District court local rules for patent infringement cases

A party expecting to offer expert testimony on issues other than claim construction on which it bears the burden of proof, including damages, shall disclose and serve upon all parties the name, address, and curriculum vitae of any expert witness expected to testify at trial, together with a list of publications authored by him or her within the past ten years, and a list of cases in which the expert has given deposition or trial testimony during the past four years, together with a report as required under Fed. R. Civ. P. 26(a)(2)(B), within sixty (60) days following the issuance of the Court’s decision on claim construction.

A party expecting to offer expert testimony on issues other than claim construction on which it bears the burden of proof, including damages, shall disclose and serve upon all parties the name, address, and curriculum vitae of any expert witness expected to testify at trial, together with a list of publications authored by him or her within the past ten years, and a list of cases in which the expert has given deposition or trial testimony during the past four years, together with a report as required under Fed. R. Civ. P. 26(a)(2)(B), not later than sixty (60) days after entry of the Court’s claim construction order.

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.

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.

(A) Initial Attorneys’ Conference. When the parties confer with each other in the Initial Attorneys’ Conference (IAC), in addition to the matters typically covered in the IAC, the parties must discuss and address in the Certificate of Initial Attorneys’ Conference the following topics:

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(7) Whether it may be appropriate to bifurcate discovery for infringement, invalidity, and damages issues;

After the parties file the case management statement under Fed. R. Civ. P. 26(f), the presiding judge will schedule a case management conference between the presiding judge and counsel for the parties. Unless ordered otherwise by the presiding judge, lead counsel for each party will attend the case management conference in person. When appropriate, the presiding judge may also order that party representatives attend the case management conference in person. In addition to the matters set forth in Fed. R. Civ. P. 26(f) and paragraph 2-1(a) to be addressed in the case management statement, a non-exhaustive list of additional matters that could be addressed in the case management statement and at the first or subsequent case management conferences include the following:

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(16) Non-binding estimate of the range of damages to enable the presiding judge to evaluate proportionality determinations

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(b) A party opposing a claim of patent infringement shall produce or make the following available for inspection and copying, along with its Initial Disclosures:

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(3) a statement of the gross sales revenue from the accused product(s) (a) for the six (6) year period preceding the filing of the complaint or, if shorter, (b) from the date of issuance of the patent that will enable the parties to estimate potential damages and engage in meaningful settlement negotiations.

C.D. Cal. (Judge Otis D. Wright II)

A legally and methodologically sound damages report is far more valuable to you than a more aggressive report that is subject to exclusion under Daubert. Requests for a second bite at the apple may be met with a citation to S.P.R. 5.3.

When the parties confer pursuant to Fed. R. Civ. P. 26(f), in addition to the matters covered by Fed. R. Civ. P. 26, the parties shall discuss and address in the Case Management Statement filed pursuant to Fed. R. Civ. P. 26(f) and Civil L.R. 16-9, the following topics:

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(2) The scope and timing of any claim construction discovery (including disclosure of and discovery from any expert witness permitted by the court) and damages discovery;

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(5) The parties shall provide the court with a non-binding, good-faith estimate of the damages range expected for the case along with an explanation for the estimates. If either party is unable to provide such information, that party shall explain why it cannot and what specific information is needed before it can do so. Such party shall also state the time by which it should be in a position to provide that estimate and explanation.

2-5. Relationship to Federal Rules of Civil Procedure

Except as provided in this paragraph or as otherwise ordered, it shall not be a 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 Patent Local Rules, absent other legitimate objection. A party may object, however, to responding 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 the Patent Local Rules:

(a) Requests seeking to elicit a party’s claim construction or damages positions;

3-1. Disclosure of Asserted Claims and Infringement Contentions

Not later than 14 days after the Initial Case Management Conference, a party claiming patent infringement shall serve on all parties a “Disclosure of Asserted Claims and Infringement Contentions.” Separately for each opposing party, the “Disclosure of Asserted Claims and Infringement Contentions” shall contain the following information:

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(h) Identify the timing of the point of first infringement, the start of claimed damages, and the end of claimed damages;

3-2. Document Production Accompanying Disclosure

With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming patent infringement shall produce to each opposing party or make available for inspection and copying:

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(h) All agreements that otherwise may be used to support the party asserting infringement’s damages case;

3-4. Document Production Accompanying Invalidity Contentions

With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall produce or make available for inspection and copying:

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(e) All agreements that may be used to support the party denying infringement’s damages case.

3-8. Damages Contentions

Not later than 50 days after service of the Invalidity Contentions, each party asserting infringement shall: (a) Identify each of the category(-ies) of damages it is seeking for the asserted infringement, as well as its theories of recovery, factual support for those theories, and computations of damages within each category, including:

1. lost profits;

2. price erosion;

3. convoyed or collateral sales;

4. reasonable royalty; and

5. any other form of damages.

(b) To the extent a party contends it is unable to provide a fulsome response to the disclosures required by this rule, it shall identify the information it requires.

3-9. Responsive Damages Contentions

Not later than 30 days after service of the Damages Contentions served pursuant to Patent L.R. 3-8, each party denying infringement shall identify specifically how and why it disagrees with those contentions. This should include the party’s affirmative position on each issue. To the extent a party contends it is unable to provide a fulsome response to the disclosures required by this rule, it shall identify the information it requires.

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(a) A party asserting a claim of patent infringement shall for each asserted patent make available for inspection and copying, or serve control-numbered copies, with its Initial Disclosures the following non-privileged information in the party’s possession, custody or control:

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(6) the date from which it alleges damages, if claimed, began to accrue; or, if that date is not known, how the date should be determined.

There shall be a rebuttable presumption against the bifurcation of damages from liability issues in patent cases for purposes of either discovery or trial.

There shall be a rebuttable presumption against the bifurcation of damages from liability issues in patent cases for purposes of either discovery or trial.