ACC and IP Committee Letter regarding IPR and PGR

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4. C L A I M C O NST RU C T I O N PR O C E E DIN GS4-1. Exchange of Proposed Terms for Construction(a)L.R. 3-e of AssertedPatent L.R. 3-3 does not apply), or, in all cases in which a party files a complaint or otherpleading seeking a declaratory judgment not based on validity, not later than 14 daysafter 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 ofclaim terms which that party contends should be construed by the Court, and identify anyclaim 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 indispute by narrowing or resolving differences and facilitating the ultimate preparation ofa Joint Claim Construction and Prehearing Statement. The parties shall also jointlyincluding 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, theparties shall simultaneously exchange proposed constructions of each term identified byalso, for each term which any party contends is governed by 35 U.S.C. § 112(6), identifythe structure(s), act(s), or material(s) corresp(b)(c)prosecution history that support its proposed construction and designate any supportingextrinsic evidence including, without limitation, dictionary definitions, citations tolearned 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 notpreviously produced. With respect to any supporting witness, percipient or expert, theproposed testimony that includes a listing of any opinions to be rendered in connectionwith claim construction.The parties shall thereafter meet and confer for the purposes of narrowing the issues andfinalizing preparation of a Joint Claim Construction and Prehearing Statement.4-3. Joint Claim Construction and Prehearing Statementand file a Joint Claim Construction and Prehearing Statement, which shall contain the followinginformation:(a)The construction of those terms on which the parties agree;USDC Patent Local Rules Revised December 1, 2009PAT-8
(b)(c)(d)(e)of all references from the specification or prosecution history that support thatconstruction, and an identification of any extrinsic evidence known to the party on whichproposed construction, including, but not limited to, as permitted by law, dictionarydefinitions, citations to learned treatises and prior art, and testimony of percipient andexpert witnesses;An identification of the terms whose construction will be most significant to theresolution of the case up to a maximum of 10. The parties shall also identify any termamong the 10 whose construction will be case or claim dispositive. If the parties cannotagree on the 10 most significant terms, the parties shall identify the ones which they doagree are most significant and then they may evenly divide the remainder with each partyidentifying what it believes are the remaining most significant terms. However, the totalterms identified by all parties as most significant cannot exceed 10. For example, in acase involving two parties, if the parties agree upon the identification of five terms asmost significant, each may only identify two additional terms as most significant; if theparties agree upon eight such terms, each party may only identify only one additionalterm as most significant.The anticipated length of time necessary for the Claim Construction Hearing;Whether any party proposes to call one or more witnesses at the Claim ConstructionHearing, the identity of each such witness, and for each witness, a summary of his or hertestimony including, for any expert, each opinion to be offered related to claimconstruction.4-4. Completion of Claim Construction DiscoveryNot later than 30 days after service and filing of the Joint Claim Construction and PrehearingStatement, the parties shall complete all discovery relating to claim construction, including anydepositions with respect to claim construction of any witnesses, including experts, identified inthe Preliminary Claim Construction statement (Patent L.R. 4-2) or Joint Claim Constructionand Prehearing Statement (Patent L.R. 4-3).4-5. Claim Construction Briefs(a)Not later than 45 days after serving and filing the Joint Claim Construction andPrehearing Statement, the party claiming patent infringement, or the party assertinginvalidity if there is no infringement issue present in the case, shall serve and file anopening brief and any evidence supporting its claim construction.(b)(c)Not later than 14 days after service upon it of an opening brief, each opposing party shallserve and file its responsive brief and supporting evidence.Not later than 7 days after service upon it of a responsive brief, the party claiming patentinfringement, or the party asserting invalidity if there is no infringement issue present inthe case, shall serve and file any reply brief and any evidence directly rebutting theUSDC Patent Local Rules Revised December 1, 2009PAT-9
Page 1 and 2: April 9, 2012The Honorable David J.
Page 3: C. The ACC and its Intellectual Pro
Page 8 and 9: over the Petitioner by the other pa
Page 10 and 11: EXHIBIT 1
Page 12 and 13: should be made applicable to that c
Page 14 and 15: dated and signed by counsel of reco
Page 16 and 17: (c) A chart identifying specificall
Page 19 and 20: is made by a party. If the defendan
Page 21 and 22: infringement that will rely on an o
Page 23 and 24: esolving differences, and facilitat
Page 25 and 26: (a) Not later than 45 days after se
Page 29 and 30: 1. SC OPE O F RU L ES1-1. TitleThes
Page 31 and 32: following categories of discovery r
Page 33 and 34: (a)(b)(c)(d)(e)Documents (e.g., con
Page 35: (b)(c)Recent discovery of material,
Page 41 and 42: consent or object. Non-exhaustive e
Page 43: (e) Whether any party proposes to c

ACC and IP Committee Letter regarding IPR and PGR

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