The United States District Court for the Northern District of California adopted new Local Rules 16-6 through 16-11, effective July 1, 1997, which impose new and significant disclosure obligations in patent cases. They apply to all civil cases "filed in this court which include a claim of patent infringement," or which seek declaratory relief of invalidity or noninfringement. Rule 16-6(a). The Patent Rules themselves do not state whether they apply to pending cases but Local Rule 1-3 was also amended to read in relevant part "Unless otherwise ordered by the assigned judge, an amendment to these local rules shall apply to cases pending on the effective date,except where fewer than 10 days remain before a party must perform an act regulated by these rules."
The rules impose substantial, additional disclosure obligations and do not replace existing disclosures. They provide that all statements and disclosures must be signed by counsel of record as a certification that the information "is complete and correct at the time it is made." Rule16-6(c). The disclosures are subject to the duty of supplementation under Rule26(e). Rule16-6(d). Disclosures, claim charts and statements are generally admissible as evidence. Rule16-6(e).
The Local Rules of Practice in Patent Cases sets out the following schedule, with dates set by the number of days after the filing of the complaint:
45 days: Claimant's Initial Disclosure of Asserted Claims, identifying each patent claim and allegedly infringing product or activity, and date of conception and reduction to practice of each claim. Claimant must produce "all documents relating" to (1)offers to sell and (2)research and development of the invention. Rule 16-7(a)-(c). Note: This obligation does not apply to declaratory relief actions. Rule 16-8.
100 days: Adverse Party's Initial Disclosure of Prior Art, identifying each piece of prior art that anticipates or makes obvious any claim and if a combination of prior act is asserted for obviousness, identifying the combination. Rule16-7(e)(1)-(2). The identification must be specific, listing the patent number, the particulars of any publication and the details of any prior sale or public use under §102(b). Rule16-7(e)(3). In addition, the adverse party must produce "any source code, specification, schematics, flow charts, artwork for, formulas or other documentation on any accused instrumentality." Rule16-7(f). This obligation is considerably broader than the draft version, which applied only "to the extent applicable to" the claims listed in claimant's initial disclosure. Rule 16-7(d). Note: In declaratory relief actions, this obligation is 45 days after filing the complaint and the declaratory relief plaintiff is charged with "initiat[ing] the disclosure process by serving on each opposing party" the Initial Disclosure of Prior Art. Rule 16-8.
170 days: Claimant's "Claim Chart" identifying separately (1) for each patent claim allegedly infringed, (2) the infringing product(s), apparatus, method etc., (3) whether the infringement is literal or under the doctrine of equivalents, (4) where each element of each claim is found, and (5) claimant's product, device etc. that incorporates the claim if claimant intends to rely on them as evidence of commercial success. Note: Once again this time period is different in declaratory relief actions. It is 70 days after service of the Initial Disclosure of Prior Art, or 115 days after filing the complaint. Rule 16-9(a).
230 days: Adverse Party's Response Chart (1) identifying each piece of prior art that anticipates or makes obvious any claim, (2) if a combination of references makes a claim obvious, identifying the combination, (3) specifying where in each element of each claim the prior art is found, (4) identifying all other grounds of invalidity with as much specificity as possible, and (5), if willful infringement is alleged, the date and document reference of each opinion relied upon as a defense. Rule 16-9(b). This is 60 days after service of claim chart, or 175 days after filing a declaratory relief action.
(Note: no later amendments allowed to claim charts absent stipulation or order and substantial justification. Rule16-9(c)).
170 days: Claimant's "Proposed Claim Construction Statement" containing (1) identification of any special or uncommon meanings in the claim language, (2) references to the specification that support, describe or explain each element of each claim, (3) material in the prosecution history that support, describe or explain each element of each claim, (4) any extrinsic evidence, including expert or inventor testimony, learned treatises, dictionary definitions "as permitted by law." Rule 16-10(a). Note: Once again this time period is different in declaratory relief actions. It is 70 days after service of the Initial Disclosure of Prior Art, or 115 days after filing the complaint. Rule 16-10(a).
230 days: Adverse Party's Proposed Claim Construction Statement consisting of the same topics as the claimant's and containing information "in addition to or contrary to "those disclosed in claimant's statement. Rule 16-10(b). This is 60 days after service of claim chart, or 175 days after filing a declaratory relief action.
251 days: Meet and confer re claims construction. Rule 16-11(a). In declaratory relief actions this is 196 days after filing. Rule 16.11(a)
266 days: File Joint Claims Construction Statement containing (1) the construction of claims and terms that are agreed, (2) each party's proposed construction of the other claims or terms with supporting materials (same as Rule 16-10), (3) jointly agreeable dates for a hearing on all disputed claims construction issues (considering the Court's calendar and the briefing schedule), and (4) each witness any party intends to call, with a description of the subject matter and a time estimate. (This is 211 days after the filing of a declaratory relief action.) Rule 16.11(b)
(Not later than) 296 days: Court to set Claims Construction (Markman) Hearing and unless the notice otherwise provides, "the parties shall be prepared to call all witnesses" previously identified. (This is 241 days after the filing of a declaratory relief action.) Rule 16.11(b).
Briefing will be: 35 days before the hearing claimant files opening brief and supporting evidence; 21 days before the hearing responsive brief and evidence; and 14 days before the hearing replying brief and rebuttal evidence. Rule16.11(d).