Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 1 of 7 Page ID #:735
`
`
`
`
`Kumar Maheshwari (SBN 245,010)
`Email: kumar@maheshlaw.com
`Mahesh Law Group, P.C.
`7700 Irvine Center Drive, Suite 800
`Irvine, CA 92618
`Tel: 530.400.9246
`
`J. Curtis Edmondson (SBN 236,105)
`E-mail: jcedmondson@edmolaw.com
`Edmondson IP Law
`3699 NE John Olsen Avenue
`Hillsboro, OR 97124
`Tel: 503.336.3769
`
`Stephen M. Lobbin (SBN 181,195)
`E-mail: sml@smlavvocati.com
`SML Avvocati P.C.
`888 Prospect Street, Suite 200
`La Jolla, CA 92037
`Tel: 949.636.1391
`
`Attorney for Plaintiff Caravan Canopy Int’l, Inc.
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`
`CARAVAN CANOPY INT’L, INC.,
`Plaintiff,
`
`v.
`WALMART INC., et al.,
`
` Defendants.
`
`
`
`Case No. 8:19-cv-01072-PSG-ADS
` (Lead Case)
`Case No. 5:19-cv-01224-PSG-ADS
`Case No. 2:19-cv-06224-PSG-ADS
`Case No. 2:19-cv-06952-PSG-ADS
`Case No. 2:19-cv-06978-PSG-ADS
`
`PLAINTIFF’S OPPOSITION TO
`WALMART’S MOTION TO
`STRIKE
`
`Date: June 1, 2020
`Time: 1:30 p.m.
`Ctrm: 6B
`
`Honorable Philip S. Gutierrez
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`Pursuant to L.R. (C.D. Cal.) 7-9, Plaintiff Caravan Canopy Int’l, Inc.
`(“CCI”) opposes as follows Defendant Walmart’s motion to strike CCI’s
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 131
`
`Petitioners Exhibit 1020
`Patent 5,944,040
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 2 of 7 Page ID #:736
`
`
`Preliminary Infringement Contentions. CCI respectfully submits that this Court
`should deny Walmart’s motion to strike for many reasons, including mootness.1
`Introduction and Summary of Opposition
`CCI has asserted only one patent-in-suit—U.S. Patent No. 5,944,040 (“the
`‘040 patent”).2 The ‘040 patent claims a now-familiar “collapsible tent frame”
`structure used in millions of “pop-up” or “instant” tents and canopies seen in
`backyards and at tailgate parties, farmers’ markets, street fairs and the like, all
`over America (at least before the present public health crisis). See ECF No. 1-1
`at 2-8. The ‘040 patent has one independent claim (Claim 1), which includes just
`a few unique mechanical elements. Each of the present five defendants,
`however, has sold many different styles, names, models, and sizes of its accused
`infringing tents and canopies. As in any patent litigation matter—and
`particularly one with so many different defendants and accused infringing
`products—in its original May 2019 Complaint, CCI provided as much detail as it
`was able to find from publicly-available sources. See, e.g., ECF No. 1-1 at 25-34
`(identification of Walmart’s accused infringing products).3
`
`
`1 Walmart’s motion is moot because even if this Court grants Walmart’s request
`to “strike [CCI’s preliminary infringement] contentions for failure to comply
`with [Judge Guilford’s] Standing Patent Rules,” CCI already has served amended
`contentions, which are encouraged under the SPR (assuming those rules even
`remain applicable). See Ex. 1 at 8 (SPR 4.1 reminding parties “to supplement
`disclosures and discovery responses promptly”); see also Ex. B (CCI’s amended
`preliminary infringement contentions concerning Walmart’s accused infringing
`products). Each of Exhibits A-E referenced herein is submitted herewith.
`
` 2
`
` The period of asserted infringement starts six years prior to filing of this action,
`and continues up to the expiration of the ‘040 patent. See 35 U.S.C. § 286
`(damages limited to within “six years prior to the filing of the complaint”).
`
` 3
`
` As Walmart acknowledges, CCI specified the accused infringing products
`categorically, as “a wide range of products branded under the label ‘Ozark Trail’
`including collapsible ‘instant’ tent canopies.” ECF No. 78-1 at 8.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`2
`
`Page 2 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 3 of 7 Page ID #:737
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`After CCI re-filed separate complaints against each Defendant, in
`December 2019 Judge Guilford consolidated the separate actions back into this
`lead case, and entered a single Amended Scheduling Order in January 2020. See
`ECF No. 52 (“The Court ORDERS all cases . . . shall be consolidated into the
`lead case . . . for all purposes except for trial.”); ECF No. 55-56 and 63
`(Amended Scheduling Orders). Following a reassignment (see ECF Nos 64-65),
`this Court entered its own Standing and Scheduling Orders. See ECF No. 66-68.
`The new schedule includes a Claim Construction Hearing on June 29, 2020 (see
`ECF No. 68), but this Court has not explicitly adopted the other specific
`provisions of Judge Guilford’s “Standing Patent Rules,” nor has this Court
`specified any other patent disclosure deadlines.4
`Nevertheless, pursuant to Judge Guilford’s Standing Patent Rules in effect
`before reassignment, CCI served detailed preliminary infringement contentions
`including charts comparing the patent claims to images of Walmart’s
`representative accused infringing products. See Ex. C (attached herewith); see
`SPR 2.1 (preliminary infringement contentions). Thereafter, Judge Guilford’s
`schedule allowed for discovery, claim construction, and only thereafter a
`disclosure of “Final Infringement Contentions” within 28 days after a decision on
`claim construction, which is still a long way off. See ECF No. 63 at 2. As Judge
`Guilford’s SPR 4.1 allows, not only may (and should) a party serve
`“supplemental disclosures” if and when warranted along the way, but the rules
`allow for amendments to the infringement contentions and charts as a matter of
`course “where they are made due to a claim construction by the Court different
`from that proposed by the party seeking amendment, or recent discovery of
`nonpublic information about the Accused Instrumentality that was not
`discovered, despite diligent efforts, before the service of the [preliminary]
`
`4 To CCI’s knowledge, like most in this District, this Chambers has no “Standing
`Patent Rules,” and this District has no Local Patent Rules.
`
`
`
`
`3
`
`
`
`Page 3 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 4 of 7 Page ID #:738
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Infringement Contentions.” SPR 4.1.2. Only at this much later stage does SPR
`4.1 allow for motions to strike: “If a party receiving Final Infringement
`Contentions believes that amendments were made without good cause, it may
`move the Court to strike them.” Id.
`As explained supra, in its May 2019 Complaint and December 2019
`Infringement Contentions, Plaintiff CCI already provided all of the publicly-
`available information it possessed at the time supporting its infringement
`contentions against Walmart. Because its due diligence continues throughout
`this proceeding, CCI now has a set of amended claim charts. See Ex. B (attached
`herewith). Since discovery opened a few months ago, however, Walmart has
`refused to provide any information or documents about its other product styles,
`names, models, and/or sizes for any tents and canopies which CCI had not
`previously and specifically identified in its preliminary infringement contentions.
`For example, in its responses to CCI’s Request for Production No. 15 asking for
`documents necessary to identify all of Walmart’s “instant canopy” products,
`Walmart refused to provide documents beyond the specific products “identified
`in Paragraph 10 and shown in Exhibit C to Caravan’s complaint (ECF No. 1), as
`clarified in Paragraph 10 to Walmart’s answer (ECF No. 18).” See Ex. D at 16-
`17 (attached herewith); see also Ex. E at 9-11 (failing to produce, as promised,
`“summary financial information for the Accused Products” as broadly defined by
`CCI).5
`
`
`
`
`5 Walmart has not yet compromised on its strident position and refusal to provide
`information about its other “canopy tent” products. If Walmart maintains its
`refusal to consider a reasonable compromise in discovery (such as, start with
`providing CCI with a name and image of each of Walmart’s products in this
`category sold during the infringement period), then CCI will be forced to file a
`motion to compel.
`
`
`
`
`4
`
`
`
`Page 4 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 5 of 7 Page ID #:739
`
`
`Argument
`Not only is Walmart’s motion moot (see supra n.1), but each of Walmart’s
`arguments is meritless. First, Walmart criticizes CCI’s December 2019
`preliminary infringement contentions for “fail[ing] to identify a single Walmart
`product that [CCI] accuses of infringement,” but the disclosure specifically
`identifies the accused infringing product as Walmart’s “Ozark Trail Canopy”
`having a “cathedral style frame.” See Ex. C at 7-8. Walmart complains that the
`phrase “Ozark Trail cathedral style frame” is not exactly “a description used for
`any Walmart Ozark Trail instant canopy products.” But instead of simply
`providing discovery on all self-described “Walmart Ozark Trail instant canopy
`products” (all of which are within the scope of CCI’s discovery requests),
`Walmart saw fit to burden this already-overburdened Court with this petty
`motion.6 Walmart should have simply met and conferred with CCI in good faith
`so that the parties can reach agreement on which of Walmart’s many “Walmart
`Ozark Trail instant canopy products” are accused infringing products.7 Second,
`Walmart argues that the infringing features of the accused products are not
`specified, but CCI’s preliminary infringement claim charts show arrows and
`labels specifically identifying how every single element of the claims is satisfied
`by the accused infringing products. See Ex. C at 9-15.
`
`
`6 CCI presumes this Court is overburdened because of the current 10 District
`Judge vacancies in this District, and the fact that this consolidated action and
`many others have been reassigned from retiring judges.
`
` Walmart pretends it cannot “guess as to which of its various instant canopies
`are at issue in this lawsuit, and which are not.” But CCI has identified the
`“Ozark Trail” instant canopy products, no matter what the size or color or
`material. So there is no guessing required, just full and fair discovery. CCI has
`no interest or intention to assert infringement against any “Ozark Trail” product
`that does not utilize the claimed inventions.
`
` 7
`
`
`
`
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Page 5 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 6 of 7 Page ID #:740
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Concerning the case law, Walmart correctly notes that the requirement of
`complete preliminary infringement contentions is more lenient where a plaintiff
`“could not have discovered the product absent discovery.” Discovery is the next
`step in this case, and is required for CCI to go from its “preliminary”
`infringement contentions to “final” infringement contentions. Walmart,
`however, is attempting to stifle that process by refusing to identify all of the
`different models etc. of its self-described category of “Walmart Ozark Trail
`instant canopy products” (all of which are within the scope of CCI’s discovery
`requests). Finally, the dispute on this motion bears no analog to the cited
`Essociate case, because there plaintiff admitted it could have provided more
`specificity. See Essociate, Inc. v. 4355768 Canada Inc., No. 14-679, 2015 WL
`12745799 (C.D. Cal. Jan. 14, 2015). Here, without reasonable cooperation from
`Walmart in discovery, CCI is only able to identify the accused infringing product
`names/models/etc. shown in Exhibit B.
`Conclusion
`For each of the foregoing reasons, Plaintiff CCI respectfully requests that
`this Court deny Walmart’s motion to strike.
`
`
`Dated: May 11, 2020
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`SML Avvocati P.C.
`By:
`/s/ Stephen M. Lobbin
`Attorneys for Plaintiff
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Page 6 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84 Filed 05/11/20 Page 7 of 7 Page ID #:741
`
`
`CERTIFICATE OF SERVICE
`
`
`
` I
`
` hereby certify that on May 11, 2020, I electronically transmitted the
`foregoing document using the CM/ECF system for filing, which will transmit the
`document electronically to all registered participants as identified on the Notice
`of Electronic Filing, and paper copies have been served on those indicated as
`non-registered participants.
`
`
`/s/ Stephen M. Lobbin
`
`
`
`
`
`
`
`
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Page 7 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 1 of 11 Page ID #:742
`
`(cid:40)(cid:59)(cid:43)(cid:44)(cid:37)(cid:44)(cid:55)(cid:3)(cid:36)
`
`Page 8 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 2 of 11 Page ID #:743
`
`HONORABLE ANDREW J. GUILFORD
`STANDING PATENT RULES
`
`
`These Standing Patent Rules are based largely on information obtained from over 100 patent
`practitioners and professors, a review of all the other local patent rules, and a review of
`related literature. These rules are drafted to respond to the needs of this community and to
`reduce transaction costs and increase procedural predictability. A primary goal was that the
`rules be outcome neutral and as concise as possible. While many lawyers and groups
`provided assistance through comments, special acknowledgment is given to Jonathan Rotter
`and Adam Hubbard.
`
`1. GENERAL PROVISIONS
`
`1.1
`
`These are the Standing Patent Rules for cases assigned to the Honorable Andrew J.
`Guilford. They should be cited as “S.P.R. ___.”
`
`1.2 Effective Date
`
`These Standing Patent Rules take effect on September 1, 2013, and apply in cases filed on or
`after that date. The Court may order that they also apply with appropriate modification to
`cases filed before that date.
`
`1.3
`
`These rules apply to all cases involving a claim of infringement, non-infringement, invalidity,
`or unenforceability of a utility patent. The Local Rules of this District shall also apply to
`such actions, except to the extent that they are inconsistent with these Standing Patent Rules.
`The Court will consider requests to opt out of these Standing Patent Rules, particularly when
`all parties agree the case involves less than $2 million.
`
` 1.4 Modification of These Rules
`
`The Court maintains the ability to modify or suspend these rules at any time. The Court will
`consider modifications to these rules suggested by the parties based on the circumstances of
`any particular case. Such party-suggested modifications shall, in most cases, be made at the
`scheduling conference, but may be made at other times upon a showing of good cause for
`such other time.
`
`1.5
`
`Absent a Court order, discovery cannot be withheld on the basis of confidentiality. The
`Court’s Standing Protective Order shall govern discovery unless the Court enters a different
`
`Scope and Construction
`
`Title
`
`Confidentiality
`
`1
`
`Page 9 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 3 of 11 Page ID #:744
`
`Relationship to the Federal Rules of Civil Procedure
`
`protective order. The Standing Protective Order can be found on Judge Guilford’s
`“Frequently Asked Questions” webpage, available on the “Judges’ Procedures and
`Schedules” portion of the Central District of California’s website.
`
`1.6
`
`Except as provided in this paragraph or otherwise ordered, it shall not be a ground for
`objecting to discovery requests (such as interrogatories, document requests, requests for
`admission, or deposition questions), or declining to provide information otherwise required
`by Fed.R.Civ.P. 26(a)(1), that the discovery request or disclosure requirement is premature
`due to, or otherwise conflicts with, these Standing Patent Rules. But a party may object 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 of prematurity under these Standing
`Patent Rules: (1) requests seeking a party’s claim construction position; (2) requests seeking
`from the patent claimant a comparison of the asserted claims and the accused apparatus,
`product, device, process, method, act, or other instrumentality (collectively “Accused
`Instrumentality”); (3) requests seeking from an accused infringer a comparison of the
`asserted claims and the prior art; (4) requests seeking from an accused infringer the
`identification of any advice of counsel or related documents.
`
`
`PATENT DISCLOSURES, EARLY MEETING OF THE PARTIES, AND
`SCHEDULING CONFERENCE
`
`2.1 Disclosure of Asserted Claims and Infringement Contentions
`
`No later than 14 days after the Court issues an order setting a scheduling conference, a party
`asserting 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 information described as follows in
`S.P.R. 2.1.1 through 2.1.6.
`
`
`2.
`
`2.1.1 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.
`
`2.1.2 Separately for each asserted claim, each Accused Instrumentality. This
`identification shall be as specific as reasonably possible.
`
`2.1.3 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)/(f), the identity of the structure(s),
`act(s), or material(s) in the Accused Instrumentality that performs the claimed
`
`2
`
`Page 10 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 4 of 11 Page ID #:745
`
`function, and 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 patent that claims priority to an earlier application, the priority date
`2.1.4
`allegedly applicable to each asserted claim.
`
`2.1.5 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.
`
`2.1.6 If a party claiming patent infringement alleges willful infringement, the basis
`for such allegation.
`
`2.2 Document Production Accompanying Disclosure
`
`With the Disclosure of Asserted Claims and Infringement Contentions, the party claiming
`patent infringement shall produce or make available for inspection and photocopying the
`items described as follows in S.P.R. 2.2.1 through 2.2.3, identifying the documents
`corresponding to each category by production number.
`
`
`2.2.1 A copy of the file history for each patent in suit.
`
`2.2.2 All documents evidencing ownership of the patent rights by the party
`asserting patent infringement.
`
`2.2.3 If a party identifies instrumentalities under S.P.R. 2.1.5, documents sufficient
`to show the operation of any aspects or elements of such instrumentalities the patent
`claimant relies upon as embodying any asserted claims.
`
`
`2.3 Early Meeting of the Parties
`
`No later than 14 days after the service of the materials required by S.P.R. 2.1 and 2.2,
`counsel for the parties shall exchange Fed.R.Civ.P. 26(a)(1)(A) initial disclosures and meet in
`person or telephonically to prepare for the scheduling conference and prepare the joint
`Fed.R.Civ.P. 26(f) report. Both sides have the duty to schedule the meeting and comply
`with this paragraph, with plaintiff taking the lead. The parties should consider, where
`applicable, consolidation of related cases, including for trial, and transfer for pretrial
`purposes through the Judicial Panel on Multidistrict Litigation. The parties should consider
`the Federal Circuit Advisory Committee’s Model Order Limiting Excess Patent Claims and
`Prior Art. The Court welcomes, where relevant, references to the “policy levers” discussed
`in Burk & Lemley, The Patent Crisis. The parties should discuss ADR timing, recognizing
`
`3
`
`Page 11 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 5 of 11 Page ID #:746
`
`that settlement decisions, like other business decisions, are often made with incomplete
`information. Where necessary in multi-defendant cases and upon a showing of good cause,
`counsel may apply for a reasonable extension of time to hold the early meeting of the
`parties. The parties shall submit their joint Fed.R.Civ.P. 26(f) report no later than 14 days
`after the early meeting of the parties.
`
`2.4
`
`Scheduling Conference
`
` A
`
` scheduling conference will be held on the date set by the Court. Usually, each side will
`have five minutes to present any potentially dispositive issues it wishes to bring to the
`Court’s attention and to discuss its position on disputed scheduling issues. The
`presentations are intended to allow the Court to make informed decisions on scheduling and
`potential modifications of these rules. At the scheduling conference, the Court will issue a
`scheduling order.
`
`2.5
`
`No later than 14 days after the scheduling conference, each party opposing a claim of patent
`infringement shall serve on all parties Invalidity Contentions containing the information
`described as follows in S.P.R. 2.5.1 through 2.5.4.
`
`
`Invalidity Contentions
`
`2.5.1 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, author, and publisher. Prior art under 35 U.S.C. §
`102(b)/(a) 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), or other claim of
`derivation, 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).
`
`2.5.2 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.
`
`2.5.3 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
`
`4
`
`Page 12 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 6 of 11 Page ID #:747
`
`party contends is governed by 35 U.S.C. § 112(6)/(f), the identity of the structure(s),
`act(s), or material(s) in each item of prior art that performs the claimed function.
`
`2.5.4 Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35
`U.S.C. § 112(2)/(b), or enablement or written description under 35 U.S.C. §
`112(1)/(a) of any of the asserted claims.
`
`
`2.6 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 the items described as follows in
`S.P.R. 2.6.1 through 2.6.2, identifying the documents corresponding to each category by
`production number.
`
`
`2.6.1 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’s S.P.R. 2.1.3 chart.
`
`2.6.2 A copy or sample of the prior art identified under S.P.R. 2.5.1 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 relied upon shall be produced.
`
`
`2.7 Disclosure Requirement in Patent Cases for Declaratory Judgment of
`Invalidity Where No Claim of Infringement Has Been Made
`
`
`In all cases where a party files a complaint or other pleading seeking a declaratory judgment
`that a patent is invalid, S.P.R. 2.1 and 2.2 shall not apply unless and until a claim for patent
`infringement is made, and the party asserting patent infringement shall have 28 days (instead
`of 14 days) after the order setting the scheduling conference to make its S.P.R. 2.1 and 2.2
`disclosures. If the defendant does not assert a claim for patent infringement in its answer to
`the complaint, the party seeking a declaratory judgment of invalidity shall serve upon each
`opposing party its S.P.R. 2.5 and 2.6 disclosures no later than 14 days after the order setting
`the scheduling conference.
`
`
`3. CLAIM CONSTRUCTION
`
`3.1
`
`No later than 14 days after the S.P.R. 2.5 and 2.6 disclosures, each party shall serve on each
`other party a list of claim terms the party contends should be construed by the Court, and
`identify any claim term the party contends should be governed by 35 U.S.C. § 112(6)/(f).
`The parties shall then work to limit the terms in dispute by narrowing or resolving
`differences, and to jointly identify the 10 terms likely to be most significant to the case.
`
`Exchange of Proposed Terms for Construction
`
`5
`
`Page 13 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 7 of 11 Page ID #:748
`
`
`3.2 Exchange of Claim Constructions and Extrinsic Evidence
`
`No later than 14 days after the exchange of the S.P.R. 3.1 lists, the parties shall
`simultaneously exchange proposed constructions of each term identified by either party for
`claim construction. Each such construction shall also, for each term that any party contends
`is governed by 35 U.S.C. § 112(6)/(f), identify the structure(s), act(s), or material(s)
`corresponding to that term’s function. At the same time the parties exchange their
`constructions, each party shall also identify all references from the specification or
`prosecution history that support its proposed construction and designate any supporting
`extrinsic evidence including, without limitation, dictionary definitions, citations to learned
`treatises and prior art, and testimony of percipient and expert witnesses. Extrinsic evidence
`shall be identified by production number and by producing a copy if not previously
`produced. For any supporting witness, percipient or expert, the identifying party shall also
`provide a declaration containing that witness’ testimony regarding claim construction. The
`parties shall then meet and confer to narrow the issues and finalize preparation of a Joint
`Claim Construction and Prehearing Statement.
`3.3 Completion of Claim Construction Discovery
`
`No later than 28 days after service of the material required by S.P.R. 3.2, the parties shall
`complete all discovery desired for claim construction, including any depositions of fact and
`expert witnesses regarding claim construction.
`
`3.4
`
`No later than seven days after the completion of claim construction discovery, the parties
`shall complete and file a Joint Claim Construction and Prehearing Statement. The Joint
`Claim Construction and Prehearing Statement shall contain the information described as
`follows in S.P.R. 3.4.1 through 3.4.5.
`
`
`Joint Claim Construction and Prehearing Statement
`
`3.4.1 The parties’ agreed constructions.
`
`3.4.2 A chart showing each party’s proposed construction of each disputed term,
`together with an identification of all references from the specification or prosecution
`history that support that construction, and an identification of any extrinsic evidence
`supporting its proposed construction or undermining any other party’s proposed
`construction, including, but not limited to, dictionary definitions, citations to learned
`treatises and prior art, and testimony of percipient and expert witnesses.
`
`3.4.3 An identification of up to 10 terms whose construction will be most
`significant to the case. If the parties cannot agree on the 10 most significant terms,
`the parties shall identify the ones they agree are most significant and then they may
`evenly divide the remainder. While the Court may in its discretion construe more
`than 10 terms, the total terms identified by all parties as most significant cannot
`
`6
`
`Page 14 of 131
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document 84-1 Filed 05/11/20 Page 8 of 11 Page ID #:749
`
`exceed 10. For example, in a case involving two parties, if the parties agree upon the
`identification of five terms as most significant, each may only identify two additional
`terms as most significant. A failure to make a good faith effort to narrow the
`instances of disputed terms or otherwise participate in the meet and confer process of
`any of the provisions in S.P.R. 3 may expose counsel to sanctions, including under 28
`U.S.C. § 1927.
`
`3.4.4 Whether the party believes it will need more than 45 minutes total for all its
`presentation at the claim construction hearing, and if so, how much time, and why
`more time is necessary.
`
`3.4.5 Whether any party proposes to call one or more witnesses at the claim
`construction hearing, the identity of each such witness, and for each witness, a
`summary of the testimony including, for any expert, each opinion to be offered on
`claim construction. For expert witnesses, the Court may employ the “hot tub”
`technique.
`
`3.5 Claim Construction Briefs
`
`No later than seven days after they file the Joint Claim Construction and Prehearing
`Statement, the parties shall file simultaneous opening claim construction briefs of not more
`than 25 pages. Not later than 14 days after the opening briefs, the parties shall file
`simultaneous responsive briefs of not more than 10 pages. With its responsive brief, each
`party shall submit any presentation material (such as slide decks) it wishes to use at the claim
`construction hearing, and may submit a technology tutorial of no more than 20 minutes in
`length on CD-ROM, DVD, or USB thumb drive. At the claim construction hearing, the
`Court will not accept, and will not permit the parties to use, any presentation material that
`was not submitted with the briefing. If a party wishes to use a physical exhibit at the claim
`construction hearing, it shall file with its responsive brief photographs of the physical exhibit
`along with a statement that it intends to use the physical exhibit at the hearing. Concurrently
`with the filing of the responsive briefs, the parties shall jointly lodge with the Court the
`material described as follows in S.P.R. 3.5.1 through 3.5.3.
`
`
`3.5.1 A chart in Word or WordPerfect format providing the parties’ proposed
`constructions of each disputed term, with a column for the Court’s construction.
`
`
`
`3.5.2 An annotated copy of the certified file history for each asserted patent. Each
`file history shall be printed double-sided, indexed, tabbed, and compiled in a 3-ring
`binder. Each office action, response, filing, or other communication shall be given a
`separate tab, with the date of each clearly designated. Portions of the file history
`relied upon by the patentee for claim construction shall be highlighted in yellow.
`Portions of the file history relied upon by the accused infringer(s) shall be highlighted
`in blue. Portions of the f