Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 1 of 24
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`United States District Court
`for the
`Southern District of Florida
`
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`Civil Action No. 22-22706-Civ-Scola
`
`
`)
`Bell Northern Research, LLC,
`)
`Plaintiff,
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`
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`v.
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`
`)
`HMD America, Inc., and others,
`)
`Defendants.
`Scheduling Order, Order of Referral to Mediation, Patent Rules,
`and Protective Order
`This matter is set for trial during the two-week trial period beginning on
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`May 20, 2024. Calendar call will be held at 9:00 a.m. on Tuesday, May 14,
`2024, at the Wilkie D. Ferguson, Jr. United States Courthouse, 400 N. Miami
`Avenue, Courtroom 12-3, Miami, Florida. A pretrial conference will be held
`immediately following calendar call only if requested by the parties in advance.
`1. The parties must comply with the following schedule:
`Deadline for a party claiming patent infringement to serve
`Disclosure of Asserted Claims and Infringement
`Contentions and make accompanying document
`production.
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`February 7,
`2023
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`February 21,
`2023
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`March 10,
`2023
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`Deadline to join additional parties or to amend pleadings.
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`Deadline for a party opposing a claim of patent
`infringement or asserting invalidity or unenforceability to
`serve Non-Infringement, Unenforceability, and Invalidity
`Contentions and make accompanying document
`production.
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`April 14, 2023
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`Deadline to Exchange Proposed Terms for Construction.
`Deadline to submit joint notice indicating whether the
`parties consent to jurisdiction before the designated
`magistrate judge for purposes of dispositive motions or final
`disposition or both.
`May 15, 2023 Deadline to Exchange of Preliminary Claim Constructions
`and Extrinsic Evidence.
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`June 23, 2023 Deadline to file joint interim status report.
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 2 of 24
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`July 3, 2023 Deadline to File Joint Claim Construction and Prehearing
`Statement.
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`July 24, 2023
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`August 7, 2023
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`Deadline to complete claim construction discovery.
`Deadline to file a motion to stay the lawsuit pending
`reexamination in the U.S. Patent Office.
`Deadline to file proposed order scheduling mediation,
`setting forth the name of the mediator, and the date, time,
`and location of the mediation, consistent with the order of
`referral to mediation.
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`Deadline for any party claiming patent infringement to file
`opening claim construction brief (simultaneous opening
`briefs are not permitted) and deadline to file opening brief
`asserting claims for invalidity and unenforceability.
`Response and reply deadlines will proceed as provided for
`in the Local Rules.
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`October 23,
`2023
`
`Deadline to provide information regarding advice of counsel.
`(If the Court has not yet ruled on claim construction the
`parties should file a motion to extend this date.)
`
`Deadline to complete fact discovery.
`Deadline to disclose the identity of expert witnesses, and to
`exchange expert witness summaries/reports pursuant to
`Federal Rule of Civil Procedure 26(a)(2). Rebuttal
`disclosures are permitted, and must conform to the
`deadline set forth in Federal Rule of Civil Procedure
`26(a)(2)(C)(ii).
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`Deadline to complete mediation.
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`Deadline to complete all expert discovery.
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`Deadline for the filing of all dispositive motions and Daubert
`motions.
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`November 20,
`2023
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`November 30,
`2023
`January 4,
`2024
`January 16,
`2024
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`March 20,
`2024
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`Deadline for the filing of pretrial motions, including motions
`in limine.
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`April 22, 2024
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`Deadline to file joint pretrial stipulation under Local Rule
`16.1(e) and pretrial disclosures as required by Federal Rule
`of Civil Procedure 26(a)(3).
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 3 of 24
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`May 10, 2024
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`Deadline to file proposed jury instructions (if the matter is
`set for a jury trial) or proposed findings of fact and
`conclusions of law (if the matter is set for a bench trial)
`consistent with Local Rule 16.1(k).
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`2. Interim Joint Status Report. The parties are required to submit an
`interim joint status report addressing the following issues:
`a) Have all defendants been served? If not, state the reasons.
`b) Have all defendants responded to the complaint? If not, state the
`reasons.
`c) If this is a class action, has a motion for class certification been
`filed? If so, what is its status?
`d) Have the parties agreed on and selected a mediator? Have the
`parties agreed upon a place, date, and time for mediation?
`e) Have the parties engaged in informal settlement negotiations? If
`not, explain the reasons for the failure to do so. If yes, state the
`status of such negotiations (e.g., ongoing, impasse, etc.) and the
`relative prospects for resolution through informal means.
`f) Describe the status of discovery conducted to date, and identify
`whether the parties reasonably believe that they will be able to
`complete discovery by the Court’s deadline. If not, explain the
`reasons.
`g) Identify any other issues that the Court should be aware of that
`may affect the resolution of this matter or the schedule as
`currently set.
`3. References to documents in summary-judgment motions. When a party
`files a motion for summary judgment, the party must include the ECF number
`of any exhibits or other documents referred to in the motion or the
`accompanying statement of material facts (required by Local Rule 56.1). This
`means that if a document is not already on the record, a party will need to
`submit a Notice of Filing before he or she files the summary-judgment motion
`and the statement of material facts.
`4. Limit on motions in limine & Daubert motions. Each party is limited to
`filing one motion in limine and one Daubert motion. If a party cannot address
`his or her evidentiary issues or expert challenges in a 20-page motion, leave to
`exceed the page limitation will be granted upon a showing of good cause. The
`parties are reminded that motions in limine and Daubert motions must contain
`the Local Rule 7.1(a)(3) pre-filing conference and certification.
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 4 of 24
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`5. Jury Instructions. The parties must submit their proposed jury
`instructions jointly, though they need not agree on each proposed instruction.
`Where both parties agree on a proposed instruction, that instruction must be
`set out in regular typeface. Instructions proposed only by a plaintiff must be
`underlined. Instructions proposed only by a defendant must be bold-faced.
`Every instruction must be supported by a citation of authority. The parties
`should use as a guide the Eleventh Circuit Pattern Jury Instructions for Civil
`Cases, including the directions to counsel, or the applicable state pattern jury
`instructions. The parties must jointly file their proposed jury instructions via
`CM/ECF, and must also submit their proposed jury instructions to the Court
`via e-mail at scola@flsd.uscourts.gov in Word format (.doc).
`6. Trial Exhibits. All trial exhibits must be pre-marked. Plaintiff’s exhibits
`must be marked numerically with the letter “P” as a prefix. Defendant’s
`exhibits must be marked alphabetically with the letter “D” as a prefix. A list
`setting out all exhibits must be submitted at the time of trial. This list must
`indicate the pre-marked identification label (e.g., P-1, or D-A) and must also
`include a brief description of the exhibit.
`7. Deposition Designations. Any party intending to use deposition
`testimony as substantive evidence must designate by line and page reference
`those portions in writing. The designations must be served on opposing counsel
`and filed with the Court 14 days before the deadline to file the joint pretrial
`stipulation. The adverse party must serve and file any objections and any
`cross-designations within seven days. The initial party then has seven days to
`serve and file objections to the cross-designations.
`8. Voir Dire Questions. The Court will require each prospective juror to
`complete a brief written questionnaire prior to the commencement of
`questioning in the courtroom. Any party may up to five proposed, case-specific
`questions to be included in the questionnaire. The proposed questions must be
`filed with the Court at the time of the filing of the joint pretrial stipulation, and
`must also be submitted to the Court via e-mail at scola@flsd.uscourts.gov in
`Word format (.doc).
`9. Notification of juror misconduct. Every party has an affirmative duty to
`notify the Court immediately of any possible juror misconduct or any
`information that might possibly reflect on a juror’s ability to serve. Immediate
`notification is required to allow the Court the opportunity to address the issue,
`including questioning the juror and, if necessary, discharging the juror and
`seating an alternate juror. In any trial lasting more than five days, the Court
`imposes an affirmative duty on both sides to conduct all reasonable
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 5 of 24
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`investigations of juror misconduct, including statements provided during voir
`dire, and to advise the Court immediately of any discovered misconduct. Any
`party who fails to conduct a reasonable investigation in this situation and later
`discovers an incidence of juror misconduct has waived his, her, or its right to
`rely on that misconduct in a motion before this Court.
`10.
`Settlement Conference Before Magistrate Judge. The parties may,
`at any time, file a motion requesting a settlement conference before Magistrate
`Judge Jonathan Goodman. The Court encourages the parties to consider a
`confidential settlement conference with Judge Goodman, especially if the
`parties believe there is a meaningful chance of reaching an early, amicable
`resolution of their dispute.
`11.
`Settlement Notification. If this matter is settled, counsel are
`directed to inform the Court promptly via telephone (305-523-5140) and/or e-
`mail (scola@flsd.uscourts.gov).
`Done and ordered at Miami, Florida, on January 24, 2023.
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`________________________________
`Robert N. Scola, Jr.
`United States District Judge
`
`[Order of Referral to Mediation on following page]
`
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`

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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 6 of 24
`
`Civil Action No. 22-22706-Civ-Scola
`
`
`
`
`United States District Court
`for the
`Southern District of Florida
`
`
`Bell Northern Research, LLC,
`Plaintiff,
`
`v.
`
`HMD America, Inc., and others,
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`Order of Referral to Mediation
`Trial having been set in this matter, pursuant to Federal Rule of Civil
`Procedure 16 and Local Rule 16.2, it is ordered and adjudged as follows:
`1. All parties are required to participate in mediation. The parties must
`conduct their mediation no later than the deadline set out in the Court’s
`Scheduling Order.
`2. The Court designates Plaintiff’s counsel as lead counsel for purposes of
`this mediation order. Upon written agreement by all counsel of record and any
`unrepresented parties, the parties may designate a different attorney to be lead
`counsel for purposes of this mediation order. Lead counsel is responsible for
`scheduling the mediation conference.
`3. The parties are encouraged to avail themselves of the services of any
`mediator on the List of Certified Mediators, maintained in the office of the Clerk
`of the Court, but may select any other mediator. The parties must agree upon a
`mediator within 60 days from the date of this Order. If there is no agreement,
`lead counsel must promptly notify the Clerk of the Court in writing and the
`Clerk of the Court will designate a mediator from the List of Certified
`Mediators. That designation will be made on a blind rotation basis.
`4. A place, date, and time for mediation convenient to the mediator, counsel
`of record, and unrepresented parties must be established no later than the
`deadline in the Scheduling Order. Lead counsel must complete the attached
`form Order Scheduling Mediation and submit it to the Court. The parties must
`agree on a place, date, and time for mediation and lead counsel must
`submit the proposed order scheduling mediation, no later than the
`deadline set forth in the Scheduling Order.
`5. Pursuant to Local Rule 16.2(e), the appearance of counsel and each party
`or representatives of each party with full authority to enter into a full and
`complete compromise and settlement is mandatory. If insurance is involved, an
`adjuster with authority up to the policy limits or the most recent demand,
`whichever is lower, must attend.
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`

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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 7 of 24
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`6. All proceedings of the mediation will be confidential and privileged.
`7. At least fourteen days prior to the mediation date, each party must
`present to the mediator a confidential brief written summary of the case
`identifying issues to be resolved. The mediator is authorized to grant
`extensions of time up to the mediation for the parties to file their mediation
`statements.
`8. The Court may impose sanctions against parties and/or counsel who do
`not comply with the attendance or settlement authority requirements in this
`Order, or who otherwise violate the terms of this Order. The mediator must
`report non-attendance and may recommend imposition of sanctions by the
`Court for non-attendance.
`9. The mediator must be compensated in accordance with the standing
`order of the Court entered pursuant to Local Rule 16.2(b)(6), or on such basis
`as may be agreed to in writing by the parties and the mediator selected by the
`parties. The cost of mediation must be shared equally by the parties unless
`otherwise ordered by the Court. All payments must be remitted to the mediator
`within forty-five days of the date of the bill. Notice to the mediator of
`cancellation or settlement prior to the scheduled mediation conference must be
`given at least three full business days in advance. Failure to do so will result in
`imposition of a fee for two hours of mediation.
`10.
`If a full or partial settlement is reached in this case, counsel must
`promptly notify the Court of the settlement in accordance with Local Rule
`16.2(f), by the filing of a notice of settlement signed by counsel of record within
`fourteen days of the mediation conference. Thereafter the parties must
`promptly submit an appropriate pleading concluding the case.
`11.
`Within seven days following the mediation conference, the
`mediator must file a Mediation Report indicating whether all required parties
`were present. The report must also indicate whether the case settled (in full or
`in part), was adjourned, or whether the mediator declared an impasse. If the
`mediator fails to file a Mediation Report within seven days following the
`mediation conference, lead counsel must file a Mediation Report within
`14 days after the mediation conference.
`12.
`If mediation is not conducted, the case may be stricken from the
`trial calendar, and other sanctions may be imposed.
`Done and ordered at Miami, Florida on January 24, 2023.
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`________ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ___ ________ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ ______ __
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`Robert N. Scola, Jr.
`United States District Judge
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`

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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 8 of 24
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`Attachment “A” to the Order Of Referral To Mediation:
`Form Order Scheduling Mediation
`
`
`United States District Court
`for the
`Southern District of Florida
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`Order Scheduling Mediation
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`_______________________, Plaintiff
`
`v.
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`_______________________, Defendant
`
`Civil Action No. __________-Civ-Scola
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`The parties will hold the mediation conference in this matter before
` (mediator) on (date) .at (time) .at (location) . The mediator and the parties have
`agreed to this date. The parties may not reschedule the mediation without leave
`of the Court.
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`Done and ordered in chambers, at Miami, Florida, on _________________.
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`________________________________
`Robert N. Scola, Jr.
`United States District Judge
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`

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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 9 of 24
`
`United States District Court
`for the
`Southern District of Florida
`
`
`Civil Action No. 22-22706-Civ-Scola
`
`
`Bell Northern Research, LLC,
`Plaintiff,
`
`v.
`
`HMD America, Inc., and others,
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Patent Rules
`The Patent Rules contained in this Order will govern the proceedings in this
`case.1 The timing and sequence will be governed by the Court’s Scheduling
`Order. The parties must carefully review and comply with all of these rules.
`Failure to comply may result in the imposition of sanctions on the offending
`party, counsel, or both.
`
`
`Scope of Rules
`1.
`1-1. Title
`These are the Patent Rules that govern patent proceedings before the
`undersigned judge. They should be cited as “P.R. ___.”
`1-2. Scope and Construction
`These rules apply to all civil actions pending before Judge Robert N.
`Scola, Jr. in which a party makes a claim of infringement, non-
`infringement, invalidity, or unenforceability of a utility patent. The Local
`Rules of the Southern District of Florida also apply to this action, except
`to the extent that they are inconsistent with these Patent Rules.
`1-3. Modification of these Rules
`The Court may modify the obligations or deadlines set forth in these
`Patent Rules based on the circumstances of any particular case,
`including, without limitation, the simplicity or complexity of the cases as
`shown by the patents, claims, products, or parties involved. Before
`submitting any request for a modification, the parties must meet and
`confer for the purposes of reaching an agreement, if possible, upon any
`modification.
`
`
`
`
`1 These Patent Rules are taken largely from the Local Patent Rules in the
`Northern District of California and the Northern District of Illinois.
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`

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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 10 of 24
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`General Provisions
`2.
`2-1. Governing Procedure Initial Case Management Conference. When the
`parties confer pursuant to Federal Rule of Civil Procedure 26(f), in
`addition to the matters covered by Rule 26, the parties must discuss and
`address in the case management statement filed pursuant to Rule 26(f)
`and Local Rule 16.1(b) the following topics:
`(a) Proposed modification of the obligations or deadlines set forth in these
`Patent Rules to ensure that they are suitable for the
`circumstances of the particular case (see P.R. 1-3);
`(b) The scope and timing of any claim construction discovery including
`disclosure of and discovery from any expert witness
`permitted by the court;
`(c) The format of the claim construction hearing, including whether the
`Court will hear live testimony, the order of presentation, and
`the estimated length of the hearing; and
`(d) How the parties intend to educate the court on the technology at issue.
`2-2. Confidentiality
`The Court will enter a protective order the same day it enters these
`Patent Rules. Any party may move the Court to modify the protective
`order for good cause. The filing of such a motion does not affect the
`requirement for or timing of any of the disclosures required by any
`scheduling order, or these Patent Rules. Discovery cannot be withheld on
`the basis of confidentiality, in the absence of a Court order.
`2-3. Certification of Disclosures
`All statements, disclosures, or charts filed or served in accordance with
`these Patent Rules must be dated and signed by counsel of record.
`Counsel’s signature shall constitute a certification that to the best of his
`or her 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
`The disclosures provided for in these Patent Rules are inadmissible as
`evidence on the merits. A party may use or make reference to these
`disclosures for any other appropriate purpose.
`2-5. Relationship to Federal Rules of Civil Procedure
`A party may not object to mandatory disclosures under Rule 26(a) or to a
`discovery request on the grounds that it conflicts with or is premature
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 11 of 24
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`under these Patent Rules, except to the following categories of requests
`and disclosures:
`(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;
`Requests seeking to elicit from an accused infringer a comparison
`of the asserted claims and the prior art;
`Requests to an accused infringer for its non-infringement
`contentions; and
`Requests seeking to elicit from an accused infringer the
`identification of any advice of counsel, and related documents.
`
`(d)
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`(c)
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`(e)
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`3. Patent Disclosures
`3-1. Disclosure of Asserted Claims and Infringement Contentions
`A party claiming patent infringement must serve on all parties
`“Disclosure of Asserted Claims and Infringement Contentions” containing
`the following information:
`(a)
`Identification of each claim of each patent in suit that is allegedly
`infringed by each opposing party, including for each claim the
`applicable statutory subsections of 35 U.S.C. § 271 asserted;
`(b) 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 which, when used, allegedly results in the practice of
`the claimed method or process;
`(c) A chart identifying specifically where each limitation 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 the structure(s), act(s), or
`material(s) in the Accused Instrumentality that performs the
`claimed function;
`(d) For each claim that 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. If alleged direct infringement is
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 12 of 24
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`(f)
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`(g)
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`(h)
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`based on joint acts of multiple parties, the role of each such party
`in the direct infringement must be described.
`(e) Whether each limitation of each asserted claim is alleged to be
`literally present or present under the doctrine of equivalents in the
`Accused Instrumentality. For any claim under the doctrine of
`equivalents, the Initial Infringement Contentions must include an
`explanation of each function, way, and result that is equivalent
`any why any differences are not substantial;
`For any patent that claims priority to an earlier application, the
`priority date to which each asserted claim allegedly is entitled;
`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; and
`If a party claiming patent infringement alleges willful infringement,
`the basis for such allegation.
`3-2. Document Production Accompanying Disclosure
`With the “Disclosure of Asserted Claims and Infringement Contentions,”
`the party claiming patent infringement must produce to each opposing
`party or make available for inspection and copying the following:
`(a) 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, or
`any public use of, the claimed invention prior to the date of
`application for the patent in suit. A party’s production of a
`document as required under this Rule does not constitute an
`admission that such document evidences or is prior art under 35
`U.S.C. § 102;
`(b) All documents evidencing the conception, reduction to practice,
`design, and development of each claimed invention, which were
`created on or before the date of application for the patent in suit or
`the priority date identified pursuant to Patent Rule 3-1(f),
`whichever is earlier;
`(c) A copy of the file history for each patent in suit; and
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`Case 1:22-cv-22706-RNS Document 125 Entered on FLSD Docket 01/25/2023 Page 13 of 24
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`(e)
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`(d) All documents evidencing ownership of the patent rights by the
`party asserting patent infringement.
`If a party identifies instrumentalities pursuant to Patent Rule 3-
`1(g), documents sufficient to show the operation of any aspects or
`elements of such instrumentalities the patent claimant relies upon
`as embodying any asserted claims.
`The producing party must separately identify by production number
`which documents correspond to each category.
`3-3. Non-Infringement, Unenforceability, and Invalidity Contentions
`Each party opposing a claim of patent infringement or asserting
`invalidity or unenforceability must serve upon all parties its “Non-
`Infringement, Unenforceability, and Invalidity Contentions” containing
`the following information:
`(a) 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 where 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 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) must 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) must 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);
`(b) A statement of whether each item of prior art anticipates each
`asserted claim or renders it obvious. If a combination of items of
`prior art allegedly makes a claim obvious, include an identification
`of each combination of prior art showing obviousness;
`(c) 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;
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`(d) 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; and
`(e) Unenforceability contentions must identify the acts allegedly
`supporting and all bases for the assertion of unenforceability.
`3-4. Document Production Accompanying Invalidity Contentions
`With the “Non-Infringement, Unenforceability, and Invalidity
`Contentions,” the party opposing a claim of patent infringement must
`produce or make available for inspection and copying:
`(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 Patent Rule 3-1(c) chart; and
`(b) A copy or sample of the prior art identified pursuant to Patent Rule
`3-3(a) 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 must be produced.
`The producing party must separately identify by production number
`which documents correspond to each category.
`3-5. Disclosure Requirement in Patent Cases Initiated by Complaint for
`Declaratory Judgment
`In a case initiated by a compliant for declaratory judgment in which a
`party files a pleading seeking a judgment that a patent is not infringed, is
`invalid, or is unenforceable, Patent Rule 3-1 and 3-2 will not apply
`unless a party makes a claim for patent infringement. If no claim for
`patent infringement is made, the party seeking a declaratory judgment
`must comply with Patent Rule 3-3 and 3-4 within 28 days after the
`parties’ discovery and scheduling conference.
`3-6. Amendment to Contentions
`Amendment of the Infringement Contentions or the Invalidity
`Contentions may be made only with leave of the Court upon a timely
`showing of good cause. Non-exhaustive examples of circumstances that
`may, in the absence of undue prejudice to the non-moving party, support
`a finding of good cause include the following:
`(a) A claim construction by the Court different from that proposed by
`the party seeking amendment;
`(b) Recent discovery of material, prior art despite earlier diligent
`search; and
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`(c) Recent discovery of nonpublic information about the Accused
`Instrumentality that was not discovered, despite diligent efforts,
`before the service of the Infringement Contentions.
`The duty to supplement discovery responses does not excuse the need to
`obtain leave of court to amend contentions.
`3-7. Advice of Counsel
`Each party relying upon advice of counsel as part of a patent-related
`claim or defense for any reason must complete the following tasks:
`(a) Produce or make available for inspection and copying any written
`advice and documents related to that advice for which the
`attorney-client and work product protection have been waived;
`(b) Provide a written summary of any oral advice and produce or make
`available for inspection and copying that summary and documents
`related that advice for which the attorney-client and work product
`protection have been waived; and
`(c) Serve a privilege log identifying any other documents, except those
`authored by counsel acting solely as trial counsel, relating to the
`subject matter of the advice that the party is withholding on the
`grounds of attorney-client privilege or work product protection.
`A party who does not comply with the requirements of Patent Rule 3-7
`will not be permitted to rely on advice of counsel for any purpose absent
`a stipulation of all parties or by order of the Court.
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`4. Claim Construction Proceedings
`4-1. Exchange of Proposed Terms for Construction
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`(a) Each party must serve on each other party a list of claim terms
`that the party contends should be construed by the Court, and
`identify any claim term that the party contends should be governed
`by 35 U.S.C. § 112(6).
`(b) The parties must then