1. SCOPE OF RULES

LPR 1.1 AUTHORITY

The Local Patent Rules for the United States District Court for the Western District of Pennsylvania are promulgated as authorized by and subject to the limitations of Federal Rule of Civil Procedure 83.

LPR 1.2 CITATION

These are the Local Rules of Practice for Patent Cases before the United States District Court for the Western District of Pennsylvania. They should be cited as “LPR,” followed by the applicable rule number and subsection.

LPR 1.3 APPLICATION AND CONSTRUCTION

These rules apply to all civil actions filed in or transferred to this Court that allege infringement of a utility patent in a complaint, counterclaim, cross-claim or third party claim, or that seek a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. The Court 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 LPR 4.4 raises claim construction issues, the Court may, for good cause shown, 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 they are inconsistent with these Local Patent Rules.

LPR 1.4 EFFECTIVE DATE

These Local Patent Rules shall take effect on December 5, 2015 and shall apply to any case filed thereafter. The parties to any other pending civil action in which the infringement, validity, or enforceability of a utility patent is an issue shall meet and confer promptly after December 5, 2015, for the purpose of determining whether any provisions in these Local Patent Rules should be made applicable to that case. No later than seven (7) calendar days after the parties meet and confer, the parties shall file a stipulation setting forth a proposed order that relates to the application of these Local Patent Rules. Unless and until an order is entered applying these Local Patent Rules to any pending case, the Local Civil Rules and Local Patent Rules previously applicable to pending patent cases shall govern.

LPR 1.5 ALTERNATIVE DISPUTE RESOLUTION

Unless the Court orders otherwise, the default form of alternative dispute resolution in any case governed by these Local Patent Rules shall be Early Neutral Evaluation, which shall occur in accordance with the timing and procedures stated in the ADR Policies and Procedures, as adopted by the Board of Judges for the United States District Court for the Western District of Pennsylvania. See, e.g., ¶ 4.4.B ADR Policies & Procedures (W.D. Pa.) (found at http://www.pawd.uscourts.gov/Applications/pawd_adr/Documents/ADRPolicies.p df) However, if all parties (1) mutually agree to employ some other form of alternative dispute resolution, such as Mediation or Arbitration, and (2) mutually agree to the timing therefor, then, unless the Court orders otherwise, the deadline for completing such Mediation or Arbitration shall be 60 calendar days after the Court’s decision on claim construction.

2. GENERAL PROVISIONS

LPR 2.1 GOVERNING PROCEDURE

(a) Planning Meeting and Report.
When the parties confer with each other pursuant to Federal Rule of Civil Procedure 26(f), in addition to the matters covered by Federal Rule of Civil Procedure 26, the parties must discuss and address in the statement filed pursuant to Federal Rule of Civil Procedure 26(f), the following topics:

(1) Proposed modification of the deadlines provided for in these Local Patent Rules and/or set forth in the Court’s Scheduling Order (see Model Scheduling Order at “Appendix LPR 2.1″ for types of deadlines that might be included) and the effect of any such modification on the date and time of the Claim Construction Hearing, if any;
(2) Whether the parties believe that appointment of a special master may be helpful to the parties and the Court and if so, the joint nomination of a special master to be appointed in the case for purposes of claim construction, based upon mutual agreement of the parties;
(3) Any anticipated motions or proceedings that might affect the deadlines set by these Local Patent Rules, including motions for preliminary injunction; to add or substitute parties; to consolidate; or to stay due to any currently known related, concurrent, or intended patent office proceedings, ITC proceedings, or court cases;
(4) Any issues that might be the proper subject of an early motion for summary judgment or partial summary judgment;
(5) The format of the Claim Construction Hearing, including whether the Court will hear live testimony at the Claim Construction Hearing, the order of presentation, and the estimated length of the hearing;
(6) Whether the parties should provide a tutorial to the Court concerning the technology at issue, including the format and timing of such tutorial;
(7) The need for and any specific procedures or limits on discovery relating to claim construction, including depositions of witnesses, including expert witnesses;
(8) Whether parties are willing to go to trial in front of a Magistrate Judge;
(9) Whether the parties request a claim construction status conference to be held after the Joint Disputed Claim Terms Chart and Prehearing Statement provided for in LPR 4.2 has been filed, and
(10) The form(s) of alternative dispute resolution (Early Neutral Evaluation, Arbitration, or Mediation) that will be utilized in the case, along with the following information:

• the joint nomination of the neutral(s) to be appointed by the Court for purposes of alternative dispute resolution, based upon mutual agreement of the parties;
• percentage of payment responsibility by each party for any fees and expenses associated with the neutral(s);
• the date(s) on which the selected form of alternative dispute resolution will occur; and
• identification of each party representative(s) who will attend the selected alternative dispute resolution session(s).

(b) Initial Scheduling Conference.
In addition to the items in section (a) above, each party should be prepared to discuss the technology at issue during the initial scheduling conference. This includes the general technology at issue, the patent(s) in suit, and each accused apparatus, product, device, process, method, act or other instrumentality of each opposing party that is accused of infringing (“Accused Instrumentality”). In addition to the foregoing, each party is expected to bring a sample or representation (e.g., photographs, video, specification, etc.) of each Accused Instrumentality, if possible. Finally, each party should be prepared for a preliminary discussion on damages.
(c) Further Scheduling Conferences.
To the extent that some or all of the matters provided for in LPR 2.1 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 addressed.

LPR 2.2 CONFIDENTIALITY

(a) Automatic Protective Order
All documents or information produced under these Local Patent Rules shall be governed by the terms and conditions of the Protective Order in “Appendix LPR 2.2.” Such Protective Order shall be deemed automatically entered upon the filing or transfer of any civil action to which these Local Patent Rules apply pursuant to LPR 1.3, unless otherwise modified by agreement of the parties or Order of Court.
(b) Additional Model Language
Appendix LPR 2.2a contains model language for additional provisions for the Protective Order. This language is provided for consideration by the Court and the parties should the circumstances warrant inclusion of such additional provisions in the Protective Order.

LPR 2.3 CERTIFICATION OF INITIAL DISCLOSURES

All statements, disclosures, or charts filed or served in accordance with these Local Patent Rules must be dated and signed by counsel of record (or by the party if unrepresented by counsel). Pursuant to Rules 11 and 26(g) of the Federal Rules of Civil Procedure, counsel’s signature (or the signature of the unrepresented party) 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.

LPR 2.4 ADMISSIBILITY OF DISCLOSURES

Except as hereinafter provided, statements, disclosures, or charts governed by these Local Patent Rules are admissible to the extent permitted by the Federal Rules of Evidence or Civil Procedure. However, the statements or disclosures provided for in LPR 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 Local Patent Rules must be taken, or concerning the scope, length, or substance of the Claim Construction proceedings set forth in LPR 4.3 and 4.4.

LPR 2.5 RELATIONSHIP TO FEDERAL RULES OF CIVIL PROCEDURE

(a) Objections on Grounds of Prematurity
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 Federal Rule of Civil Procedure 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 Federal Rule of Civil Procedure 26(a)(1)) on the ground that they are premature in light of the timetable provided in the Local Patent Rules:

(1) Requests seeking to elicit a party’s claim construction position. See LPR 4.1-4.3;
(2) Requests seeking to elicit from the patent claimant a comparison of the asserted claims and the accused apparatus, device, process, method, act, or other instrumentality. See LPR 3.2-3.3;
(3) Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art. See LPR 3.4-3.5; and
(4) Requests seeking to elicit the identification of any advice of counsel, and related documents. See LPR 3.9.

Where a party properly objects to a discovery request (or declines to provide information in its initial disclosures under Federal Rule of Civil Procedure. 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.
The parties are reminded that the obligations under Federal Rule of Civil Procedure 26(e) to supplement disclosure and discovery responses shall apply to all Patent Initial Disclosures and all other discovery responses associated with these Local Patent Rules.

3. PATENT INITIAL DISCLOSURES

Not later than fourteen (14) days after the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Federal Rule of Civil Procedure. 26(a)(1) (“Initial Disclosures”) and shall exchange the documents specified below, subject to the terms of the Protective Order as set forth in LPR 2.2.
With the Initial Disclosures of the party asserting a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

All Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreement, 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 other manner of transfer, the claimed invention prior to the date of application for 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;
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 a priority date otherwise identified for the patent in suit, whichever is earlier;
All documents evidencing communications to and from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based; and
All documents evidencing ownership of the patent rights by the party asserting patent infringement.

The producing party shall separately identify by production number which documents correspond to each category.
With the Initial Disclosures of the party opposing a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

Source code, specifications, schematics, flow charts, artwork, formulas, drawings and/or other documentation, including sales literature, sufficient to show the operation of any aspects or elements of each accused apparatus, product, device, process, method or other accused instrumentality identified with specificity in the pleading of the party asserting patent infringement; and
A copy of each item of prior art, of which the opposing party is aware, that allegedly anticipates each asserted patent and its related claims or renders them obvious.

LPR 3.1 INITIAL DISCLOSURES

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”).

With the Initial Disclosures of the party asserting a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

All Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreement, 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 other manner of transfer, the claimed invention prior to the date of application for 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;

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 a priority date otherwise identified for the patent in suit, whichever is earlier; and

All documents evidencing communications to and from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based.

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

With the Initial Disclosures of the party opposing a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

Source code, specifications, schematics, flow charts, artwork, formulas, drawings or other documentation, including sales literature, sufficient to show the operation of any aspects or elements of each accused apparatus, product, device, process, method or other instrumentality identified in the claims pled of the party asserting patent infringement; and

A copy of each item of prior art, of which the opposing party is aware, that allegedly anticipates each asserted patent and its related claims or renders them obvious.

LPR 3.2 DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS

(a) Timing
Not later than thirty (30) calendar days after the Initial Scheduling Conference, a party claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and Infringement Contentions.”
(b) Asserted Claims and Infringement Contentions
Separately for each opposing party, 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;
(2) 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 claiming infringement is 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 which, when used, allegedly results in the practice of the claimed method or process;
(3) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6) [or 35 U.S.C. § 112(f) for patents having an effective date after March 16, 2013], 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;
(4) Whether each element of each asserted claim is claimed 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 are equivalent, and why it contends that any differences are not substantial;
(5) 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(s) that contribute to or that are inducing direct infringement;
(6) To the extent any alleged direct infringement is based on the joint acts of multiple parties, an identification of each such party and a description of the relevant role of each such party;
(7) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled;
(8) 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 and;
(9) If a party claiming patent infringement alleges willful infringement, the bases for such allegation.
(10) Nothing in this provision shall be construed to modify any party’s pleading obligations under the Federal Rules of Civil Procedure.

LPR 3.3 DOCUMENT PRODUCTION ACCOMPANYING DISCLOSURE

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

LPR 3.4 NON-INFRINGEMENT AND/OR INVALIDITY CONTENTIONS

(a) Timing
Not later than fourteen (14) calendar days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party asserting non- infringement and/or invalidity of a patent, shall serve upon all parties its “Non- Infringement and/or Invalidity Contentions.”
(b) Non-Infringement Contentions
Non-Infringement Contentions shall contain a chart, responsive to the chart required by LPR 3.2, that states as to each identified element in each asserted claim, whether such element is present literally or under the doctrine of equivalents in each Accused Instrumentality, and, if denied, the specific reasons for such denial.
(c) 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 must be identified by its title, date of publication, and where feasible, author and publisher.
(2) With respect to prior art that anticipates any asserted claim, the facts, documents, witnesses, entities and times that establish that an asserted claim was, before the applicable priority date, patented, described in a printed publication, known, on sale, in public use, otherwise available to the public, derived from another, or is otherwise invalid according to the applicable provisions of § 102.
(3) With respect to a combination of items of prior art that allegedly make a claim obvious, each such combination, and the reasons a person of ordinary skill in the art would combine such items.
(4) A chart identifying where specifically in each alleged item of prior art each element of each challenged claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6) [or 35 U.S.C. § 112(f) for patents having an effective date after March 16, 2013], 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 performs the claimed function.
(5) A detailed explanation of any grounds of invalidity of any of the asserted claims based on ineligible subject matter under 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112, or enablement or written description under 35 U.S.C. § 112.

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 must be identified by its title, date of publication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) 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. 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. 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);
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 the motivation to combine such items, must be identified;
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(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 performs the claimed function; and
Any grounds of invalidity based on 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.

LPR 3.5 DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY CONTENTIONS

With the “Non-infringement and/or Invalidity Contentions,” the party asserting non-infringement and/or invalidity of a patent shall supplement its Initial Disclosures and, in particular, must produce or make available for inspection and copying:

Any additional documentation showing the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 3.2 chart; and
A copy of any additional items of prior art identified pursuant to LPR 3.4 that does not appear in the file history of the patent(s) at issue.

The party asserting non-infringement and/or invalidity of a patent shall also produce summary sales and/or use information reflecting the quantity of the Accused Instrumentality sold and/or used in the United States and the revenues from those sales and/or uses, to the extent known.

Any additional documentation showing the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 3.2 chart; and

A copy of any additional items of prior art identified pursuant to LPR 3.4 which does not appear in the file history of the patent(s) at issue.

LPR 3.6 GOOD FAITH DAMAGES ESTIMATE

Not later than fourteen (14) calendar days after production of the summary sales and use information set forth in LPR 3.5, the party asserting patent infringement shall serve upon the party asserting non-infringement a good faith estimate of its expected damages, including a summary description of the method used to arrive at that estimate. If such damages estimate is based upon a reasonable royalty, the party asserting patent infringement shall also produce any and all license agreements concerning each patent in suit and any related patent.

LPR 3.7 DISCLOSURE REQUIREMENT IN PATENT CASES INITIATED BY DECLARATORY JUDGMENT

(a) Non-infringement and/or Invalidity Contentions If No Claim of Infringement
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, LPR 3.2 and 3.3 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 thirty (30) calendar days after the Initial Scheduling Conference, the party seeking a declaratory judgment must serve upon each opposing party its Non-infringement and/or Invalidity Contentions that conform to LPR 3.4 and produce or make available for inspection and copying the documentation described in LPR 3.5.
(b) Application of Rules When No Specified Triggering Event
If the filings or actions in a case do not trigger the application of these Local Patent 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 Local Patent Rules to the case.
(c) Inapplicability of Rule
This LPR 3.7 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in response to a complaint for infringement of the same patent.

LPR 3.8 AMENDMENT TO CONTENTIONS

(a) Leave Not Required
Not later than twenty-one (21) days after entry of a Claim Construction Order, a party claiming patent infringement may amend, modify or supplement its Infringement Contentions without leave of Court if the Court adopts a claim construction different from that proposed by the party claiming patent infringement and that party believes, in good faith, that the claim construction necessitates the proposed amendment, modification or supplement. Not later than thirty-five (35) days after entry of a Claim Construction Order, a party opposing a claim of patent infringement may amend, modify or supplement its Invalidity and/or Non-Infringement Contentions without leave of Court if (1) a party claiming patent infringement amends, modifies or supplements its Infringement Contentions pursuant to this Rule or (2) the Court adopts a claim construction different from that proposed by the party opposing patent infringement and that party believes, in good faith, that the claim construction necessitates the proposed amendment, modification, or supplement.
(b) Leave Required
Except otherwise provided in LPR 3.8(a), any amendment, modification, or supplement of any Infringement or Non-Infringement and/or Invalidity Contentions may be made only by order of the Court or Court-approved stipulation of the parties. Leave may be granted if the motion is made in a timely fashion, for good cause, and without purpose of delay or undue prejudice to the non-moving party. Non-exhaustive examples of circumstances that may support a finding of good cause can include: information newly discovered, through due diligence, regarding an accused product or prior art; information discovered or provided by a party’s consultant or expert after a party’s contentions have been served; a new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; and information learned from or positions taken in the claim construction proceedings or in the exchange of contentions pursuant to LPR 3.2-3.7.

LPR 3.9 ADVICE OF COUNSEL

(a) Timing
Not later than 60 days prior to the close of fact discovery, as set forth in the Court’s Scheduling Order, any party relying upon advice of counsel as part of a patent-related claim or defense for any reason shall:

(1) 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;
(2) 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
(3) 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.

(b) Depositions
After such information becomes discoverable, an opposing party shall be entitled to take the deposition of any attorneys rendering the advice relied upon and any persons who received such advice, including but not limited to any person who claims to have relied upon such advice, subject to any limitations otherwise imposed by these Rules, the Federal Rules of Civil Procedure, or the Court’s Scheduling Order, and prior to the close of fact discovery, unless otherwise ordered by the Court.
(c) Failure to Comply
A party who does not comply with the requirements of this Rule shall not be permitted to rely upon advice of counsel for any purpose absent a stipulation of all parties, with approval by the Court, or otherwise by order of the Court.

4. CLAIM CONSTRUCTION PROCEEDINGS

LPR 4.1 EXCHANGE OF PROPOSED CLAIM TERMS AND PHRASES FOR CONSTRUCTION

(a) Exchange of Proposed Claim Terms and Phrases
Not later than fourteen (14) days after: (i) service of the Non-infringement and/or Invalidity Contentions pursuant to LPR 3.4; or (ii) an agreement of the parties to expedite claim construction following the Initial Scheduling Conference pursuant to LPR 2.1, each party shall simultaneously exchange a list of claim terms and phrases which that party contends should be construed by the Court, and identify any claim element which that party contends should be governed by 35 U.S.C. § 112(6) (pre-AIA) or 35 U.S.C. § 112(f) (AIA).
(b) Exchange of Proposed Constructions
Not later than fourteen (14) days after the exchange of the “Proposed Claim Terms and Phrases for Construction” pursuant to LPR 4.1(a), the parties shall simultaneously exchange a preliminary proposed construction of each claim term or phrase which the parties collectively have identified for claim construction purposes. Each such preliminary claim construction shall also, for each element which any party contends is governed by 35 U.S.C. § 112(6) (pre-AIA) or 35 U.S.C. § 112(f) (AIA), identify the structure(s), act(s), or material(s) corresponding to that element.

LPR 4.2 PREPARATION AND FILING OF JOINT DISPUTED CLAIM TERMS CHART AND PREHEARING STATEMENT

(a) Meet and Confer
Not later than seven (7) days after the exchange set forth in LPR 4.1(b), the parties shall meet and confer to identify claim terms and phrases that are in dispute, and claim terms and phrases that are not in dispute, and shall prepare and file a Joint Disputed Claim Terms Chart listing claim terms and phrases and corresponding intrinsic evidence for each disputed claim term and phrase, asserted by each party. Reasonable efforts shall be made by the parties to limit the terms in dispute by narrowing or resolving any differences between the respective constructions. The Joint Disputed Claim Terms Chart shall be in the format shown in “Appendix LPR 4.2.” Each party shall also file with the Joint Disputed Claim Terms Chart an appendix containing a copy of each exhibit of intrinsic evidence cited by the party in the Joint Disputed Claim Terms Chart.
(b) Prehearing Statement
At the same time, the parties shall jointly file a Prehearing Statement that contains the following information:

(1) The construction of those claim terms and phrases on which the parties agree;
(2) The anticipated length of time necessary for the Claim Construction Hearing; and
(3) Whether any party proposes to call one or more witnesses at the Claim Construction Hearing, the identity of each such witness, and for each such witness, a copy of his or her CV (if available) and a brief summary of his or her anticipated testimony.

LPR 4.3 CLAIM CONSTRUCTION BRIEFING AND EXTRINSIC EVIDENCE

(a) Opening Submission
Not later than thirty (30) calendar days after filing of the Joint Disputed Claim Terms Chart pursuant to LPR 4.2, the Plaintiff (including the Plaintiff alleging non-infringement in a declaratory judgment action), shall serve and file an Opening Claim Construction Brief including a proposed construction of each claim term and phrase which the parties collectively have identified as being in dispute. Notwithstanding the above, the parties may stipulate that the Defendant (including the Defendant alleging infringement in a declaratory judgment action) will serve and file the Opening Claim Construction Brief. Such Opening Claim Construction Brief shall also, for each element which the party contends is governed by 35 U.S.C. § 112(6) (pre-AIA) or 35 U.S.C. § 112(f) (AIA), describe the claimed function of that element and identify the structure(s), act(s), or material(s) corresponding to that element. For purposes of this rule, if there is no claim of patent infringement present in the complaint as originally filed, then the party first alleging infringement or non-infringement of the subject patent shall serve and file the Opening Claim Construction Brief.
At the same time the party serves its Opening Claim Construction Brief, that party shall serve and file an identification of extrinsic evidence, including testimony of lay and expert witnesses the party contends supports its claim construction. The party shall identify each such item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, lay or expert, the party shall also serve and file an affidavit signed by the witness that sets forth the substance of that witness’ proposed testimony sufficient for the opposing party to conduct meaningful examination of the witness(es) and promptly make the witness available for deposition concerning the proposed testimony.
(b) Responsive Submission
Not later than twenty-one (21) days after service of the Opening Claim Construction Brief, the opposing party shall serve and file a Response to Opening Claim Construction Brief including the party’s proposed construction of each claim term and phrase which the parties collectively have identified as being in dispute. Such Response shall also, for each element which the opposing party contends is governed by 35 U.S.C. § 112(6) (pre-AIA) or 35 U.S.C. § 112(f) (AIA), describe the claimed function of that element and identify the structure(s), act(s), or material(s) corresponding to that element. Such Response shall further include a concise statement not to exceed five (5) pages as to whether the party objects to the opening party’s offer of extrinsic evidence.
At the same time the opposing party serves its Response, that party shall serve and file an identification of extrinsic evidence, including testimony of lay and expert witnesses the party contends supports its claim construction. The party shall identify each such item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, lay or expert, the party shall also serve and file an affidavit signed by the witness that sets forth the substance of that witness’ proposed testimony sufficient for the opposing party to conduct meaningful examination of the witness(es) and promptly make the witness available for deposition concerning the proposed testimony.
(c) Reply Submission
Not later than fourteen (14) days after service of the Response, the opening party may serve and file a Reply directly rebutting the opposing party’s Response. Such Reply shall further include a concise statement not to exceed five (5) pages as to whether the party objects to the opposing party’s offer of extrinsic evidence. In the event the opposing party identifies a lay or expert witness whose testimony will support its claim construction, the date for the filing of a Reply Claim Construction Brief shall be extended by seven (7) calendar days.
(d) Surreply Submission
In the event that the party bearing the burden of proof on the issue of infringement is the party filing the Response, that party may file a Surreply directly rebutting the opposing party’s Reply without leave of Court. Such Surreply shall be filed no later than fourteen (14) days after the service of the Reply and shall not exceed five (5) pages.
(e) Status Conference
Prior to the Claim Construction Hearing, the Court may schedule a status conference or issue an order stating whether it will receive extrinsic evidence and, if so, the particular evidence that it will exclude and that it will receive, and any other matter the Court deems appropriate concerning the conduct of the hearing. Should the Court not conduct a conference or issue an order in advance of the Claim Construction Hearing, such matters will be addressed, as necessary, at the Hearing.

LPR 4.4 CLAIM CONSTRUCTION HEARING

Subject to the convenience of the Court’s calendar, promptly following submission of the Reply specified in LPR 4.3(c) [or the Surreply specified in LPR 4.3(d) if applicable], the Court shall conduct a Claim Construction Hearing.

LPR 4.5 SPECIAL MASTER REPORT AND RECOMMENDATION ON CLAIM CONSTRUCTION

If a Special Master for the purpose of claim construction is appointed, the Special Master shall be empowered to hold hearings and receive and report evidence on the issue of claim construction.
Unless otherwise ordered by the Court, within thirty (30) calendar days following the hearing on the issue of claim construction, the Special Master shall submit to the Court a report and recommendation on the issue of claim construction. Either party may file objections to — or a motion to adopt or modify — the Special Master’s report and recommendation, no later than fourteen (14) days from the time the Special Master’s report and recommendations are submitted. A party may file a response to such objection or motion within fourteen (14) days of the initial filing of such objection or motion.
The compensation to be paid to the Special Master shall be fixed and determined by the Court pursuant to Federal Rule of Civil Procedure 53(a). Unless otherwise ordered by the Court, the parties shall equally split the costs and fees for services rendered by the Special Master.

5. EXPERT WITNESSES

LPR 5.1 DISCLOSURE OF EXPERTS AND EXPERT REPORTS

For issues other than claim construction to which expert testimony shall be directed, expert witness disclosures and depositions shall be governed by this Rule.
No later than thirty (30) calendar days after (1) the normal close of discovery pursuant to the Court’s case management order, or (2) the Court’s ruling on claim construction, whichever is later, each party shall make its initial expert witness disclosures required by Rule 26 on the issues on which each bears the burden of proof.
No later than thirty (30) calendar days after the first round of disclosures, each party shall make its initial expert witness disclosures required by Rule 26 on the issues on which the opposing party bears the burden of proof.
Unless otherwise ordered by the Court, no later than fourteen (14) days after the second round of disclosures, each party shall make any rebuttal expert witness disclosures permitted by Rule 26.

LPR 5.2 DEPOSITIONS OF EXPERTS

Depositions of expert witnesses disclosed under this Rule, if any, shall commence within seven (7) calendar days after rebuttal reports are served and shall be completed within thirty (30) calendar days after commencement of the deposition period.