(a) Opening Claim Construction Brief. Within thirty-five (35) days after
the exchange of terms set forth in LPR 4.1(a), the parties opposing infringement shall file their
Opening Claim Construction Brief, which may not exceed twenty-five (25) pages
absent prior leave of court. The brief shall identify any intrinsic evidence
with citation to the Joint Appendix under LPR 4.2(b) and shall separately
identify any extrinsic evidence the party contends supports its proposed claim
construction. If a party offers the testimony of a witness to support its claim
construction, it must include with its brief a sworn declaration by the witness
setting forth the substance of the witness’ proposed testimony, and promptly
make the witness available for deposition (if the witness is under the control of the party) concerning the proposed testimony.
(b) Joint Appendix. On the date for filing the Opening Claim Construction Brief, the
parties shall file a Joint Appendix containing the patent(s) in dispute and the
prosecution history for each patent. The prosecution history must be paginated,
and all parties must cite to the Joint Appendix when referencing the materials
it contains. Any party may file a separate appendix to its claim construction
brief containing other supporting materials.
(c) Responsive Claim construction Brief. Within twenty-eight (28) days after filing of the Opening Claim
Construction brief, the parties claiming infringement shall file their
Responsive Claim Construction Brief, which may not exceed twenty-five (25)
pages absent prior leave of Court. The brief shall identify any intrinsic
evidence with citation to the Joint Appendix under LPR 4.2(b) and shall
separately identify any extrinsic evidence the party contends supports its
proposed claim construction. If a party offers the testimony of a witness to
support its claim construction, it must include with its brief a sworn
declaration by the witness setting forth the substance of the witness’s
proposed testimony and promptly make the witness available for deposition
(if the witness is under the control of the party) concerning the proposed testimony. If such a deposition occurs,the date for the filing of a
Reply Claim Construction brief shall be extended by seven (7) calendar days.
The brief shall also describe all objections to any extrinsic evidence
identified in the Opening Claim Construction Brief.
(d) Reply Claim Construction Brief. Within fourteen (14) days after filing of the Responsive Claim
Construction Brief, the parties opposing infringement shall file their Reply
Claim Construction Brief, which may not exceed fifteen (15) pages absent prior
leave of Court. The brief shall describe all objections to any extrinsic
evidence identified in the Opening Claim Construction Brief.
(e) The presence of multiple alleged infringers with different products
or processes shall, in an appropriate case, constitute good cause for allowing
additional pages in the Opening, Responsive, or Reply Claim Construction Briefs
or for allowing separate briefing as to different alleged infringers.
(f) Joint Claim Construction Chart. Within seven (7) days after the date for filing of the Reply Claim Construction
Brief, the parties shall file (1) a joint claim construction chart that sets
forth each claim term and phrase addressed in the claim construction briefs;
each party’s proposed construction, and (2) a joint status report containing
the parties’ proposals for the nature and form of the claim construction
hearing pursuant to LPR 4.3.
Comment
The committee opted for consecutive claim construction briefs rather than
simultaneous briefs, concluding that consecutive briefing is more likely to
promote a meaningful exchange regarding the contested points. For the same
reason, the committee opted to have the alleged infringer file the opening
claim construction brief. Patent holders are more likely to argue for a “plain
meaning” construction or for non-construction of disputed terms; alleged
infringers tend to be less likely to do so.
The Rules provide for three briefs (opening, response, and reply), not four,
due to the likelihood of a claim construction hearing or argument. The Court’s
determination not to hold a hearing or argument may constitute a basis to
permit a surreply brief by the patent holder. A judge may choose not to require
or permit a reply brief.