Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC., (D/B/A FLYP),
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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` CIVIL ACTION NO. 6:22-cv-00031-ADA
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`JURY TRIAL DEMANDED
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO STAY
`PROCEEDINGS PENDING MANDAMUS REVIEW
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`
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`This litigation is currently proceeding in two places: this Court and the Federal Circuit.
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`After this Court denied Defendant Google LLC’s (“Google”) motion to transfer (ECF No. 74),
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`Google filed its Petition for Writ of Mandamus to the Court of Appeals for the Federal Circuit
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`(“the Mandamus Petition”). In re Google LLC, No. 23-112 (Fed. Cir. Dec. 22, 2022). Until that
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`process concludes, Google and Plaintiff Flypsi, Inc. (“Flyp”) will litigate in two separate forums.
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`A stay pending resolution of the Mandamus Petition will respect this Court’s judicial resources by
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`eliminating that inefficiency and will conserve both parties’ resources. Flyp also will not be
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`prejudiced by the relatively short stay necessary to allow resolution of the Mandamus Petition.
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`And this is an appropriate stage of the case for a stay: fact discovery is underway, which will likely
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`lead to discovery disputes, and the February 3 deadline for Final Infringement and Invalidity
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`Contentions is fast approaching. ECF No. 85. Google therefore respectfully requests that the Court
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`stay all proceedings pending the resolution of the Mandamus Petition. Flyp opposes the requested
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`stay.
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`1
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`Page 1 of 19
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`GOOGLE EXHIBIT 1022
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`

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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 2 of 7
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`I.
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`BACKGROUND
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`Flyp filed this case in January 2022. ECF No. 1. Google moved to transfer to the Northern
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`District of California in July of that year. ECF No. 42. This Court denied transfer approximately
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`one and a half months ago on November 21, concluding that “even with [the compulsory process
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`and local interest] factors favoring transfer, the Court finds that Google has failed to meet its
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`burden of showing that the NDCA is a clearly more convenient forum.” ECF No. 74 at 29. Google
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`filed a Mandamus Petition requesting that the Federal Circuit vacate the transfer order on
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`December 22, 2022. In re Google LLC, No. 23-112 (Fed. Cir. Dec. 22, 2022). In the meantime,
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`there is much substantive work being done and to be done, including the majority of fact discovery,
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`expert discovery, and preparation of Final Infringement and Invalidity Contentions.
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`II.
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`
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`LEGAL STANDARD
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`The “power to stay proceedings” is part of a district court’s “inherent power ‘to control the
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`disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
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`for litigants.’” United States v. Colomb, 419 F.3d 292, 299 (5th Cir. 2005) (citation omitted). It is
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`well-established that “[i]f the district court or the court of appeals finds it appropriate to stay
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`proceedings while a petition for mandamus relief is pending, such a stay may be granted in the
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`court's discretion.” Woodson v. Surgitek, Inc., 57 F.3d 1406, 1416 (5th Cir. 1995).
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`In deciding whether to stay litigation, courts consider: “(1) whether the stay will unduly
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`prejudice the nonmoving party, (2) whether the proceedings before the court have reached an
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`advanced stage, including whether discovery is complete and a trial date has been set, and (3)
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`whether the stay will likely result in simplifying the case before the court.” Kirsch Rsch. & Dev.,
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`LLC v. IKO Indus., Inc., No. 6:20-cv-00317-ADA, 2021 WL 4555610, at *2 (W.D. Tex. Oct. 4,
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`2021) (citation omitted). It may be appropriate to grant a stay when the petition for mandamus will
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`determine whether the case will be transferred to a different court. See Motion Offense, LLC, v.
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`2
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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 3 of 7
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`Google LLC, No. 6:21-cv-00514-ADA, ECF No. 77 (W.D. Tex. Sept. 15, 2022) (ordering a stay
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`after transfer was granted while plaintiff’s petition for mandamus regarding transfer under 28
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`U.S.C. § 1404(a) had yet to be filed).
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`III. A STAY PENDING RESOLUTION OF THE MANDAMUS PETITION IS
`WARRANTED
`A.
`
`A Stay Would Not Unduly Prejudice Flyp or Present a Clear Tactical
`Disadvantage to Flyp
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`In this case, the Mandamus Petition will be fully briefed on January 9. A relatively short
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`stay to fully resolve the issue regarding the correct venue will not prejudice, let alone unduly
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`prejudice, Flyp. Nor would it present Flyp with any tactical disadvantage. See Nobots LLC v.
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`Google LLC, No. 1-22-cv-00585-RP, ECF No. 53 (W.D. Tex July 13, 2022) (“[A] short stay of
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`the proceedings will not unduly prejudice [Plaintiff].”). Flyp itself has demonstrated a lack of
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`urgency in pursuing a remedy from Google. For example, Flyp delayed nearly seven months to
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`bring this action against Google after asserting four of the same five patents against another party
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`in another suit, Flypsi, Inc. v. Dialpad, Inc., No. 6:21-cv-00642-ADA, ECF No. 1 (W.D. Tex. June
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`21, 2021). A stay will not exclude any legal remedy currently available to Flyp. In the event that
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`Flyp prevails in its claims of infringement, Flyp will be fully compensated by monetary damages.
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`“[M]ere delay in collecting those damages does not constitute undue prejudice.” Crossroads Sys.,
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`Inc. v. Dot Hill Sys. Corp., No. 13-cv-01025-SS, 2015 WL 3773014, at *2 (W.D. Tex. June 16,
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`2015). Further favoring a stay is the fact that Flyp has not asked this Court for a preliminary
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`injunction. See, e.g., QSPX Devs. 5 Pty Ltd. v. Cinea Corp., No. 2:07-cv-118-CE, 2009 WL
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`8590964, at *2 (E.D. Tex. Aug. 27, 2009) (granting a stay where the plaintiff had not sought a
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`preliminary injunction).
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`3
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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 4 of 7
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`B.
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`A Stay Simplifies the Issues and Trial of the Case
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`
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`Permitting the Federal Circuit to settle the issue of venue before proceeding would simplify
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`the issues in this case. The Court’s local rules differ in important ways from those of the Northern
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`District of California. For example, there are material differences in the respective districts’
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`contention requirements, including the timing of contentions. See NDCA Patent Local Rules 3-1
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`and 3-3, at *4–6 (Exhibit 1); See also Standing Order Governing Proceedings (OGP) 4.2 – Patent
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`Cases at 2–3, 12. Specifically, the OGP in this court provides for Final Infringement and Invalidity
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`Contentions; the Northern District of California Patent Local Rules contain no such requirement.
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`The parties should not engage in potentially unnecessary activity while the Federal Circuit
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`examines the proper venue. A stay would avoid this inefficiency.
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`C.
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`Discovery Is Accelerating and the Contention Deadline Is Approaching
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`This case is leaving the beginning stages of fact discovery, and that process will soon
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`accelerate: Defendant and Plaintiff have recently provided responses to the other’s initial
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`interrogatories and requests in the past month. The February 3 Final Infringement and Invalidity
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`Contentions deadline is approaching, ECF No. 85, and the March 8 deadline to amend pleadings
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`is following close behind, ECF No. 73. In the coming months the parties will conduct extensive
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`fact and, subsequently, expert discovery, including depositions, all of which will consume
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`considerable party resources. Bell Semiconductor, LLC v. NXP Semiconductors, N.V., No. 1-20-
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`cv-00611-LY, 2022 WL 1447948, at *2 (W.D. Tex. Feb. 7, 2022) (granting a stay when “[t]he
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`parties have yet to complete a substantial amount of discovery—including depositions”). That
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`discovery should be conducted under the local rules of the court that will preside over the trial,
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`and the trial court should resolve any arising discovery disputes. And the fact that the Court has
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`set a trial date favors a stay; as trial approaches, the circumstances will increasingly favor staying
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`the case to avoid mooting the issues presented in the Mandamus Petition. See In re Volkswagen of
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`4
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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 5 of 7
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`America, Inc., No. 07-40058 (5th Cir. 2008) (ordering a stay while a petition for mandamus to
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`transfer under 28 U.S.C. § 1404(a) was pending).
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`IV. CONCLUSION
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`The Mandamus Petition, together with the current stage and upcoming deadlines of this
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`case, warrant a stay. The parties and Court should not spend valuable time and resources
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`conducting extensive discovery, resolving disputes, or otherwise litigating a case that may be soon
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`transferred. Defendant therefore requests that the Court stay all proceedings pending the
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`Mandamus Petition’s resolution.
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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 6 of 7
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`DATED: January 6, 2023
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`
`
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`Respectfully Submitted,
`
`/s/ Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`David M. Fox (Pro Hac Vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Paige Arnette Amstutz
`State Bar No.: 00796136
`pamstutz@scottdoug.com
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`6
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`Case 6:22-cv-00031-ADA Document 86 Filed 01/06/23 Page 7 of 7
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`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
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`Attorneys for Defendant Google LLC
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that on January 5, 2023, Defendant’s counsel sought Plaintiff’s position on
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`
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`this request for a stay pending resolution of Defendant’s mandamus petition. On January 5, 2023,
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`Plaintiff confirmed it opposes Google’s request.
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`
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`/s/ Robert W. Unikel
`Robert W. Unikel
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`
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on the 6th day of January, 2023, a true and correct copy of the
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`foregoing document was filed electronically with the Clerk of Court using the CM/ECF system.
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`As of this date, all counsel of record have consented to electronic service and are being served
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`with a copy of this document through the Court’s CM/ECF system.
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`
`
`
`/s/ Robert W. Unikel
`Robert W. Unikel
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`7
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`Case 6:22-cv-00031-ADA Document 86-1 Filed 01/06/23 Page 1 of 11
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`Exhibit 1
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`Page 8 of 19
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`Case 6:22-cv-00031-ADA Document 86-1 Filed 01/06/23 Page 2 of 11
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`PATENT LOCAL RULES
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`
`
`TABLE OF CONTENTS
`1. SCOPE OF RULES .............................................................................................................................. 1
`1-1. Title ............................................................................................................................................... 1
`1-2.
`Scope and Construction ................................................................................................................ 1
`1-3. Modification of these Rules .......................................................................................................... 1
`1-4. Effective Date ............................................................................................................................... 1
`2. GENERAL PROVISIONS ................................................................................................................... 2
`2-1. Governing Procedure .................................................................................................................... 2
`(a)
`Notice of Pendency of Other Action Involving Same Patent. ................................................... 2
`(b)
`Initial Case Management Conference ....................................................................................... 2
`2-2. Confidentiality .............................................................................................................................. 2
`2-3. Certification of Disclosures .......................................................................................................... 3
`2-4. Admissibility of Disclosures ......................................................................................................... 3
`2-5. Relationship to Federal Rules of Civil Procedure ......................................................................... 3
`3. PATENT DISCLOSURES ................................................................................................................... 4
`3-1. Disclosure of Asserted Claims and Infringement Contentions ..................................................... 4
`3-2. Document Production Accompanying Disclosure ........................................................................ 4
`3-3.
`Invalidity Contentions ................................................................................................................... 5
`3-4. Document Production Accompanying Invalidity Contentions ..................................................... 6
`3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity ........................ 6
`(a)
`Invalidity Contentions If No Claim of Infringement ................................................................ 6
`(b)
`Inapplicability of Rule .............................................................................................................. 6
`3-6. Amendment to Contentions .......................................................................................................... 6
`3-7. Advice of Counsel ......................................................................................................................... 7
`3-8. Damages Contentions ................................................................................................................... 7
`3-9. Responsive Damages Contentions ................................................................................................ 7
`4. CLAIM CONSTRUCTION PROCEEDINGS ..................................................................................... 8
`4-1. Exchange of Proposed Terms for Construction ............................................................................ 8
`4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence ....................................... 8
`4-3.
`Joint Claim Construction and Prehearing Statement and Expert Reports ..................................... 8
`4-4. Completion of Claim Construction Discovery .............................................................................. 9
`4-5. Claim Construction Briefs ............................................................................................................ 9
`4-6. Claim Construction Hearing ......................................................................................................... 9
`4-7. Good Faith Participation ............................................................................................................... 9
`
`
`
`USDC Patent Local Rules – Revised November 4, 2020
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`PAT-i
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`
`
`1. SCOPE OF RULES
`1-1. Title
`These are the Local Rules of Practice for Patent Cases before the United States District Court
`for the Northern District of California. They should be cited as “Patent L.R. __.”
`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 Civil Local Rules of this Court shall also apply to such actions, except to
`the extent that they are inconsistent with these Patent Local Rules. If the filings or actions in a
`case do not trigger the application of these Patent Local 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 Local Rules to the case and promptly report the
`results of the meet and confer to the Court.
`1-3. Modification of these Rules
`The Court may modify the obligations or deadlines set forth in these Patent Local Rules based
`on the circumstances of any particular case, including, without limitation, the simplicity or
`complexity of the case as shown by the patents, claims, products, or parties involved. Such
`modifications shall, in most cases, be made at the initial case management conference, but may
`be made at other times upon a showing of good cause. In advance of submission of any request
`for a modification, the parties shall meet and confer for purposes of reaching an agreement, if
`possible, upon any modification.
`1-4. Effective Date
`These Patent Local Rules take effect on December 1, 2009. They govern patent cases filed on
`or after that date. For actions pending prior to December 1, 2009, the provisions of the Patent
`Local Rules that were in effect on November 30, 2009, shall apply, except that the time periods
`for actions pending before December 1, 2009 shall be those set forth in and computed as in the
`Federal Rules of Civil Procedure and the Patent Local Rules that took effect on December 1,
`2009.
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`
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`
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`USDC Patent Local Rules – Revised November 4, 2020
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`PAT-1
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`Case 6:22-cv-00031-ADA Document 86-1 Filed 01/06/23 Page 4 of 11
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`
`
`(4)
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`(6)
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`2. GENERAL PROVISIONS
`2-1. Governing Procedure
`(a) Notice of Pendency of Other Action Involving Same Patent.
`(1) When actions concerning the same patent are filed within two years of each other
`by the same plaintiff, they will be deemed related.
`(2) Whenever a party knows or learns that actions concerning the same patent have
`been filed within two years of each other by the same plaintiff, the party must
`promptly file in each such case A Notice of Pendency of Other Action Involving
`Same Patent.
`(3) Pursuant to the Assignment Plan, the Clerk will reassign the related higher-
`numbered cases to the Judge assigned to the lowest-numbered case and will file the
`appropriate notification on the docket of each reassigned case.
`If the Judge determines that the reassignment is not in compliance with subsection
`(1), the Judge may refer the matter to the Executive Committee for resolution.
`(5) Even if a case is not deemed related to a pending case pursuant to this rule, a party
`may still seek a related case determination pursuant to Civil L.R. 3-12.
`If the lowest-numbered case is assigned to a magistrate judge to whom the parties
`have consented to preside over the action, the magistrate judge will retain that case
`even if consent is not entered in higher-numbered cases deemed related pursuant to
`subsection (1).
`
`
`
`(b)
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`Initial Case Management 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 shall discuss
`and address in the Case Management Statement filed pursuant to Fed. R. Civ. P. 26(f)
`and Civil L.R. 16-9, the following topics:
`(1) Proposed modification of the obligations or deadlines set forth in these Patent
`Local Rules to ensure that they are suitable for the circumstances of the particular
`case (see Patent L.R. 1-3);
`(2) The scope and timing of any claim construction discovery (including disclosure of
`and discovery from any expert witness permitted by the court) and damages
`discovery;
`(3) The format of the Claim Construction Hearing, including whether the Court will
`hear live testimony, the order of presentation, and the estimated length of the
`hearing; and
`(4) How the parties intend to educate the court on the technology at issue.
`(5) The parties shall provide the court with a non-binding, good-faith estimate of the
`damages range expected for the case along with an explanation for the estimates. If
`either party is unable to provide such information, that party shall explain why it
`cannot and what specific information is needed before it can do so. Such party shall
`also state the time by which it should be in a position to provide that estimate and
`explanation.
`2-2. Confidentiality
`Discovery cannot be withheld on the basis of confidentiality absent Court order. The Protective
`Order authorized by the Northern District of California shall govern discovery unless the Court
`enters a different protective order. The approved Protective Order can be found on the Court’s
`website.
`
`USDC Patent Local Rules – Revised November 4, 2020
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`PAT-2
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`2-3. Certification of Disclosures
`All statements, disclosures, or charts filed or served in accordance with these Patent Local
`Rules shall 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.
`2-4. Admissibility of Disclosures
`Statements, disclosures, or charts governed by these Patent Local Rules are admissible to the
`extent permitted by the Federal Rules of Evidence or Procedure. However, the statements and
`disclosures provided for in Patent L.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 Local Rules shall be taken.
`2-5. Relationship to Federal Rules of Civil Procedure
`Except as provided in this paragraph or as otherwise ordered, it shall not be a 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 Local
`Rules, absent other legitimate objection. 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 Local Rules:
`(a) Requests seeking to elicit a party’s claim construction or damages positions;
`(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 advice of
`counsel, and related documents.
`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 be provided to an opposing party
`under these Patent Local Rules or as set by the Court, unless there exists another legitimate
`ground for objection.
`
`
`
`
`
`USDC Patent Local Rules – Revised November 4, 2020
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`PAT-3
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`3. PATENT DISCLOSURES
`3-1. Disclosure of Asserted Claims and Infringement Contentions
`Not later than 14 days after the Initial Case Management Conference, a party claiming patent
`infringement shall 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,
`including for each claim the applicable statutory subsections of 35 U.S.C. §271 asserted;
`(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 shall be identified by name or model number, if known.
`Each method or process shall 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 and how each limitation of each asserted claim is
`found within each Accused Instrumentality, including for each limitation 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) For each claim which is alleged to have been indirectly infringed, an identification of any
`direct infringement and a description of the acts of the alleged indirect infringer that
`contribute to or are inducing that direct infringement. Insofar as alleged direct
`infringement is based on joint acts of multiple parties, the role of each such party in the
`direct infringement must be described.
`(e) Whether each limitation of each asserted claim is alleged to be literally present or present
`under the doctrine of equivalents in the Accused Instrumentality;
`For any patent that claims priority to an earlier application, the priority date to which
`each asserted claim allegedly is entitled; and
`If a party claiming patent infringement wishes to preserve the right to rely, for any
`purpose, on the assertion that its own or its licensee’s apparatus, product, device, process,
`method, act, or other instrumentality practices the claimed invention, the party shall
`identify, separately for each asserted claim, each such apparatus, product, device,
`process, method, act, or other instrumentality that incorporates or reflects that particular
`claim.
`Identify the timing of the point of first infringement, the start of claimed damages, and
`the end of claimed damages; and
`If a party claiming patent infringement alleges willful infringement, the basis for such
`allegation.
`3-2. Document Production Accompanying Disclosure
`With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming
`patent infringement shall 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, or any public use of, the claimed
`invention prior to the date of application for the patent in suit. A party’s production of a
`
`(f)
`
`(g)
`
`(h)
`
`(i)
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`USDC Patent Local Rules – Revised November 4, 2020
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`Case 6:22-cv-00031-ADA Document 86-1 Filed 01/06/23 Page 7 of 11
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`(i)
`
`(e)
`
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`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 Patent L.R. 3-1(f), whichever is
`earlier;
`(c) A copy of the file history for each patent in suit;
`(d) All documents evidencing ownership of the patent rights by the party asserting patent
`infringement;
`If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents sufficient
`to show the operation of any aspects or elements of such instrumentalities the patent
`claimant relies upon as embodying any asserted claims;
`(f) All agreements, including licenses, transferring an interest in any patent-in-suit;
`(g) All agreements that the party asserting infringement contends are comparable to a license
`that would result from a hypothetical reasonable royalty negotiation;
`(h) All agreements that otherwise may be used to support the party asserting infringement’s
`damages case;
`If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents sufficient
`to show marking of such embodying accused instrumentalities and if it wants to preserve
`the right to recover lost profits based on such products, sales, revenues, costs and profits
`of such embodying accused instrumentalities; and
`(j) All documents comprising or reflecting a F/RAND commitment or agreement with
`respect to the asserted patent(s).
`The producing party shall separately identify by production number which documents
`correspond to each category.
`3-3. Invalidity Contentions
`Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and
`Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on
`all parties its “Invalidity Contentions” which shall 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 shall be identified by its title, date of
`publication, and where feasible, author and publisher. Each alleged sale or public use
`shall be identified by specifying the item offered for sale or publicly used or 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. For pre-
`AIA claims, prior art under 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. For pre-AIA claims, prior art under 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);
`(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If
`obviousness is alleged, an explanation of why the prior art renders the asserted claim
`obvious, including an identification of any combinations of prior art showing
`obviousness;
`
`USDC Patent Local Rules – Revised November 4, 2020
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`(c) A chart identifying specifically where and how in each alleged item of prior art each
`limitation of each asserted claim is found, including for each limitation 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 35 U.S.C. § 101, 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.
`3-4. Document Production Accompanying Invalidity Contentions
`With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall
`produce or make available for inspection and copy