of the
Invalidity Contentions for the purpose of determining the date on which the plaintiff will file its
Final Invalidity Contentions which shall be no later than 50 days after service by the Court of its
Claim Construction Ruling.
(b) Applications of Rules When No Specified Triggering Event. If the filings or actions
in a case do not trigger the application of these Patent Rules under the terms set forth herein,
the parties shall, as soon as such circumstances become known, meet and confer for the purpose
of agreeing on the application of these Patent Rules to the case.
(c) Inapplicability of Rule. This P. R. 3-5 shall not apply to cases in which a request for a
declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in
response to a complaint for infringement of the same patent.
LOCAL PATENT RULE 3-6 Amending Contentions
(a) Leave not required. Each party’s “Infringement Contentions” and “Invalidity
Contentions” shall be deemed to be that party’s final contentions, except as set forth below.
(1) If a party claiming patent infringement believes in good faith that the Court’s Claim
Construction Ruling so requires, not later than 30 days after service by the Court of its
Claim Construction Ruling, that party may serve “Amended Infringement Contentions”
without leave of court that amend its “Infringement Contentions” with respect to the
information required by P. R. 3-1(c) and (d).
(2) Not later than 50 days after service by the Court of its Claim Construction Ruling, each
party opposing a claim of patent infringement may serve “Amended Invalidity
Contentions” without leave of court that amend its “Invalidity Contentions” with respect
to the information required by P. R. 3-3 if:
(A) a party claiming patent infringement has served “Amended Infringement
Contentions” pursuant to P. R. 3-6(a)(1), or
(B) the party opposing a claim of patent infringement believes in good faith
that the Court’s Claim Construction Ruling so requires.
(b) Leave required. Amendment or supplementation of any Infringement Contentions or
Invalidity Contentions, other than as expressly permitted in P. R. 3-6(a), may be made only by
order of the Court, which shall be entered only upon a showing of good cause.
LOCAL PATENT RULE 3-7 Opinion of Counsel Defenses
By the date set forth in the Docket Control Order, each party opposing a claim of patent
infringement that will rely on an opinion of counsel as part of a defense shall:
(a) Produce or make available for inspection and copying the opinion(s) and any other
documents relating to the opinion(s) as to which that party agrees the attorney-client or work
product protection has been waived; and
(b) Serve a privilege log identifying any other documents, except those authored by counsel
acting solely as trial counsel, relating to the subject matter of the opinion(s) which the party is
withholding on the grounds of attorney-client privilege or work product protection.
A party opposing a claim of patent infringement who does not comply with the requirements
of this P. R. 3-7 shall not be permitted to rely on an opinion of counsel as part of a defense
absent a stipulation of all parties or by order of the Court, which shall be entered only upon a
showing of good cause.
LOCAL PATENT RULE 3-8 Disclosure Requirements for Patent Cases Arising Under 21
U.S.C. § 355 (Hatch-Waxman Act)
The following provision applies to all patents subject to a Paragraph IV certification in cases
arising under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). This
provision takes precedence over any conflicting provisions in P.R. 3-1 to 3-5 for all cases
arising under 21 U.S.C. § 355.
(a) Upon the filing of a responsive pleading to the complaint, the Defendant(s) shall produce
to Plaintiff(s) the entire Abbreviated New Drug Application or New Drug Application that is
the basis of the case in question.
(b) Not more than 7 days after the Initial Case Management Conference, Plaintiff(s) must
identify the asserted claims.
(c) Not more than 14 days after the Initial Case Management Conference, the Defendant(s)
shall provide to Plaintiff(s) the written basis for their “Invalidity Contentions” for any patents
referred to in Defendant(s) Paragraph IV Certification. This written basis shall contain all
disclosures required by P.R. 3-3 and shall be accompanied by the production of documents
required by P.R. 3-4.
(d) Not more than 14 days after the Initial Case Management Conference, the Defendant(s)
shall provide to Plaintiff(s) the written basis for any defense of non-infringement for any patent
referred to in Defendant(s) Paragraph IV Certification. This written basis shall include a claim
chart identifying each claim at issue in the case and each limitation of each claim at issue. The
claim chart shall specifically identify for each claim those claim limitation(s) that are literally
absent from the Defendant(s) allegedly infringing Abbreviated New Drug Application or New
Drug Application. The written basis for any defense of non-infringement shall also be
accompanied by the production of any document or thing that the Defendant(s) intend to rely
upon in defense of any infringement allegations by Plaintiff(s).
(e) Not more than 45 days after the disclosure of the written basis for any defense of
noninfringement as required by P.R. 3-8(c), Plaintiff(s) shall provide Defendant(s) with a
“Disclosure of Asserted Claims and Infringement Contentions,” for all patents referred to in
Defendant(s) Paragraph IV Certification, which shall contain all disclosures required by P.R.
3-1 and shall be accompanied by the production of documents required by P.R. 3-2.
(f) Each party that has an ANDA application pending with the Food and Drug
Administration (“FDA”) that is the basis of the pending case shall: (1) notify the FDA of any
and all motions for injunctive relief no later than three business days after the date on which
such a motion is filed; and (2) provide a copy of all correspondence between itself and the FDA
pertaining to the ANDA application to each party asserting infringement, or set forth the basis
of any claim of privilege for such correspondence, no later than seven days after the date it
sends or receives any such correspondence.
(g) Unless informed of special circumstances, the Court intends to set all Hatch-Waxman
cases for final pretrial hearing at or near 24 months from the date of the filing of the complaint.
4. CLAIM CONSTRUCTION PROCEEDINGS
LOCAL PATENT RULE 4-1 Exchange of Proposed Terms and Claim Elements for
Construction
(a) Not later than 10 days after service of the “Invalidity Contentions” pursuant to P. R. 3-3,
each party shall simultaneously exchange a list of claim terms, phrases, or clauses which that
party contends should be construed or found indefinite by the Court and identify any claim
element which that party contends should be governed by 35 U.S.C. § 112(f).
(b) The parties shall thereafter meet and confer for the purposes of finalizing this list,
narrowing or resolving differences, and facilitating the ultimate preparation of a Joint Claim
Construction and Prehearing Statement.
LOCAL PATENT RULE 4-2 Exchange of Preliminary Claim Constructions and Extrinsic
Evidence
(a) Not later than 20 days after the exchange of “Proposed Terms and Claim Elements for
Construction” pursuant to P. R. 4-1, the parties shall simultaneously exchange a preliminary
proposed construction of each claim term, phrase, or clause which the parties collectively have
identified for claim construction purposes. Each such “Preliminary Claim Construction” shall also,
for each element which any party contends is governed by 35 U.S.C. § 112(f), identify the
structure(s), act(s), or material(s) corresponding to that element.
(b) At the same time the parties exchange their respective “Preliminary Claim Constructions,”
they shall each also provide a preliminary identification of extrinsic evidence, including without
limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of
percipient and expert witnesses they contend support their respective claim constructions or
indefiniteness positions. The parties shall identify each such item of extrinsic evidence by
production number or produce a copy of any such item not previously produced. With respect to
any such witness, percipient or expert, the parties shall also provide the identity and a brief
description of the substance of that witness’ proposed testimony.
(c) The parties shall thereafter meet and confer for the purposes of narrowing the issues and
finalizing preparation of a Joint Claim Construction and Prehearing Statement.
LOCAL PATENT RULE 4-3 Joint Claim Construction and Prehearing Statement
(a) Not later than 60 days after service of the “Invalidity Contentions,” the parties shall
complete and file a Joint Claim Construction and Prehearing Statement, which shall contain the
following information:
(1) The construction of those claim terms, phrases, or clauses on which the parties agree;
(2) Each party’s proposed claim construction or indefiniteness position for each disputed claim
term, phrase, or clause, together with an identification of all references from the
specification or prosecution history that support that position, and an identification of any
extrinsic evidence known to the party on which it intends to rely either to support its
position or to oppose any other party’s position, including, but not limited to, as permitted
by law, dictionary definitions, citations to learned treatises and prior art, and testimony of
percipient and expert witnesses;
(3) The anticipated length of time necessary for the Claim Construction Hearing;
(4) Whether any party proposes to call one or more witnesses, including experts, at the Claim
Construction Hearing and the identity of each such witness; and
(5) A list of any other issues which might appropriately be taken up at a prehearing conference
prior to the Claim Construction Hearing, and proposed dates, if not previously set, for any
such prehearing conference.
(b) Each party shall also simultaneously serve a disclosure of expert testimony consistent with
Fed. R. Civ. P. 26(a)(2)(B(i)-(ii) or 26(a)(2)(C) for any expert on which it intends to rely to support
its proposed claim construction or indefiniteness position or to oppose any other party’s proposed
claim construction or indefiniteness position.
LOCAL PATENT RULE 4-4 Completion of Claim Construction Discovery
Not later than 30 days after service and filing of the Joint Claim Construction and Prehearing
Statement, the parties shall complete all discovery relating to claim construction, including any
depositions with respect to claim construction of any witnesses, including experts, identified in the
Joint Claim Construction and Prehearing Statement.
LOCAL PATENT RULE 4-5 Claim Construction Briefs
(a) Not later than 45 days after serving and filing the Joint Claim Construction and Prehearing
Statement, the party claiming patent infringement shall serve and file an opening brief and any
evidence supporting its claim construction. All asserted patents shall be attached as exhibits to the
opening claim construction brief in searchable PDF form.
(b) Not later than 14 days after service upon it of an opening brief, each opposing party shall
serve and file its responsive brief and supporting evidence.
(c) Not later than 7 days after service upon it of a responsive brief, the party claiming patent
infringement shall serve and file any reply brief and any evidence directly rebutting the supporting
evidence contained in an opposing party’s response.
(d) At least 10 days before the Claim Construction Hearing held pursuant to P.R. 4-6, the
parties shall jointly file a claim construction chart.
(1) Said chart shall have a column listing complete language of disputed claims with
disputed terms in bold type and separate columns for each party’s proposed construction
of each disputed term. The chart shall also include a fourth column entitled “Court’s
Construction” and otherwise left blank. Additionally, the chart shall also direct the Court’s
attention to the patent and claim number(s) where the disputed term(s) appear(s).
(2) The parties may also include constructions for claim terms to which they have
agreed. If the parties choose to include agreed constructions, each party’s proposed
construction columns shall state “[AGREED]” and the agreed construction shall be
inserted in the “Court’s Construction” column.
(3) The purpose of this claim construction chart is to assist the Court and the parties in
tracking and resolving disputed terms. Accordingly, aside from the requirements set forth
in this rule, the parties are afforded substantial latitude in the chart’s format so that they
may fashion a chart that most clearly and efficiently outlines the disputed terms and
proposed constructions. Appendices to the Court’s prior published and unpublished claim
construction opinions may provide helpful guidelines for parties fashioning claim
construction charts.
(e) Unless otherwise ordered by the Court, the page limitations governing dispositive motions
pursuant to Local Rule CV-7(a) shall apply to claim construction briefing.
LOCAL PATENT RULE 4-6 Claim Construction Hearing
Subject to the convenience of the Court’s calendar, two weeks following submission of the reply
brief specified in P.R. 4-5(c), the Court shall conduct a Claim Construction Hearing, to the extent
the parties or the Court believe a hearing is necessary for construction of the claims at issue.
