Rule 26f Report For Patent Cases (Page 6 of 8) in pdf

Rule 26f Report For Patent Cases Page 6

(2)

Within ____________ days of its receipt of Defendant's Prior Art Statement

Plaintiff shall serve on Defendant "Plaintiff's Prior Art Statement", in which it

will state in detail its position on what the prior art relied upon by Defendant

shows, if its interpretation differs from Defendant's, and its position on why

the prior art does not invalidate the asserted patent claims.

(3)

Plaintiff's and Defendant's "Prior Art Statements" can be, but need not be, in

the form of expert reports.

(4)

Defendant can add prior art to its original Statement only by leave of the

Court.

(h)

Other Discovery Issues

(1) Defendant may postpone the waiver of any applicable attorney-client privilege

on topics relevant to claims of willful infringement, if any, until

____________, provided that all relevant privileged documents are

produced no later than ____________. All additional discovery regarding

the waiver will take place after ____________ and shall be completed by

____________.

(2) The parties have met and discussed whether any discovery should be

conducted in phases to reduce expenses or make discovery more effective

and present the following joint or individual proposals:

(3)

The parties have discussed the entry of a Protective Order. If either party

believes a Protective Order is necessary, the parties shall jointly submit with

this report a proposed Protective Order. The parties are encouraged,

though not required, to use Form 5 as a template for the proposed

Protective Order. If the parties disagree as to any terms to be included in

the Protective Order, they shall present with this report any issues of

disagreement, including but not limited to any issues relating to persons who

are entitled to have access to documents subject to protective treatment.

The Court shall endeavor to resolve any issues relating to the Protective

Order in connection with the pretrial conference.

Discovery Definitions

(i)

In responding to discovery requests, each party shall construe broadly terms of art

used in the patent field (e.g., "prior art", "best mode", "on sale"), and read them as

requesting discovery relating to the issue as opposed to a particular definition of

the term used. Compliance with this provision is not satisfied by the respondent

including a specific definition of the term of art in its response, and limiting its

response to that definition.

Rule 26f Report For Patent Cases Page 6