1. SCOPE.

1-1. Title.

This Order should be cited as “Miscellaneous Order No. 62,” followed by the applicable paragraph number.

1-2. Scope and Construction.

This Order applies to all civil actions filed in or transferred to the Dallas division of the Northern District of Texas that allege infringement of a utility patent in a complaint, counterclaim, cross-claim, or third party claim or seek a declaratory judgment that a utility patent is not infringed, is invalid, or is unenforceable. The presiding judge may accelerate, extend, eliminate, or modify the obligations or deadlines established in this Order based on the circumstances of any particular patent 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 paragraph 4-6 raises claim construction issues, the presiding judge 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 apply to these actions except to the extent they are inconsistent with this Order.

1-3. Effective Date.

This Order will take effect on May 1, 2007, and will apply to any Dallas division patent case filed on or after that date. It will also apply to any pending Dallas division patent case in which, on the date this Order takes effect, more than 9 days remain before the initial disclosure of asserted claims and preliminary infringement contentions required by paragraph 3-1 is due.
The parties to any other pending Dallas division patent case must meet and confer promptly after May I, 2007, to determine whether any provision in this Order should be made applicable to that case. No later than 7 days after the parties meet and confer, the parties must file a stipulation setting forth a proposed order that relates to the application of this Order. Unless and until the presiding judge enters an order applying this Order, the rules of practice previously applicable to these other pending Dallas division patent cases will govern.

2. GENERAL PROVISIONS

2-1. Governing Procedure.

(a) Initial Case Management Conference. Parties conferring with each other under Fed. R. Civ. P. 26(f) may attend the initial case management conference either in person or by telephone. In the case management statement filed under Fed. R. Civ. P. 26(f), the parties must address the matters required to be covered by Fed. R. Civ. P. 26, and the following additional matters:

(1) Proposed modification of the deadlines provided for in this Order, and the effect of any such modification on the date and time of the claim construction hearing, if any;

(2) Electronic discovery plan;

(3) The need for presenting technical tutorials to the presiding judge and the mode for presenting same;

(4) Deviations from and additions to the protective order (see Appendix A);

(5) Whether either party desires the presiding judge to hear live testimony at the claim construction hearing;

(6) The need for and any specific limits on discovery relating to claim construction, including depositions of witnesses, including expert witnesses;

(7) The order of presentation at the claim construction hearing;

(8) The scheduling of a claim construction prehearing conference between attorneys to be held after the filing of the joint claim construction and prehearing statement required by paragraph 4-3;

(9) Whether the presiding judge should authorize the filing under seal of any documents containing confidential information; and

(10) The need for any deviation from the ordinary practice of early and late mediations, as well as the potential dates for early and late mediations.

(b) Further Case Management Conferences. To the extent that some or all of the matters provided for in paragraph 2-I(a)(l)-(lO) are not discussed by the parties at the initial case management conference, the parties must propose dates for further case management conferences so that all matters required to be discussed are addressed in the case management statement.

2-2. Confidentiality.

All documents or information produced under this Order will be governed by the terms and conditions of the protective order (see Appendix A). The protective order will be deemed automatically entered upon the filing or transfer of any civil action to which this Order applies, unless the protective order is modified by agreement of the parties or by order of the presiding judge.

2-3. Certification of Initial Disclosures.

Each statement, disclosure, or chart filed or served in accordance with this Order must be dated and signed by the attorney of record. An attorney’s signature constitutes a certification that to the best of the attorney’s 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 this Order are admissible to the extent permitted by the Federal Rules of Evidence or Civil Procedure. However, the statements or disclosures provided for in paragraph 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 this Order must be taken.

2-5. Relationship to Federal Rules of Civil Procedure.

(a) Unless the presiding judge otherwise directs, the scope of discovery is not limited to the preliminary infringement contentions or preliminary invalidity contentions but is governed by the Federal Rules of Civil Procedure. Except as provided in this paragraph or as otherwise directed by the presiding judge, it will 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 under Fed. R. Civ. P. 26(a)(1) that the discovery request or disclosure requirement is premature in light of, or otherwise conflicts with, this Order. A party may object to the following categories of discovery requests (or may decline to provide information in its initial disclosures under Fed. R. Civ. P. 26(a)(I» on the ground that they are premature in light of the timetable provided in this Order:

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

(2) 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;

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

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

3. PATENT INITIAL DISCLOSURES

3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions.

(a) Not later than 14 days after the initial case management conference, a party claiming patent infringement must serve on each opposing party a disclosure of asserted claims and preliminary infringement contentions and file notice of such service with the clerk. The disclosure of asserted claims and preliminary infringement contentions must contain, separately for each opposing party, the following information:

(1) Each claim of each patent in suit that is allegedly infringed by each opposing party;

(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 is aware. This identification must be as specific as possible. Each product, device, and apparatus must be identified by name or model number, if known. Each method or process 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 identifying specifically and in detail 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), the identity of each structure, act, or material 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;

(5) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and

(6) 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) Failure to comply with the requirements of this paragraph, including the requirement of specificity and detail in contending infringement, may result in appropriate sanctions, including dismissal.

3-2. Document Production Accompanying Disclosure.

(a) In addition to serving the disclosure of asserted claims and preliminary infringement contentions, the party claiming patent infringement must produce or make available for inspection and copying to each opposing party:

(1) 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, the claimed invention prior to the date of application for the patent in suit. A party’s production of a document as required by this paragraph does not constitute an admission that the document evidences or is prior art under 35 U.S.C. § 102;

(2) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, that were created on or before the date of application for the patent in suit or the priority date identified under paragraph 3- 1(a)(5), whichever is earlier; and

(3) A copy of the file history for each patent in suit.

(b) The producing party must separately identify by production number which documents correspond to each category.

3-3. Preliminary Invalidity Contentions.

(a) Within 45 days from the date the party claiming patent infringement serves the disclosure of asserted claims and preliminary infringement contentions on all opposing parties, each party opposing a claim of patent infringement must serve on all other parties its preliminary invalidity contentions and file notice of such service with the clerk. The preliminary 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 must 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, when feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) must 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 that made the use or 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) must be identified by providing the name of each person 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) must be identified by providing the identity of each person or entity involved in and the circumstances surrounding the making of the invention before the patent applicant;

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

(3) A chart identifying where specifically and in detail in each alleged item of prior art each element of each asserted claim is found, including for each element that the party contends is governed by 35 U.S.C. § 112(6), the identity of the structure, act, or material in each item of prior art that performs the claimed function; and

(4) 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.

(b) Failure to comply with the requirements of this paragraph, including the requirement of specificity and detail, may result in appropriate sanctions.

3-4. Document Production Accompanying Preliminary Invalidity Contentions.

At the time the preliminary invalidity contentions are served on all opposing parties, the party opposing a claim of patent infringement must also produce or make available for inspection and copying to all opposing parties:

(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 paragraph 3-I(a)(3) chart; and

(b) A copy of each item of prior art identified under paragraph 3-3(a)(l) that does not appear in the file history of each patent at issue. To the extent any such item is not in English, an English translation of each portion relied upon must be produced.

3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment.

(a) 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, paragraph 3-1 and 3-2 will 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, then no later than 14 days after the defendant files its answer, or 14 days after the initial case management conference, whichever is later, the party seeking a declaratory judgment must serve upon each opposing party its preliminary invalidity contentions that conform to paragraph 3-3 and produce or make available for inspection and copying by all opposing parties the documentation described in paragraph 3-4. The parties must meet and confer within 14 days of the service of the preliminary invalidity contentions for the purpose of determining the date the plaintiff will file its final invalidity contentions, which must be filed within 50 days from the date the presiding judge’s claim construction ruling is filed.

(b) Application of Rules When No Specified Triggering Event. If the filings or actions in a Dallas division patent case do not trigger the application of this Order, then as soon as this is known, the parties to the patent case must meet and confer for the purpose of agreeing on the application of this Order to the patent case.

(c) Inapplicability. This paragraph does not apply to a Dallas division patent case 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.

3-6. Final Contentions.

Each party’s preliminary infringement contentions and preliminary invalidity contentions will be deemed to be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement believes in good faith that the presiding judge’s claim construction ruling so requires, that party may serve final infringement contentions without leave of court that amend the party’s preliminary infringement contentions with respect to the information required by paragraph 3-1(a)(3) and (4) within 30 days from the date the presiding judge’s claim construction ruling is filed.

(b) Within 50 days from the date the presiding judge’s claim construction ruling is filed, each party opposing a claim of patent infringement may serve its final invalidity contentions without leave of court that amend its preliminary invalidity contentions with respect to the information required by paragraph 3-3 if:

(1) a party claiming patent infringement has served its final infringement contentions under paragraph 3-6(a), or

(2) the party opposing a claim of patent infringement believes in good faith that the presiding judge’s claim construction ruling so requires.

3-7. Amendment to Contentions.

Amendment of the preliminary or final infringement contentions or the preliminary or final invalidity contentions, other than as expressly permitted in paragraph 3-6, may be made only by order of the presiding judge upon a showing of good cause. Good cause for the purposes of this paragraph may include newly discovered accused instrumentalities, newly discovered bases for claiming infringement, or newly discovered prior art references. A party seeking amendment of the preliminary or final infringement contentions or the preliminary or final invalidity contentions must include in its motion to amend a statement that the newly discovered accused instrumentalities, newly discovered bases for claiming infringement, or newly discovered prior art references were not known to that party prior to the motion despite diligence in seeking out same.

3-8. Willfulness.

(a) By the date established in the scheduling order, each party opposing a claim of patent infringement that will rely on an opinion of an attorney as part of a defense to a claim of willful infringement must:

(1) Produce or make available for inspection and copying each opinion and any other documents relating to the opinion as to which the party agrees the attorney-client or work product protection has been waived; and

(2) Serve a privilege log identifying any other documents, except those authored by an attorney acting solely as trial counsel, relating to the subject matter of the opinion the party is withholding on the grounds of attorney-client privilege or work product protection.

(b) A party opposing a claim of patent infringement who does not comply with the requirements of this paragraph will not be permitted to rely on an opinion of an attorney as part of a defense to willful infringement absent a stipulation of all parties or by order of the presiding judge upon a showing of good cause.

4. CLAIM CONSTRUCTION PROCEEDINGS

4-1. Exchange of Proposed Terms and Claim Elements for Construction.

(a) Not later than 14 days after service of the preliminary invalidity contentions under paragraph 3-3, each party must simultaneously exchange a list of claim terms, phrases, or clauses that the party contends should be construed by the presiding judge, and any claim element that the party contends should be governed by 35 U.S.C. § 112(6).

(b) After exchanging this list, the parties must meet and confer for the purposes of finalizing a combined list, narrowing or resolving differences, and facilitating the ultimate preparation of a joint claim construction and prehearing statement.

4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

(a) Not later than 21 days after the exchange of lists under paragraph 4-1 (a), the parties must simultaneously exchange a preliminary proposed construction of each claim term, phrase, or clause that the parties collectively have identified for claim construction purposes, and must also identify each structure, act, or material corresponding to each claim element that the parties collectively contend is governed by 35 U.S.C. § 112(6).

(b) At the same time the parties exchange their respective preliminary claim constructions, they must each also exchange a preliminary identification of extrinsic evidence, including, without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses they contend support their respective claim constructions. The parties must identify each item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any percipient or expert witness, the parties must also provide a brief description of the substance of that witness’ proposed testimony.

(c) The parties must 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.

Not later than 60 days after service of the preliminary invalidity contentions, the parties must complete and file a joint claim construction and prehearing statement that contains the following information:

(a) The construction of those claim terms, phrases, or clauses on which the parties agree;

(b) Each party’s proposed construction of each disputed claim term, phrase, or clause, 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 the party intends to rely, either to support its proposed construction of the claim or to oppose any other party’s proposed construction of the claim, 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;

(c) The anticipated length of time necessary for the claim construction hearing;

(d) Whether any party proposes to call one or more witnesses, including experts, at the claim construction hearing, the identity of each witness, and, for each expert, a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert; and

(e) A list of any other issues that might appropriately be taken up at a prehearing conference prior to the claim construction hearing, and, if not previously set, proposed dates for any such prehearing conference.

4-4. Completion of Claim Construction Discovery.

Within 30 days from the date the joint claim construction and prehearing statement is filed, the parties must complete all discovery relating to claim construction, including any depositions with respect to claim construction of any witnesses, including experts, identified in the joint claim construction and prehearing statement.

4-5. Claim Construction Briefs.

(a) Within 45 days from the date the joint claim construction and prehearing statement is filed, each party must serve and file a claim construction brief and any evidence supporting its claim construction. The requirements of LR 7.2 apply to such briefs, except that, excluding the table of contents and table of authorities, the length of a brief must not exceed 30 pages. By order or other appropriate notice issued in the case, the presiding judge may restrict the length of a brief to fewer than 30 pages, or, for good cause, may enlarge the length of a brief.

(b) Each party may serve and file a responsive brief and supporting evidence within 14 days from the date the opposing party’s claim construction brief is filed. The requirements of LR 7.2 apply to such briefs, except that, excluding the table of contents and table of authorities, the length of a brief must not exceed 30 pages. By order or other appropriate notice issued in the case, the presiding judge may restrict the length of a brief to fewer than 30 pages, or, for good cause, may enlarge the length of a brief. Unless the presiding judge otherwise directs, no further claim construction briefing will be permitted.

(c) Within 10 days3 of the claim construction hearing scheduled under paragraph 4-6, the parties must jointly submit a claim construction chart on computer disk in WordPerfect format or in such other format as the presiding judge may direct.

(1) The claim construction chart must have a column listing the complete language of disputed claims with disputed terms in bold type and separate columns for each party’s proposed construction of each disputed term. The chart must also include a fourth column entitled “Judge’s Construction,” that is otherwise left blank. Additionally, the chart must direct the presiding judge’ s attention to each patent and claim number where a disputed term appears.

(2) The parties may also include constructions for claim terms to which they have agreed. If the parties choose to include agreed constructions, each party’s proposed construction columns must state “[AGREED],” and the agreed construction must be inserted in the “Judge’s Construction” column.

(3) The purpose of this claim construction chart is to assist the presiding judge and the parties in tracking and resolving disputed terms. Accordingly, aside from the requirements set forth in this Order, the parties are afforded substantial latitude in the chart’s format so that they may fashion a chart that most clearly and efficiently outlines the disputed terms and proposed constructions. Appendices to the presiding judge’s prior published and unpublished claim construction opinions may provide helpful guidelines for parties fashioning claim construction charts.

4-6. Claim Construction Hearing.

Subject to the convenience of the presiding judge’s calendar, two weeks after the responsive briefs under paragraph 4-5(b) have been filed, the presiding judge will conduct a claim construction hearing, to the extent the parties or the presiding judge believe a claim construction hearing is necessary for construction of the claims at issue.