United States District Court
`Southern District
`of California
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`L O C A L R U L E S
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`Revised as of:
`March 18, 2020
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`Bell Northern Research, LLC, Exhibit 2025, Page 1 of 6
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`2.5 Relationship to Federal Rules of Civil Procedure.
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`Except as provided in this paragraph or as otherwise ordered, it will not be a legitimate
`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. 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 the Patent Local Rules:
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`a. Requests seeking to elicit a party’s claim construction position;
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`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;
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`c. Requests seeking to elicit from an accused infringer a comparison of the asserted claims
`and the prior art; and
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`d. Requests seeking to elicit an opinion of counsel, and related documents, upon which a
`party intends to rely for any patent-related claim or defense.
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`Where a party properly objects to a discovery request as set forth above, that party must
`provide the requested information on the date on which it is required to provide, the requested
`information to an opposing party under these Patent Local Rules, unless another legitimate
`ground for objection exists.
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`3. Patent Disclosures
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`3.1 Disclosure of Asserted Claims and Infringement Contentions.
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`Not later than fourteen (14) days after the Initial Case Management Conference, a party
`claiming patent infringement must 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” must contain the following information:
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`a. Each claim of each patent in suit that is allegedly infringed by each opposing party;
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`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,
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`Bell Northern Research, LLC, Exhibit 2025, Page 2 of 6
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`or apparatus which, when used, allegedly results in the practice of the claimed method or
`process;
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`c. A chart identifying specifically where each element 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;
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`d. 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 based on joint acts of multiple parties, the role of each such party in the
`direct infringement must be described.
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`e. Whether each element of each asserted claim is claimed to be literally present and/or
`present under the doctrine of equivalents in the Accused Instrumentality;
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`f. For any patent that claims priority to an earlier application, the priority date to which
`each asserted claim allegedly is entitled;
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`g. If a party claiming patent infringement asserts or 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
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`h. If a party claiming infringement alleges willful infringement, the basis for such
`allegation.
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`3.2 Document Production Accompanying Disclosure.
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`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 documents in the possession, custody or control of that party:
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`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, the claimed invention prior to the date
`of application for the patent in suit. A party’s production of a document as required
`within these rules does not constitute an admission that such document evidences or is
`prior art under 35 U.S.C. '102;
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`Bell Northern Research, LLC, Exhibit 2025, Page 3 of 6
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`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 L.R. 3.1.e, whichever is
`earlier;
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`c. A copy of the file history for each patent in suit and each application to which a claim for
`priority is made under Patent L.R. 3.1.e.
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`d. Documents sufficient to evidence ownership of the patent rights by the party asserting
`patent infringement; and
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`e. If a party identifies instrumentalities pursuant to Patent L.R. 3.1.g, documents sufficient
`to show the operation of any aspects of elements of such instrumentalities the patent
`claimant relies upon as embodying any asserted claims.
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`The producing party must separately identify by production number which documents
`correspond to each category. If the documents identified above are not in the possession,
`custody or control of the party charged with production, that party must use its best efforts to
`obtain all responsive documents and make a timely disclosure.
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`3.3 Invalidity Contentions.
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`Not later than sixty (60) days after service upon it of the “Disclosure of Asserted Claims and
`Infringement Contentions,” each party opposing a claim of patent infringement must serve on
`all parties its “Invalidity Contentions,” which must contain the following information:
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`a. The identity of each item of prior art that allegedly anticipates each asserted claim or
`renders it obvious. This includes information about any alleged knowledge or use of the
`invention in this country prior to the date of invention of the patent. 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 that made the use or
`that made and received the offer, or the person or entity that 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);
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`b. 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;
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`Bell Northern Research, LLC, Exhibit 2025, Page 4 of 6
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`c. A chart identifying where specifically in each alleged item of prior art each element of
`each asserted claim is found, 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
`each item of prior art that performs the claimed function;
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`d. Any grounds of invalidity based on indefiniteness under 35 U.S.C. '112(2) of any of the
`asserted claims;
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`e. Any grounds of invalidity based on lack of written description, lack of enabling
`disclosure, or failure to describe the best mode under 35 U.S.C. '112(1).
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`3.4 Document Production Accompanying Invalidity Contentions
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`With the “Invalidity Contentions,” the party opposing a claim of patent infringement must
`produce or make available for inspection and copying:
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`a. Source code, specifications, schematics, flow charts, artwork, formulas, or other
`documentation sufficient to show the operation of any aspects or elements of any
`Accused Instrumentality identified by the patent claimant in its Patent L.R. 3.1.c chart;
`and
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`b. A copy of each item of prior art identified pursuant to Patent L.R. 3.3.a which 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.
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`3.5 Disclosure Requirements in Patent Cases for Declaratory Relief.
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`a. Invalidity Contentions if No Claim of Infringement. In all cases in which a party files
`a complaint or other pleading seeking a declaratory judgment that a patent is not
`infringed, is invalid, or is unenforceable, Patent Local Rules 3.1 and 3.2 will not apply
`unless and until a claim for patent infringement is made by a party. If the defendant does
`not assert a claim for patent infringement in answer to the complaint, no later than
`fourteen (14) days after the Initial Case Management Conference the party seeking a
`declaratory judgment must serve upon each opposing party Invalidity Contentions that
`conform to Patent L.R. 3.3 and produce or make available for inspection and copying the
`documents described in Patent L.R. 3.4.
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`b. Inapplicability of Rule. This Patent L.R. 3.5 does not apply to cases in which a request
`for declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, is
`filed in response to a complaint for infringement of the same patent.
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`3.6 Amended and Final Contentions.
`a. As a matter of right, a party asserting infringement may serve Amended Infringement
`Contentions no later than the filing of the parties’ Joint Claim Construction Chart.
`Thereafter, absent undue prejudice to the opposing party, a party asserting infringement
`may only amend its infringement contentions:
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`Bell Northern Research, LLC, Exhibit 2025, Page 5 of 6
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`1. If, not later than thirty (30) days after service of the court’s Claim Construction
`Ruling, the party asserting infringement believes in good faith that amendment is
`necessitated by a claim construction that differs from that proposed by such party; or
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`2. Upon a timely motion showing good cause.
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`b. As a matter of right, a party opposing a claim of patent infringement may serve
`“Amended Invalidity Contentions” no later than the completion of claim construction
`discovery. Thereafter, absent undue prejudice to the opposing party, a party opposing
`infringement may only amend its validity contentions:
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`1.
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`2.
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`if a party claiming patent infringement has served “Amended Infringement
`Contentions,” and the party opposing a claim of patent infringement believes in good
`faith that the Amended Infringement Contentions so require;
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`if, not later than fifty (50) days after service of the court’s Claim Construction
`Ruling, the party opposing infringement believes in good faith that amendment is
`necessitated by a claim construction that differs from that proposed by such party; or
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`3. upon a timely motion showing good cause.
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`This rule does not relieve any party from its obligations under Fed.R. Civ.P 26 to timely
`supplement disclosures and discovery responses.
`3.7 Advice of Counsel
`Not later than thirty (30) days after filing of the Claim Construction Order, each party relying
`upon advice of counsel as part of a patent-related claim or defense for any reason must:
`a. Produce or make available for inspection and copying the opinion(s) and any other
`documentation relating to the opinion(s) as to which that party agrees the attorney-client
`or work product protection has been waived; and
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`b. 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; and
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`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 opinion(s) which the
`party is withholding on the grounds of attorney-client privilege or work product
`protection.
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`A party who does not comply with the requirements of Patent L.R. 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, which will be entered only upon showing of good cause.
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`Bell Northern Research, LLC, Exhibit 2025, Page 6 of 6
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