1. SCOPE OF LOCAL PATENT RULES

101.1 Citation.

These are the Local Patent Rules for the United States District Court for the Southern District of Ohio. They should be cited as “S. D. Ohio Pat. R.” followed by the applicable rule number and subsection.

101.2 Application, Effective Date and Construction.

These Local Patent Rules shall take effect on June 1, 2010 (the “Effective Date”) and shall apply to (1) each civil action filed in this Court on or after the Effective Date, which alleges infringement of a utility patent in a complaint, counterclaim, cross-claim, or third party-claim, or which seeks a declaratory judgment that a utility patent is not infringed, is invalid, or is unenforceable (“Patent Case”), (2) each pending Patent Case filed in or transferred to this Court if the initial Fed. R. Civ. P. 26(f) scheduling conference has not yet occurred prior to the Effective Date, and (3) all other pending patent cases if just and practicable.
The Court, or the parties with Court approval, may accelerate, extend, eliminate, or modify the obligations or deadlines set forth in these Local 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 S. D. Ohio Pat. R. 105.5 raises claim construction issues, the Court may defer the motion until after completion of the disclosures, filings, or ruling following the Claim Construction Hearing.
The Local Civil Rules of this Court shall also apply to these actions, except to the extent that the Local Civil Rules are inconsistent with these Local Patent Rules.

2. GENERAL PROVISIONS

102.1 Governing Procedure.

(a) Initial Scheduling Conference. 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(f), the parties shall discuss and address in the statement:

(1) Proposed modification of the deadlines provided for in these Local Patent Rules and the effect of any such modification on the date and time of the Claim Construction Hearing, if any;

(2) The scheduling of a Pre-Hearing Conference after the filing of the parties’ opening claim construction briefs to address the format of the claim construction hearing, including such issues as whether the Court will hear live testimony, the estimated length of the hearing, and whether the parties intend to present a tutorial; and

(3) Whether the parties are willing to consent to plenary magistrate judge jurisdiction under 28 U.S.C. § 636(c).

(b) Further Scheduling Conferences. To the extent that some or all of the matters provided for in S. D. Ohio Pat. R. 102.1(a)(1)-(3) are not resolved or decided at the Initial Scheduling Conference, the parties shall propose dates for further Scheduling Conferences at which such matters shall be decided.

102.2 Confidentiality/Default Protective Order.

The Default Protective Order attached as Appendix A automatically governs the production of any documents or information in a Patent Case unless the Court enters an alternative Protective Order.

102.3 Admissibility of Disclosures.

The statements or disclosures provided for in S. D. Ohio Pat. R. 105.1 and 105.2 are not admissible for any purpose other than in connection with: (1) motions seeking an extension or modification of the time periods within which actions contemplated by these Local Patent Rules must be taken; (2) motions for sanctions and/or attorney’s fees; and (3) motions brought pursuant to 35 U.S.C. § 285.

102.4 Meet and Confer Requirement.

In addition to any Local Rule requirements of this Court, every motion relating to the parties’ obligations under these rules must include a statement that the parties met and conferred in person or by telephone in order to resolve the dispute by agreement or at least narrow the issues.

102.5 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 Local Patent Rules. A party may object, however, 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 these Local Patent Rules:

(1) Requests seeking to elicit a party’s claim construction position;

(2) Requests seeking to elicit from the patent holder a comparison of the asserted claims and the accused apparatus, product, device, process, method, act, or other instrumentality;

(3) Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art; or

(4) Requests seeking to elicit from an accused infringer the identification of any opinions of counsel and documents that the accused infringer intends to rely upon as a defense to an allegation of willful infringement.

Where a party 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 Local Patent Rules, unless there exists another legitimate ground for objection.

3. INITIAL DISCLOSURES

103.1 Initial Disclosures.

(a) Not later than fourteen (14) days before the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Fed. R. Civ. P. 26(a)(1) (“Initial Disclosures”).

(b) Not later than fourteen (14) days after the Initial Scheduling Conference, the patent holder shall produce or make available for inspection and copying:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, third party or joint development agreements, and any non-privileged correspondence relating to such items and circumstances) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, a sale of or offer to sell or other manner of transfer, a product, system, or process embodying the claimed invention prior to the application date of 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;

(2) All documents created on or before the application date of the patent in suit that show the conception, reduction to practice, design, or development of each claimed invention;

(3) Documents evincing timing, places, parties, or circumstances regarding any known use (whether the use was commercial, public, confidential, third-party, or otherwise) of any product, system, or process embodying the claimed invention prior to the application date of the patent in suit;

(4) All communications to or from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based; and

(5) All assignment and licensing documents supporting a party’s standing to sue.

The producing party shall separately identify by production number which documents correspond to each category.

103.2 Disclosure of Asserted Claims and Infringement Contentions.

(a) Not later than thirty (30) days after the Initial Scheduling Conference, the patent holder claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and Infringement Contentions.” The “Disclosure of Asserted Claims and Infringement Contentions” shall contain the following information:

(1) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsection of 35 U.S.C. § 271 asserted;

(2) Separately for each asserted claim, the identity of each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party claiming infringement is currently aware. This identification shall be as specific as possible. Each product, device, and apparatus must be identified by name, if known, or by any product, device, or apparatus that, when used, allegedly results in the practice of the claimed method or process;

(3) A chart or charts identifying specifically where each element of each asserted claim is found within each Accused Instrumentality. Such chart or charts shall include for each element that such party contends is governed by 35 U.S.C. § 112, paragraph 6, a description of the claimed function of that element and the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;

(5) For each claim that 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;

(6) For any patent that claims priority to an earlier application, the stated priority date to which each asserted claim allegedly is entitled (the Stated Priority Date), and if the patent is the result of a continuation-in-part application or claims priority from a continuation-in-part application a chart shall be provided stating the Stated Priority Date for each element of each asserted claim; and

(7) 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.

(b) With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming patent infringement shall supplement its Initial Disclosures, if necessary, based upon the Initial Disclosures of the opposing party.

103.3 Disclosure of Non-Infringement Discovery.

Not later than thirty (30) days after the S. D. Ohio Pat. R. 103.2 Disclosure of Asserted Claims and Infringement Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying: source code, specifications, schematics, flow charts, white-papers, manuals, artwork, formulas, drawings, or other documentation, including sales literature, showing the operation of any aspects or elements of each accused apparatus, product, device, process, method, or other instrumentality identified in the Section 103.2 Disclosure of Asserted Claims and Infringement Contentions.

103.4 Invalidity Contentions.

(a) Not later than forty-five (45) days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions” pursuant to S. D. Ohio Pat. R. 103.2, each party opposing a claim of patent infringement shall serve upon all parties its “Invalidity Contentions.” Invalidity Contentions must contain the following information:

(1) 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, to the extent known, by its title, date of publication, author, and publisher. Prior art under 35 U.S.C. § 102(b) shall be identified by specifying the item offered for sale, 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 that made the use or that made and received the offer, or the person or entity that made the information known or to whom it was made known. Prior art under 35 U.S.C. § 102(f) shall be identified by providing the name of the persons from whom and the circumstances under which the invention or any part of it was derived. 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 applicants;

(2) Whether each item of prior art allegedly anticipates each asserted claim or renders it obvious. If a combination of items of prior art allegedly makes a claim obvious, each such combination and why it was obvious to make such combination must be identified;

(3) 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, paragraph 6, a description of the claimed function of that element and the identity of the structure(s), act(s), or material(s) in each item of prior art that perform(s) the claimed function; and

(4) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112, paragraph 2 or enablement or written description under 35 U.S.C. § 112, paragraph 1 of any of the asserted claims.

103.5 Document Production Accompanying Invalidity Contentions.

With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall produce all non-privileged documents and/or make available for inspection all products, devices, processes, or evidence not readily reproducible that support its “Invalidity Contentions,” including, but not limited to, a copy of each item of prior art that allegedly anticipates each asserted patent and its related claims or renders them obvious.

103.6 Disclosure Requirements in Patent Cases Initiated by Declaratory Judgment Pleading.

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, S. D. Ohio Pat. R. 103.2 shall not apply unless and until a claim for patent infringement is made by a party. If a claim for patent infringement is not raised in an answer to the declaratory judgment pleading no later than thirty (30) days after the Initial Scheduling Conference, the party seeking a declaratory judgment of invalidity must serve upon each opposing party its Invalidity Contentions that conform with S. D. Ohio Pat. R. 103.4 and produce or make available for inspection and copying the documentation described in S. D. Ohio Pat. R. 103.5.

103.7 Amendment to Contentions.

Amendment of the Infringement Contentions or the Invalidity Contentions are permissible only with leave of Court. A party may obtain leave of Court only where there is no undue prejudice to the parties and the party seeking amendment acts in good faith. Non-exhaustive examples of circumstances supporting amendment include: information discovered or confirmed during fact discovery; information discovered, confirmed, or provided by a party’s consultant or expert after the party’s contentions have been served; new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; information learned from or positions taken by another party during the exchange-of-contentions process set forth in S. D. Ohio Pat. R. 103; information learned from or positions taken by another party during the claim construction process set forth in S. D. Ohio Pat. R. 105; and rulings made by the Court, such as the Court’s Claim Construction Order.

103.8 Discovery Regarding Contentions.

These rules specifically allow for reasonable discovery of other possible infringing activities or invalidating grounds beyond the contentions identified by the patent holder in the Disclosure of Asserted Claims and Infringement Contentions or the accused infringer in the Invalidating Contentions.

(4) Whether each element of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality, and if present under the doctrine of equivalents, the asserting party shall also explain each function, way, and result that it contends is equivalent, and why it contends that any differences are not substantial;

4. ALTERNATIVE DISPUTE RESOLUTION

104.1 Required Settlement Conference.

In addition to any Local Rule requirements of this Court, not later than thirty (30) days after the Invalidity Contentions are served, counsel and a party representative with full settlement authority for each of the parties to the action shall meet to discuss possible mediation or arbitration regarding the claims and defenses pending in the action.

5. CLAIM CONSTRUCTION PROCEEDINGS

105.1 Exchange of Proposed Claim Terms and Phrases for Construction.

Not later than fourteen (14) days after either service of the Invalidity Contentions pursuant to S. D. Ohio Pat. R. 103.4 or 103.6 or the time for completing such service if no invalidity contentions are filed, the parties shall simultaneously exchange lists of claim terms and phrases that each party contends should be construed by the Court and identify any claim element that each party contends should be governed by 35 U.S.C. § 112, paragraph 6.

105.2 Exchange of Preliminary Claim Constructions and Extrinsic Evidence and the Development of Joint Claim Construction and the Prehearing Statement.

(a) Not later than twenty-one (21) days after the S. D. Ohio Pat. R. 105.1 exchange, the party asserting that a claim term or phrase needs to be construed by the Court (the “Asserting Party”) shall provide all other parties (the “Receiving Party”) with a proposed Preliminary Claim Construction of each such term or phrase. Each such Preliminary Claim Construction shall also, for each term or phrase that the Asserting Party contends is governed by 35 U.S.C. § 112, paragraph 6, identify the structure(s), act(s), or material(s) corresponding to the function of that term or phrase. The Asserting Party shall 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 lay 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, the Asserting Party shall also provide a general description of the substance of that witness’ proposed testimony that includes a list of any opinions to be rendered in connection with claim construction.

(b) Not later than forty (40) days after the S. D. Ohio Pat. R. 105.1 exchange, each Receiving Party shall provide all other parties with a proposed responsive Preliminary Claim Construction of each term or phrase originally construed by the Asserting Party. Each such Preliminary Claim Construction shall also, for each term or phrase that the Receiving Party contends is governed by 35 U.S.C. § 112, paragraph 6, identify the structure(s), act(s), or material(s) corresponding to the function of that term or phrase. The Receiving Party shall 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 lay 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, the Receiving Party shall also provide a general description of the substance of that witness’ proposed testimony that includes a list of any opinions to be rendered in connection with claim construction.

(c) Not later than sixty (60) days after the S. D. Ohio Pat. R. 105.1 exchange, the parties shall meet and confer (i) 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; (ii) for the purposes of jointly identifying no more than ten (10) terms likely to be most significant to resolving the parties’ dispute, including those terms for which construction may be case or claim dispositive; (iii) regarding whether the parties will present live testimony at the Claim Construction Hearing; (iv) regarding whether the parties anticipate using expert witnesses for claim construction; (v) regarding the need for and any specific procedures or limits on discovery relating to claim construction, including depositions of witnesses; and (vi) regarding the order of presentation at the Claim Construction Hearing.

(d) Not later than eighty (80) days after the S. D. Ohio Pat. R. 105.1 exchange, the parties shall submit to the Court a Joint Claim Construction and Prehearing Statement, which shall contain the following information:

(i) The construction of those terms or phrases on which the parties agree;

(ii) Each party’s proposed construction of each disputed term or phrase, 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, dictionary definitions, citations to learned treatises and prior art, and testimony of lay and expert witnesses;

(iii) An identification of the terms or phrases the construction of which will be most significant to the resolution of the case up to a maximum of ten (10). If the parties cannot agree on the ten (10) most significant terms, the parties shall identify the ones that they do agree are most significant and then they shall evenly divide the remainder with each party identifying what it believes are the remaining most significant terms. The total terms identified by all parties as most significant cannot exceed ten (10) unless a party obtains leave of Court pursuant to S.D. Ohio Pat. R. 101.2 to modify this limitation. For example, in a case involving two (2) parties, if the parties agree upon the identification of five (5) terms as most significant, each may only identify two (2) additional terms as most significant; if the parties agree upon eight (8) such terms, each party may identify only one (1) additional term as most significant;

(iv) The anticipated length of time necessary for the Claim Construction Hearing; and

(v) Whether any party proposes to call one or more witnesses at the Claim Construction Hearing, the identity of each such witness, and for each witness, a general summary of his or her testimony, including for any expert, each opinion to be offered related to claim construction.

The Joint Claim Construction and Prehearing Statement shall be in the format indicated in Appendix “B.” Each party shall also file with the Joint Claim Construction and Prehearing Statement an appendix containing a copy of each exhibit of intrinsic evidence cited by the party in the Joint Claim Construction and Prehearing Statement.

105.3 Completion of Claim Construction Discovery.

Not later than sixty (60) 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 identified in the Joint Claim Construction and Prehearing Statement.

105.4 Claim Construction Briefing and Extrinsic Evidence.

(a) Not later than seventy-five (75) days after filing of the Joint Claim Construction and Prehearing Statement pursuant S. D. Ohio Pat. R. 105.2, each party shall serve and file an Opening Claim Construction Brief concerning the proposed construction of each claim term or phrase that the parties have identified as being in dispute in each patent. Such Opening Claim Construction Brief shall also, for each element that a party contends is governed by 35 U.S.C. § 112, paragraph 6, describe the claimed function of that element and identify the structure(s), act(s), or material(s) corresponding to that element.

(b) Not later than thirty (30) days after service of the Opening Claim Construction Brief, each party may serve and file a Response to Opening Claim Construction Brief. Such Response shall include a statement not to exceed five (5) pages as to whether and why the party objects to any other party’s offer of extrinsic evidence.

6. EXPERT WITNESSES

106.1 Disclosure of Experts and Expert Reports.

Expert witness disclosures and depositions, other than those related to claim construction, shall be governed by this Rule.

(a) No later than thirty (30) days after the Court’s ruling on claim construction, each party shall make its initial expert witness disclosures required by Fed. R. Civ. P. 26 on the issues on which each bears the burden of proof.

(b) No later than thirty (30) days after the disclosures required by S. D. Ohio Pat. R. 106.1(a), each party shall make its initial expert witness disclosures required by Fed. R. Civ. P. 26 on the issues on which the opposing party bears the burden of proof.

(c) Unless otherwise ordered by the Court, no later than fourteen (14) days after the disclosures required by S. D. Ohio Pat. R. 106.1(b), each party shall make any rebuttal expert witness disclosures permitted by Fed. R. Civ. P. 26.

106.2 Depositions of Experts.

Depositions of expert witnesses disclosed under S. D. Ohio Pat. R. 106.1 shall commence within fourteen (14) days after rebuttal reports are served and shall be completed within sixty (60) days after commencement of the deposition period.

7. TRIALS AND WILLFUL INFRINGEMENT

107.1 Timing of Trial.

Subject to the convenience of the Court’s calendar, within eighteen (18) months following the Initial Scheduling Conference, the Court shall conduct a trial on all issues except willful infringement.

107.2 Willful Infringement.

After the Court has filed a judgment in which a patent holder has prevailed against an accused infringer on at least one claim in the Patent Case and all other claims of infringement and the accused infringer’s legal and equitable defenses have been fully adjudicated, a scheduling conference will take place within fourteen (14) days to establish a scheduling order setting forth an accelerated schedule for the completion of fact and expert discovery on the issue of willful infringement.

107.3 Stay on Willfulness Discovery

Discovery of any attorney-client or work product privileged documents, information, or testimony related to willful infringement in a Patent Case by an accused infringer is automatically stayed in the Patent Case until the patent holder has obtained a judgment of patent infringement in the Patent Case against the accused infringer on at least one claim and all other claims of infringement and the accused infringer’s legal and equitable defenses have been fully adjudicated.