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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`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
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`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
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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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`(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).
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`(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.
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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.
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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
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`(f)
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`(g)
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`(h)
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`(i)
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`(i)
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`(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;
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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 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 Patent L.R. 3-1(c) chart;
`(b) A copy or sample of the prior art identified pursuant to Patent L.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 shall be produced;
`(c) All agreements that the party opposing infringement contends are comparable to a license
`that would result from a hypothetical reasonable royalty negotiation;
`(d) Documents sufficient to show the sales, revenue, cost, and profits for accused
`instrumentalities identified pursuant to Patent L.R. 3-1(b) for any period of alleged
`infringement; and
`(e) All agreements that may be used to support the party denying infringement’s damages
`case.
`The producing party shall separately identify by production number which documents
`correspond to each category.
`3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity
`Invalidity Contentions If No Claim of Infringement. In all cases in which a party files
`(a)
`a complaint or other pleading seeking a declaratory judgment that a patent is invalid
`Patent L.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 14 days after the defendant serves its answer, or 14
`days after the Initial Case Management Conference, whichever is later, the party seeking
`a declaratory judgment of invalidity shall serve upon each opposing party its Invalidity
`Contentions that conform to Patent L.R. 3-3 and produce or make available for inspection
`and copying the documents described in Patent L.R. 3-4.
`Inapplicability of Rule. This Patent L.R. 3-5 shall not apply to cases in which a request
`for a declaratory judgment that a patent is invalid is filed in response to a complaint for
`infringement of the same patent.
`3-6. Amendment to Contentions
`Amendment of the Infringement Contentions or the Invalidity Contentions may be made only
`by order of the Court upon a timely showing of good cause. Non-exhaustive examples of
`circumstances that may, absent undue prejudice to the non-moving party, support a finding of
`good cause include:
`(a) A claim construction by the Court different from that proposed by the party seeking
`amendment;
`(b) Recent discovery of material, prior art despite earlier diligent search; and
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`(b)
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`(c) Recent discovery of nonpublic information about the Accused Instrumentality which was
`not discovered, despite diligent efforts, before the service of the Infringement
`Contentions.
`The duty to supplement discovery responses does not excuse the need to obtain leave of court
`to amend contentions.
`3-7. Advice of Counsel
`Not later than 30 days after service by the Court of its Claim Construction Ruling, each party
`relying upon advice of counsel as part of a patent-related claim or defense for any reason shall:
`(a) Produce or make available for inspection and copying any written advice and documents
`related thereto for which the attorney-client and work product protection have been
`waived;
`(b) Provide a written summary of any oral advice and produce or make available for
`inspection and copying that summary and documents related thereto for which the
`attorney-client and work product protection have been waived; and
`(c) 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 advice which the party
`is withholding on the grounds of attorney-client privilege or work product protection.
`A party who does not comply with the requirements of this Patent L.R. 3-7 shall not be permitted
`to rely on advice of counsel for any purpose absent a stipulation of all parties or by order of the
`Court.
`3-8. Damages Contentions
`Not later than 50 days after service of the Invalidity Contentions, each party asserting
`infringement shall:
`(a) Identify each of the category(-ies) of damages it is seeking for the asserted infringement, as
`well as its theories of recovery, factual support for those theories, and computations of
`damages within each category, including:
`lost profits;
`1.
`2. price erosion;
`3. convoyed or collateral sales;
`4. reasonable royalty; and
`5. any other form of damages.
`(b) To the extent a party contends it is unable to provide a fulsome response to the disclosures
`required by this rule, it shall identify the information it requires.
`3-9. Responsive Damages Contentions
`Not later than 30 days after service of the Damages Contentions served pursuant to Patent
`L.R. 3-8, each party denying infringement shall identify specifically how and why it
`disagrees with those contentions. This should include the party’s affirmative position on
`each issue. To the extent a party contends it is unable to provide a fulsome response to the
`disclosures required by this rule, it shall identify the information it requires.
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`4. CLAIM CONSTRUCTION PROCEEDINGS
`4-1. Exchange of Proposed Terms for Construction
`(a) Not later than 14 days after service of the “Invalidity Contentions” pursuant to Patent
`L.R. 3-3, not later than 42 days after service upon it of the “Disclosure of Asserted
`Claims and Infringement Contentions” in those actions where validity is not at issue (and
`Patent L.R. 3-3 does not apply), or, in all cases in which a party files a complaint or other
`pleading seeking a declaratory judgment not based on validity, not later than 14 days
`after the defendant serves an answer that does not assert a claim for patent infringement
`(and Patent L.R. 3-1 does not apply), each party shall serve on each other party a list of
`claim terms which that party contends should be construed by the Court, and identify any
`claim term which that party contends should be governed by 35 U.S.C. § 112(6).
`(b) The parties shall thereafter meet and confer for the purposes of limiting the terms in
`dispute by narrowing or resolving differences and facilitating the ultimate preparation of
`a Joint Claim Construction and Prehearing Statement. The parties shall also jointly
`identify the 10 terms likely to be most significant to resolving the parties’ dispute,
`including those terms for which construction may be case or claim dispositive.
`4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence
`(a) Not later than 21 days after the exchange of the lists pursuant to Patent L.R. 4-1, the
`parties shall simultaneously exchange proposed constructions of each term identified by
`either party for claim construction. Each such “Preliminary Claim Construction” shall
`also, for each term which any party contends is governed by 35 U.S.C. § 112(6), identify
`the structure(s), act(s), or material(s) corresponding to that term’s function.
`(b) At the same time the parties exchange their respective “Preliminary Claim
`Constructions,” each party shall also identify all references from the specification or
`prosecution history that support its proposed construction and designate any supporting
`extrinsic evidence including, without limitation, dictionary definitions, citations to
`learned treatises and prior art, and testimony of percipient and expert witnesses. Extrinsic
`evidence shall be identified by production number or by producing a copy if not
`previously produced. With respect to any supporting witness, percipient or expert, the
`identifying party shall also provide a description of the substance of that witness’
`proposed testimony that includes a listing of any opinions to be rendered in connection
`with claim construction.
`(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.
`4-3. Joint Claim Construction and Prehearing Statement and Expert Reports
`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:
`(a) The construction of those terms on which the parties agree;
`(b) Each party’s proposed construction of each disputed term, together with an identification
`of all references from the specification or prosecution history that support that
`construction, and an identification of any extrinsic evidence known to the party on which
`it intends to rely either to support its proposed construction or to oppose any other party’s
`proposed construction, 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;
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`(c) An identification of the terms whose construction will be most significant to the
`resolution of the case up to a maximum of 10. The parties shall also identify any term
`among the 10 whose construction will be case or claim dispositive. If the parties cannot
`agree on the 10 most significant terms, the parties shall identify the ones which they do
`agree are most significant and then they may evenly divide the remainder with each party
`identifying what it believes are the remaining most significant terms. However, the total
`terms identified by all parties as most significant cannot exceed 10. For example, in a
`case involving two parties, if the parties agree upon the identification of five terms as
`most significant, each may only identify two additional terms as most significant; if the
`parties agree upon eight such terms, each party may only identify only one additional
`term as most significant.
`(d) The anticipated length of time necessary for the Claim Construction Hearing;
`(e) Whether any party proposes to call one or more witnesses at the Claim Construction
`Hearing, and the identity of each such witness.
`(f) An identification of any factual findings requested from the Court related to claim
`construction.
`Unless the parties agree otherwise, not later than 60 days after service of the “Invalidity
`Contentions,” any party that intends to rely on any witness who will give expert testimony to
`support that party’s proposed constructions shall serve the other party or parties with a claim
`construction expert report for that witness. Such reports shall comply with the disclosure
`requirements of Fed. R. Civ. P. 26(A)(2)(B).
`4-4. Completion of Claim Construction Discovery
`Not later than 30 days after service and filing of the Joint Claim Construction and P