AbbVie Inc. et al v. MedImmune, LLC

Filing 21

MEMORANDUM to Counsel of Record. Signed by Judge Roger W Titus on 6/14/2016. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(kw2s, Deputy Clerk)

EXHIBIT B
DRAFT SCHEDULING ORDER FOR PATENT CASES

A.

General Matters
1.

Joinder and Amendment of Pleadings: By ________________ (60
days 1 from the date of the Scheduling Order), any motion for joinder of
additional parties and amendment of pleadings shall be filed.

2.

Local Rules
a.

The parties shall comply with the Rules of the United States
District Court for the District of Maryland ("Local Rules"); and

b.

This is an action in which Fed. R. Civ. P. 26(a)(1) does not apply.
See Local Rule 104.10.

3.

4.

Attorneys’ Fees: In any situation in which attorneys' fees may be sought
by the prevailing party, counsel must be familiar with the provisions of
Local Rule 109.2 and the Rules and Guidelines for Determining Lodestar
Attorneys' Fees in Civil Rights and Discrimination Cases which are
Appendix B to the Local Rules.

5.

B.

Scheduling Inquiries: Any inquiries concerning the schedule should be
directed to my chambers, not to the Clerk's Office.

Dates: Dates herein for filing or service are deadlines for actual delivery
to the adverse party or the Clerk or filing using the CM/ECF system.

Discovery
1.

Close of Fact Discovery
a.

2.

Planning for Discovery: This action is exempted from the requirements
of Fed. R. Civ. P. 26(d) and (f). See Local Rule 104.10. However, you
are encouraged to confer with one another immediately in order to:
a.

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Deadline: Discovery (other than expert discovery) shall be
completed by ________________ (180 days from the date of the
Scheduling Order).

Identify the issues;

All proposed durations herein are subject to modification.

b.
c.

Determine if the case can be resolved before your clients incur
further litigation expense; and

d.
3.

Set a discovery plan;

Establish a cordial professional relationship among yourselves.

Applicability of Local Rules to Discovery: Subject to Local Rule 803.2,
all of the provisions of Local Rule 104 apply, including the following:
a.

b.

The existence of a discovery dispute as to one matter does not
justify delay in taking any other discovery. The filing of a motion
to compel or a motion for a protective order will not result in a
general extension of the discovery deadlines;

c.

No discovery materials should be filed with the Court;

d.

Motions to compel shall be filed in accordance with Local
Rule 104.8; and

e.

4.

All written discovery requests must be served in time to assure that
they are answered before the discovery deadline. An extension of
the deadline will not be granted because of unanswered discovery
requests;

Please be familiar with the Discovery Guidelines of this Court
adopted September 11, 1995. If you do not have a copy of the
Guidelines, you may obtain one through the Clerk's Office.

Expert Discovery: Expert discovery shall proceed as follows:
a.

By ________________ (180 days from the date of the Scheduling
Order), each party shall:
(1)

Advise each adverse party of the identity of all proposed
expert witnesses as to matters which the proposing party
bears the burden of proof;

(2)

Provide Rule 26(a)(2) information; and

(3)

Advise each adverse party of dates within 30 days on which
each expert shall be available for deposition so that
depositions can be taken.

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b.

By ________________ (210 days from the date of the Scheduling
Order), each party shall:
(1)

(2)

Provide Rule 26(a)(2) information; and

(3)

5.

Advise each adverse party of the identity of any proposed
expert witnesses not identified in the previous submission;

Advise each adverse party of dates within 30 days on which
each expert shall be available for deposition so that
depositions can be taken.

Objections:
Except as provided in this rule 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) that the discovery request or disclosure requirement is premature
in light of, or otherwise conflicts with, Section VIII of the Local Rules. A
party may object, however, to responding to the following categories of
discovery requests on the ground that they are premature in light of the
timetable provided in Section VIII of the Local Rules:
a.

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

b.

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;

c.

Requests seeking to elicit from an accused infringer a comparison
of the asserted claims and the prior art; and Requests seeking to
elicit from an accused infringer the identification of any advice of
counsel, and related documents; and

d.

Requests seeking to elicit from an accused infringer the
identification of any advice of counsel, and related documents.

Where a party properly objects to a discovery request as set forth above,
that party shall provide the requested information on the date on which it
is required to be provided to an opposing party under Section C of this
order, unless there are other legitimate grounds for objection.

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C.

Patent Matters
1.

Disclosure Deadlines and Requirements
a.

Initial Disclosure of Infringement Contentions
(1)

Deadline: By ________________ (30 days from the date
of the Scheduling Order), any party claiming patent
infringement shall serve on all parties an Initial Disclosure
of Infringement Contentions.

(2)

Requirements: The Initial Disclosure of Infringement
Contentions must separately setting forth for each allegedly
infringing party, the following information:
i.

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

ii.

Separately for each allegedly infringed claim, each
accused apparatus, product, device, process, method,
act, or other instrumentality (Accused Instrumentality)
of each allegedly infringing party of which the party is
aware. This identification shall be as specific as
possible. Each product, device, and apparatus shall be
identified by name or model number, if known. Each
method or process shall 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;

iii.

A chart identifying specifically where each limitation of
each asserted claim is found within each Accused
Instrumentality, including for each limitation that such
party contends is governed by 35 U.S.C. § 112(6), the
identity of the structure(s), act(s), or material(s) in the
Accused Instrumentality that performs the claimed
function;

iv.

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 that contribute to or are inducing that direct
infringement. Insofar as alleged direct infringement is
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based on joint acts of multiple parties, the role of each
such party in the direct infringement must be described;
v.

vi.

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

vii.

The date of conception and the date of reduction to
practice of each asserted claim;

viii.

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 shall 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

ix.

b.

Whether each limitation of each asserted claim is
alleged to be literally present or present under the
doctrine of equivalents in the Accused Instrumentality;

A party claiming patent infringement alleges willful
infringement, the basis for such allegation.

Document Production Accompanying Initial Disclosure of
Infringement Contentions
(1)

Deadline: By ________________ (30 days from the date
of the Scheduling Order) the party claiming patent
infringement shall produce to each allegedly infringing
party or make available for inspection and copying all
certain documents accompanying the Initial Disclosure of
Infringement Contentions.

(2)

Requirements: The documents produced shall relate to the
following:
i.

Any offers to sell or efforts to market each claimed
invention prior to the date of the application for the
patent; (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);
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ii.

iii.
c.

The standing of the party alleging infringement with
respect to each patent upon which such allegations are
based; and
A copy of the file history for each patent in suit.

Initial Disclosure of Invalidity Contentions in Defense of
Infringement Claims
(1)

Deadline: By ________________ (60 days from the date
of the Scheduling Order) each party opposing a claim of
patent infringement, shall serve on all parties its Initial
Disclosure of Invalidity Contentions in Defense of
Infringement Claims.

(2)

Requirements: Initial Disclosure of Invalidity Contentions
in Defense of Infringement Claims shall contain the
following information:
i.

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 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);

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ii.

iii.

Any grounds of invalidity based on 35 U.S.C. § 101,
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.

Document Production Accompanying Initial Disclosure of
Invalidity Contentions
(1)

e.

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

iv.

d.

Whether each item of prior art anticipates each asserted
claim or renders it obvious. If obviousness is alleged,
an explanation of why the prior art renders the asserted
claim obvious, including an identification of any
combinations of prior art showing obviousness;

Deadline and Requirements: By _______________ (60
days from the date of the Scheduling Order), the party
opposing a claim of patent infringement shall produce, or
make available for inspection and copying a copy of any
prior art identified in the Initial Disclosure of Invalidity
Contentions that does not appear in the file history of the
patent(s) at issue. To the extent any such item is not in
English, an English translation of the portion(s) relied upon
shall be produced.

Advice of Counsel Disclosure
(1)

Deadline: not later than thirty (30) days after entry of the
Court’s claim construction order, each party relying upon
advice of counsel as part of a patent-related claim or
defense for any reason shall serve on all parties an Advice
of Counsel Disclosure.

(2)

Requirements: In connection with the Advice of Counsel
Disclosure, the disclosing party shall:
i.

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;
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ii.

iii.

Serve a privilege log identifying any documents
other than those identified in L.R. 804.7, 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;
and

iv.

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;

A party who does not comply with the requirements
of L.R. 804.7 shall not be permitted to rely on
advice of counsel for any purpose absent a
stipulation of all parties or by order of the Court.

Claim Construction Deadlines and Requirements
a.

Claim Chart
(1)

Deadline: By ________________ (60 days from the date
of the Scheduling Order), the party asserting infringement
shall serve on each alleged infringing party a Claim Chart.

(2)

Requirements: The Claim Chart shall include the following
information:
i.

Each claim of any patent in suit which the party alleges
was infringed;

ii.

Separately for each allegedly infringed claim, the
identity of each accused apparatus, product, device,
process, method, act, or other instrumentality (Accused
Instrumentality) of each allegedly infringing party;

iii.

Whether such infringement is claimed to be literal or
under the doctrine of equivalents;

iv.

Where each element of each infringed claim is found
within each Accused Instrumentality; and

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v.

b.

If the party alleging infringement wishes to preserve the
right to rely on that party’s own apparatus, product,
device, process, method, act, or other instrumentality as
evidence of commercial success, the party must
identify, separately for each claim, each such apparatus,
product, device, process, method, act, or other
instrumentality that incorporates or reflects that
particular claim.

Proposed Claim Construction Statement
(1)

Deadline: By ________________ (60 days from the date
of the Scheduling Order), the party asserting infringement
shall also serve on each alleged infringing party a Proposed
Claim Construction Statement. containing the following
information for each claim in issue:

(2)

Requirements:
The Proposed Claim Construction
Statement shall contain the following information for each
claim in issue:
i.

ii.

All references from the specification that support,
describe, or explain each element of the claim;

iii.

All material in the prosecution history that describes or
explains each element of the claim; and

iv.

c.

Identification of any special or uncommon meanings of
words or phrases in the claim;

Any extrinsic evidence that supports the proposed
construction of the claim, including, but not limited to,
expert testimony, inventor testimony, dictionary
definitions and citations to learned treatises, as
permitted by law.

Responsive Claim Chart
(1)

Deadline: By ________________ (90 days from the date
of the Scheduling Order), the alleged infringing parties
shall serve upon the party claiming infringement a
Responsive Claim Chart.

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(2)

Requirements: The Responsive Claim Chart shall contain
the following:
i.

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 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);

ii.

Whether the prior art anticipates the claim or renders it
obvious. If a combination of prior art references makes
a claim obvious, that combination must be identified;

iii.

Where, specifically, within each item of prior art each
element of the claim is found;

iv.

All grounds of invalidity other than anticipation or
obviousness of any of the claims listed in the Claim
Chart. This identification must be as specific as
possible. For example, each party asserting a best mode
defense must set forth with particularity what
constitutes the inventors best mode, specifically citing
information or materials obtained in discovery to the
extent feasible. Each party asserting an enablement
defense must set forth with particularity what is lacking
in the specification to enable one skilled in the art to
make or use the invention; and

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v.

d.

If the claimant has alleged willful infringement, the
date and a document reference number for each opinion
of counsel upon which the party relies to support a
defense to the willfulness allegation, including, but not
limited to, issues of validity, and infringement of any
patent in suit.

Responsive Claim Construction Statement
(1)

Deadline: By ________________ (90 days from the date
of the Scheduling Order), the alleged infringing parties
shall serve upon the party claiming infringement a
Responsive Claim Construction Statement.

(2)

Requirements: Responsive Claim Construction Statement
shall contain the following:
i.

ii.

All references from the specification that support,
describe, or explain each element of the claim in
addition to or contrary to those described in the
Proposed Claim Construction Statement;

iii.

All material in the prosecution history that describes or
explains each element of the claim in addition to or
contrary to those described in the Proposed Claim
Construction Statement; and

iv.

e.

Identification of any special or uncommon meanings of
words or phrases in the claim in addition to those
disclosed in the Proposed Claim Construction
Statement;

Any extrinsic evidence that supports the proposed
construction of the claim, including, but not limited to,
expert testimony, inventor testimony, dictionary
definitions and citations to learned treatises, as
permitted by law.

Amendments: Amendment of a Claims Chart or a Responsive
Claims Chart may be made only on stipulation of all parties or by
Order of the Court, which shall be entered only upon a showing of
excusable subsequent discovery of new information or
extraordinary good cause.

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f.

Joint Claim Construction Statement
(1)

Deadline: By ________________ (120 days from the
date of the Scheduling Order), the parties, having met and
conferred on claim construction, shall file a Joint Claim
Construction Statement.

(2)

Requirements: The Joint Claim Construction Statement
shall contain the following information:
i.

ii.

Deadline and Requirements: By ________________ (120
days from the date of the Scheduling Order), the parties
shall file and serve opening briefs with supporting evidence
and identification of any proposed Claim Construction
Hearing witnesses.

Responsive Brief for Claim Construction Hearing
(1)

i.

For any party who proposes to call one or more
witnesses at any claim construction hearing, the identity
of each such witness, the subject matter of his or her
testimony, and an estimate of the time required for the
testimony.

Opening Brief for Claim Construction Hearing
(1)

h.

Each party’s proposed construction of each disputed
claim and term, supported by the same information that
is required
in the respective claim construction
statements; and

iii.

g.

The construction of those claims and terms on which
the parties agree;

Deadline and Requirements: By ________________ (150
days from the date of the Scheduling Order), the parties
shall file and serve any responsive brief and supporting
evidence directly rebutting their opponents supporting
evidence and identifying any additional proposed Claim
Construction Hearing witnesses.

DVD Presentation Submissions
(1)

If directed by the Court on its own motion or on motion of
a party each party shall file, under seal and serve a DVD or
equivalent of no more than 30 minutes that includes a
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description of the technology at issue and a summary of the
party’s primary factual and legal positions.
(2)

(3)

The presentations need not be elaborate but, rather, only
what is sufficient to be clear.

(4)

j.

The presentations shall be filed pursuant to a schedule to be
set by further Order that shall include an opportunity for
each side to comment ex parte on the other’s presentation;

By a date to be established by further order if necessary,
each party shall serve (ex parte) and file under seal, a letter
of no more than five pages commenting on the other party’s
tape.

Hearing Date
(1)

D.

There shall be a claim construction
________________ commencing at _______.

hearing

Summary Judgment Motions
1.

Any dispositive motions shall be filed no later than 15 days after the
Court's ruling on claim construction issues.

2.

The parties may, but need not, file dispositive motions that are not affected
by claim construction prior to the aforesaid due date.

3.

If more than one party intends to file a summary judgment motion, the
provisions of Local Rule 105.2.c shall not apply.

4.

A hearing on summary judgment motions shall be scheduled if necessary.

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