Microsoft Corporation v. Barnes & Noble, Inc. et al

Filing 32

STANDING ORDER FOR PATENT CASES, by Judge Richard A. Jones. (VE)

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Hon. Richard A. Jones 1 2 3 4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 7 8 9 MICROSOFT CORPORATION, No. C11-485 RAJ 10 11 12 13 Plaintiff, STANDING ORDER FOR PATENT CASES v. BARNES & NOBLE, INC., et al., Defendant. 14 15 16 The following Order applies to all patent infringement cases assigned to Judge Richard A. Jones: 17 18 Unless another time schedule is necessitated by information provided in the 19 Joint Status Report (AJSR@), the Court will hold a Claim Construction Hearing 20 (AMarkman Hearing@) approximately 180 days (6 months) from the time of issuance 21 of the Court=s Order Setting Trial Date and Related Dates (the AScheduling Order@). 22 23 The Scheduling Order will establish deadlines for the standard actions as set forth 24 and explained in detail below. The following time frame will apply unless a party 25 shows good cause why it should not. 26 STANDING ORDER FOR PATENT CASES – 1 1 Action 2 Days Prior to Hearing 3 $ Preliminary Infringement Contentions & Disclosure of Asserted Claims 177 4 $ Disclosure of Preliminary Invalidity Contentions 156 5 $ Expert Witness Reports on Markman issues (if necessary) 129 6 $ Rebuttal Expert Witness Report on Markman Hearings (if necessary) 99 7 $ Preliminary Claim Chart 86 8 $ Joint Claim Chart and Prehearing Statement 56 9 $ Opening Markman Briefs - (24 pages per side) 42 10 $ Response Markman Briefs - (24 pages per side) 11 $ Markman Hearing 28 0 - exact date to be scheduled 12 13 PLEASE NOTE: The court will not rule on dispositive motions that raise 14 issues of claim construction prior to the Markman hearing, unless special 15 circumstances warrant and the party obtains leave of court in advance of filing. 16 17 Asserted Claims and Preliminary Infringement Contentions A party claiming patent infringement will serve on all parties a statement of 18 19 20 the Asserted Claims and Preliminary Infringement Contentions, which will include the following information: (1) the identity of each claim of each patent alleged to be 21 infringed; (2) the identity of the opposing party=s accused device/method/etc. by 22 specific name/model number/etc. for each claim asserted; (3) a chart that identifies 23 specifically where each element of each asserted claim is found within each accused 24 device/method/etc.; (4) whether each element is literally or equivalently infringed; 25 and (5) the priority date to which each asserted claim allegedly is entitled, if priority 26 is an issue. STANDING ORDER FOR PATENT CASES – 2 Preliminary Invalidity Contentions 1 2 A party opposing a claim of infringement on the basis of invalidity shall serve 3 on all parties a statement of its Preliminary Invalidity Contentions including: (1) the 4 identity of prior art that allegedly anticipates each asserted claim or renders it 5 obvious; (2) whether each piece of prior art anticipates or renders obvious the 6 asserted claims; (3) a chart that identifies where in each piece of prior art each 7 8 9 element of each asserted claim is found; and (4) any grounds for invalidity based on indefiniteness, enablement, or written description under 35 U.S.C. ' 112. 10 Expert Reports 11 If the parties wish to present expert testimony at the claim construction 12 hearing, the parties will disclose expert reports related to claim construction by the 13 date established in the Scheduling Order. Rebuttal expert reports will be exchanged 14 30 days later. These dates do not affect the more general expert report deadlines 15 included in the Scheduling Order. 16 17 Proposed Terms and Claim Elements and Preliminary Claim Chart 18 At some point prior to the formulation of the preliminary claim chart, the 19 20 parties will exchange a list of Proposed Terms and Claim Elements, which will 21 include each term that each party contends the court should construe. Each party 22 will also identify any claim element that it contends should be governed by 35 23 U.S.C. ' 112(6) as a means-plus-function element. The parties will then meet to 24 25 identify terms in genuine dispute and facilitate the preparation of the Joint Claim Chart. 26 STANDING ORDER FOR PATENT CASES – 3 1 The parties will then exchange preliminary proposed constructions for each 2 disputed claim term that the parties have collectively identified. Each party will also 3 provide a preliminary identification of any extrinsic evidence, along with a copy of 4 it, as well as a brief description of any witness= proposed testimony that supports its 5 construction of the claim. The parties will then meet to narrow the issues and 6 finalize the Joint Claim Chart and Prehearing Statement. 7 8 9 Joint Claim Chart and Prehearing Statement All allegations of infringement and invalidity will be filed with the court in 10 the form of a Prehearing Statement. After that time, the court will not consider new 11 allegations of infringement or invalidity without the asserting party showing good 12 cause. The parties may submit separate Prehearing Statements, or may submit one 13 joint statement. A party claiming patent infringement must provide a list of all 14 allegedly infringed claims. If more than one allegedly infringing product or process 15 16 is at issue, the party shall identify which product(s) or process(es) infringe which claims. A party claiming invalidity of a patent or patent claims must provide a list of 17 18 19 all claims that are allegedly invalid, and must briefly state the basis of each invalidity argument (e.g., obviousness, anticipation, lack of written description, etc.). 20 Where an invalidity argument is based on prior art, the party shall briefly identify the 21 prior art reference(s). 22 A Joint Claim Chart will also be filed, in the format provided in the Sample 23 Joint Claim Chart found at the end of this Order. This Chart will include each 24 party=s proposed construction of disputed terms, together with specific references to 25 the relevant portions of the specification and the prosecution history, and 26 descriptions of the extrinsic evidence to be used. The parties will attach to the Joint STANDING ORDER FOR PATENT CASES – 4 1 Claim Chart copies of all patents in dispute, together with the relevant prosecution 2 history. These documents need not be resubmitted upon briefing. The parties will 3 have the complete prosecution history available at the court=s request. In addition, 4 the parties will indicate whether any witnesses are to be called, and if so, their 5 identities. For expert witnesses, the party calling the expert will provide a summary 6 of the opinion to be offered. 7 8 9 The court expects the terms to be truly in dispute, and further expects that the preparation of the Preliminary and Joint Claim Charts will narrow the terms in 10 dispute. A party is not allowed to propose a construction when the other party is 11 unable to respond without leave of court (e.g., in a Response Brief). If a party must 12 propose a new construction, the Joint Claim Chart must be amended to reflect that 13 change. At the time of the Markman Hearing, the Joint Claim Chart before the court 14 must reflect the current proposed constructions. Unless the parties obtain leave of 15 16 court in advance, the court will construe a maximum of 10 claim terms at a Markman Hearing. Markman briefs should therefore be limited to 10 terms that the 17 18 19 parties choose jointly, unless they receive leave of court. The parties should prioritize claims keeping in mind the twin goals of narrowing the issues and 20 choosing the 10 claim terms for which a claim construction would be most 21 productive in terms of setting the groundwork for possible settlement. 22 23 24 25 Tutorial and/or Court-Appointed Neutral Expert and Claim Construction Hearing The court or the parties can request that the court have a tutorial on the subject matter of the patent(s) at issue prior to the Markman Hearing. In those 26 instances, the court will schedule a tutorial to occur two to four weeks prior to the STANDING ORDER FOR PATENT CASES – 5 1 Markman Hearing. The parties, in consultation with the court, will jointly agree to 2 the format of the tutorial, including a summary and explanation of the subject matter 3 at issue. The length of the tutorial will depend upon the subject matter. Visual aids 4 and suggestions for reading material are encouraged. 5 Alternatively, depending on the technology involved, the court may 6 determine that the assistance of a neutral expert would be helpful. In such an 7 8 instance, the court may direct the parties to confer and, if possible, reach an 9 agreement as to three experts in the field that would be appropriate to act as a neutral 10 expert to assist the court during the claim construction proceedings and/or the trial of 11 this matter. The court will then chose one to appoint as a neutral expert pursuant to 12 Federal Rule of Evidence 706. In such a situation, the parties will split the cost of 13 the expert equally. 14 15 16 The claim construction hearing will be set for one full trial day (5 hours). If more or less time is required, the parties are instructed to inform Victoria Ericksen at (206) 370-8517. 17 18 19 /// /// 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// STANDING ORDER FOR PATENT CASES – 6 1 The parties are directed to address any specific concerns with the foregoing 2 schedule in their Joint Status Report. Pursuant to Federal Rule of Civil Procedure 3 16, a schedule set forth in accordance with this order may be modified upon a 4 showing of good cause. The Clerk is directed to provide copies of this order to all 5 counsel of record. 6 7 DATED this 9th day of May, 2011. 8 9 /s/ RICHARD A. JONES Hon. Richard A. Jones United States District Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 STANDING ORDER FOR PATENT CASES – 7 Sample Joint Claim Chart 1 2 3 Claim Language (Disputed Terms in Bold) Defendant=s Proposed Construction and Evidence in Support 1. A method for mending fences fence fence [or] 4 Plaintiff=s Proposed Construction and Evidence in Support Proposed Construction: A structure that keeps things out. Proposed Construction: A structure that keeps things in. 5 6 7 >123 Patent 8 9 10 11 fences Found in claim numbers: Dictionary/Treatise Definitions: Merriam-Webster Dictionary (Aa barrier intended to prevent . . . intrusion@). 12 13 14 15 16 17 18 19 >123 Patent: y, z >456 Patent: a, b Intrinsic Evidence: >123 Patent col _:__ (Akeeps stray animals out@ ); Prosecution History at __ (Athis method is more effective than the prior art in reinforcing the fence, and therefore in keeping out unwanted intruders@). Extrinsic Evidence: R. Frost Depo. at xx:xx (AGood fences make good neighbors@); >000 Patent at col _:__; Vila Decl. at &__. 20 21 22 Dictionary/Treatise Definitions: Random House Dictionary (Aa barrier enclosing or bordering a field, yard, etc.@). Intrinsic Evidence: >123 Patent col _:_ (Akeeps young children from leaving the yard A); Prosecution History at __ (Adilapidated fences meant to pen in cattle are particularly amenable to this method@). Extrinsic Evidence: C. Porter Depo. at xx:xx (ADon=t fence me in@ ); >111 Patent at col _:__; Thomas Decl. at &__. (or similar format that provides side-by-side comparison) 23 24 25 26 STANDING ORDER FOR PATENT CASES – 8

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