SPECIAL MATTERS - ADMIRALTY AND MARITIME RULES FOR THE UNITED

STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY LOCAL ADMIRALTY AND MARITIME RULE (a). SCOPE, CITATION AND DEFINITIONS LAMR (a)(1) Scope. These local admiralty and maritime rules apply only to civil actions that are governed by the Supplemental Rules for Certain Admiralty and Maritime Claims (Supplemental Rule or Rules). All other local rules are applicable in these cases, but to the extent that another local rule is inconsistent with the applicable local admiralty and maritime rules, the local admiralty and maritime rules shall govern.

23 LAMR (a)(2) Citation. The local admiralty and maritime rules may be cited by the letters "LAMR" and the lower case letters and numbers in parentheses that appear at the beginning of each section. The lower case letter is intended to associate the local admiralty and maritime rule with the Supplemental Rule that bears the same capital letter. LAMR (a)(3) Definitions.

As used in the local admiralty and maritime rules, "Court" means a United States District Court; "judicial officer" means a United States District Judge or a United States Magistrate Judge; "Clerk of Court" means the Clerk of the District Court and includes Deputy Clerks of Court; and "Marshal" means the United States Marshal and includes Deputy Marshals. LOCAL ADMIRALTY AND MARITIME RULE (b). MARITIME ATTACHMENT AND GARNISHMENT LAMR (b)(1) Affidavit that Defendant is Not Found Within the District. The affidavit required by Supplemental Rule B(1) to accompany the complaint shall list the efforts made by and on behalf of plaintiff to find and serve the defendant within the District.

LAMR (b)(2) Use of State Procedures. When the plaintiff invokes a state procedure in order to attach or garnish under Fed. R. Civ. P. 4(e), the process of attachment or garnishment shall so state. LOCAL ADMIRALTY AND MARITIME RULE (c). ACTIONS IN REM: SPECIAL PROVISIONS LAMR (c)(1) Intangible Property.

The summons issued pursuant to Supplemental Rule C(3) shall direct the person having control of intangible property to show cause no later than 14 days after service why the intangible property should not be delivered to the Court to abide further order of the Court. A judicial officer for good cause shown may lengthen or shorten the time. Service of the summons shall have the effect of an arrest of the intangible property and bring it within the control of the Court. Upon order of the Court, the person who is served may deliver or pay over to the Clerk of Court the intangible property proceeded against to the extent sufficient to satisfy the plaintiff's claim.

If such delivery or payment is made, the person served is excused from the duty to show cause. LAMR (c)(2) Publication of Notice of Action and Arrest. The notice required by Supplemental Rule C(4) shall be published by the plaintiff once in a newspaper of general circulation in the city or county where the property has been seized. The notice shall contain: (a) The Court, title and number of the action; (b) The date of arrest; (c) The identity of the property arrested; (d) The name, address, and telephone number of the attorney for plaintiff; (e) A statement that the claim of a person who is entitled to possession or who claims an interest pursuant to Supplemental Rule C(6) must be filed with the Clerk and served on the attorney for plaintiff within 14 days after publication; (f) A statement that an answer to the complaint must be filed and served within 21 days after the claim is filed, and that otherwise, default may be entered and condemnation ordered; (g) A statement that motions to intervene under Fed. R. Civ. P. 24 by persons claiming maritime liens or other interests and claims for expenses of administration under LAMR(e)(10)(b) shall be filed within a time fixed by the Court; and (h) The name, address and telephone number of the Marshal.

24 LAMR (c)(3) Notice Requirements. Default Judgments. A party seeking a default judgment in an action in rem must satisfy the Judge that (a) due notice of the action and arrest of the property has been given (1) by publication as required in LAMR (c)(2), and (2) by service of the complaint and warrant of arrest upon the Master or other person having custody of the property. (3) If the defendant property is a vessel documented under the laws of the United States, plaintiff must attempt to notify all persons identified as having an interest in the vessel in the United States Coast Guard Certificate of Ownership.

(4) If the defendant property is a vessel numbered as provided in the Federal Boat Safety Act, plaintiff must attempt to notify the owner as named in the records of the issuing authority. Ship Mortgage Act. For purposes of the Ship Mortgage Act, 46 U.S.C. § 31301 et seq., notice to the (b) Master of a vessel, or the person having physical custody thereof, by service of the warrant of arrest and complaint shall be deemed compliance with the notice requirements of such Act, as to all persons, except as to those who have recorded a notice of claim of lien. (c) Mailing.

The notification requirement is satisfied by mailing copies of the warrant of arrest and complaint to the person's address using any form of mail requiring a return receipt. LAMR (c)(4) Entry of Default and Default Judgment. After the time for filing a claim or answer has expired, the plaintiff may move for entry of default under Fed. R. Civ. P. 55(a). Default will be entered upon showing by affidavit, certificate of counsel, or other document complying with 28 U.S.C. § 1746 that: (a) Notice has been given as required in LAMR (c)(3)(a)(1) and (2), and (b) Notice has been attempted as required by LAMR (c)(3)(a)(3) and (4), where appropriate, and (c) The time for filing a claim or answer has expired, and (d) No one has appeared to claim the property.

The plaintiff may move for judgment under Fed. R. Civ. P. 55(b) at any time after default has been entered. LOCAL ADMIRALTY AND MARITIME RULE (d). POSSESSORY, PETITORY, AND PARTITION ACTIONS LAMR (d) Return Date. In an action under Supplemental Rule D, a judicial officer may order that the claim and answer be filed on a date earlier than 21 days after arrest.

The order may also set a date for expedited hearing of the action. LOCAL ADMIRALTY AND MARITIME RULE (e). ACTIONS IN REM AND QUASI IN REM: GENERAL PROVISIONS LAMR (e)(1) Itemized Demand for Judgment. The demand for judgment in every complaint filed under Supplemental Rule B or C shall allege the dollar amount of the debt or damages for which the action was commenced.

The demand for judgment shall also allege the nature of other items of damage. LAMR (e)(2) Salvage Action Complaints. In an action for a salvage award, the complaint shall allege the dollar value of the vessel, cargo, freight, and other property salved, and the dollar amount of the award claimed. LAMR (e)(3) Verification of Pleadings.

Every complaint in Supplemental Rule B, C, and D actions shall be verified upon oath or solemn affirmation or in the form provided by 28 U.S.C. § 1746, by a party or by an authorized officer of a corporate party. If no party or authorized corporate officer is readily available, verification of a complaint may be made by an agent, attorney in fact, or attorney of record, who shall state the 25 sources of the knowledge, information and belief contained in the complaint; declare that the document verified is true to the best of that knowledge, information, and belief; state why verification is not made by the party or an authorized corporate officer; and state that the affiant is authorized so to verify. A verification not made by a party or authorized corporate officer will be deemed to have been made by the party as if verified personally. If the verification was not made by a party or authorized corporate officer, any interested party may move, with or without requesting a stay, for the personal oath of a party or an authorized corporate officer, which shall be procured by commission or as otherwise ordered.

LAMR (e)(4) Review by Judicial Officer. Unless otherwise required by the judicial officer, the review of complaints and papers called for by Supplemental Rules B(1) and C(3) does not require the affiant party or attorney to be present. Any complaint presented to a judicial officer for review shall be accompanied by a form of order to the Clerk which, upon signature by the judicial officer, shall direct the arrest, attachment, or garnishment sought by the applicant. LAMR (e)(5) Instructions to the Marshal.

The party who requests a warrant of arrest or process of attachment or garnishment shall provide instructions to the Marshal. LAMR (e)(6) Property in Possession of United States Officer. When the property to be attached or arrested is in the custody of an employee or officer of the United States, the Marshal will deliver a copy of the complaint and warrant of arrest or summons and process of attachment or garnishment to that officer or employee if present, and otherwise to the custodian of the property. The Marshal will instruct the officer or employee or custodian to retain custody of the property until ordered to do otherwise by a judicial officer.

LAMR (e)(7) Security for Costs. In an action under the Supplemental Rules, a party may move upon notice to all parties for an order to compel an adverse party to post security for costs with the Clerk pursuant to Supplemental Rule E(2)(b). Unless otherwise ordered, the amount of security shall be $500. The party so notified shall post the security within seven days after the order is entered.

A party who fails to post security when due may not participate further in the proceedings. A party may move for an order increasing the amount of security for costs. LAMR (e)(8) Adversary Hearing. An adversary hearing following arrest or attachment or garnishment under Supplemental Rule E(4)(f) shall be conducted by the Court within seven days after a request for such hearing, unless otherwise ordered.

LAMR (e)(9) Security Deposit for Seizure of Vessels. The party(ies) who seek(s) arrest or attachment of a vessel or property aboard a vessel shall deposit with the Marshal $4000 for vessels more than 65 feet in length overall or $500 for vessels 65 feet in length overall or less. For the arrest or attachment of intangible property, there shall be deposited with the Marshal $500. A check drawn upon the attorney's account of a member of the bar of this Court, or of a law firm having members who are admitted to the bar of this Court, shall be accepted by the Marshal as payment.

These deposits shall be used to cover the expenses of the Marshal including, but not limited to, dockage, keepers, maintenance, and insurance. The party(ies) shall advance additional sums from time to time as requested by the Marshal to cover the estimated expenses until the property is released or disposed of as provided in Supplemental Rule E. LAMR (e)(10) Intervenor's Claims and Sharing of Marshal's Fees and Expenses. Intervention Before Sale. When a vessel or other property has been arrested, attached, or garnished, and (a) is in the hands of the Marshal or custodian substituted therefor, anyone having a claim against the vessel or property is required to present the claim by filing an intervening complaint under Fed. R. Civ. P. 24, and not by filing an original complaint, unless otherwise ordered by a judicial officer.

An order permitting intervention may be signed ex parte at the time of filing the motion, subject to the right of any party to object to such 26 intervention within 21 days after receipt of a copy of the motion and proposed pleading. Upon signing of an order permitting intervention the Clerk shall forthwith deliver a conformed copy of the intervening complaint to the Marshal, who shall deliver the copy to the vessel or custodian of the property. Intervenors shall thereafter be subject to the rights and obligations of parties, and the vessel or property shall stand arrested, attached, or garnished by the intervenor. An intervenor shall not be required to advance a security deposit to the Marshal for seizure of a vessel as required by LAMR (e)(9).

Release of property arrested, attached, or garnished by an intervenor shall be done in accordance with Supplemental Rule E. (b) Sharing Marshal's Fees and Expenses Before Sale. Upon motion by any party, security deposits may be ordered to be paid or shared by any party who has arrested, attached, or garnished a vessel or property aboard a vessel in amounts or proportions to be determined by a judicial officer. Intervention After Sale. After ratification of sale and payment of the purchase price, any person having a (c) claim against the vessel or property that arose before ratification must present the same by intervening complaint, pursuant to LAMR (e)(10)(a), against the proceeds of the sale and may not proceed against the vessel unless the Court shall otherwise order for good cause shown.

Where an intervening complaint prays service of process in rem, the filing of such intervening complaint with the Clerk shall be deemed to be a claim against such proceeds without the issuance of in rem process, unless the Court shall otherwise order for good cause shown. The Court shall allow a period of at least 30 days after due ratification of the sale for the submission of such claims. LAMR (e)(11) Custody of Property. (a) Safekeeping of Property.

When a vessel or other property is brought into the Marshal's custody by arrest or attachment, the Marshal shall arrange for adequate safekeeping, which may include the placing of keepers on or near the vessel. A substitute custodian in place of the Marshal may be appointed by order of the Court. Employment of Vessel's Officers and Crew by Marshal. All officers and members of the crew employed (b) on a vessel of 750 gross tons or more shall be deemed employees of the Marshal for the period of 120 hours after the attachment or arrest of the vessel unless the Marshal, pursuant to a court order, has notified the officers and members of the crew that they are not so employed or unless the vessel is released from attachment or arrest.

If the vessel is not released within 120 hours, the Marshal shall, on request of the seizing party, immediately thereafter designate which, if any, officers and members of the crew he or she is continuing to employ to preserve the vessel and shall promptly notify the remaining officers and members of the crew that they are no longer in his or her employ and are no longer in the service of the vessel and are free to depart from the vessel. The notice required by the preceding sentence shall be by written notice posted in a prominent place in each of the mess rooms or dining salons used by the officers and unlicensed personnel aboard the vessel. Normal Vessel Operations and Movement of the Vessel. Following arrest, attachment, or garnishment of (c) a vessel or property aboard a vessel, normal vessel operations shall be permitted to commence or continue unless otherwise ordered by the Court.

No movement of the vessel shall take place unless authorized by order of a judicial officer. Procedure for Filing Claims by Suppliers for Payment of Charges. A person who furnishes supplies or (d) services to a vessel, cargo, or other property in custody of the Court who has not been paid and claims the right to payment as an expense of administration shall submit an invoice to the Clerk in the form of a verified claim within the time period set by the Court for intervention after sale pursuant to LAMR (e)(10)(c). The supplier must serve copies of the claim on the Marshal, substitute custodian if one has been appointed, and all parties of record.

The Court may consider the claims individually or schedule a single hearing for all claims. LAMR (e)(12) Sale of Property. 27 (a) Notice. Notice of sale of property in an action in rem shall be published under such terms and conditions as set by the Court.

(b) Payment of Bid. These provisions apply unless otherwise ordered in the order of sale: The person whose bid is accepted shall immediately pay the Marshal the full purchase price if the bid is $1000 or less. If the bid exceeds $1000, the bidder shall immediately pay a deposit of at least $1000 or 10% of the bid, whichever is greater, and shall pay the balance within seven days after the day on which the bid was accepted. If an objection to the sale is filed within that seven-day period, the bidder is excused from paying the balance of the purchase price until seven days after the sale is confirmed.

Payment shall be made in cash, by certified check or by cashier's check. (c) Default. If the successful bidder does not pay the balance of the purchase price within the time allowed, the bidder is deemed to be in default. In such a case, the judicial officer may accept the second highest bid or arrange a new sale.

The defaulting bidder's deposit shall be forfeited and applied to any additional costs incurred by the Marshal because of the default, the balance being retained in the Registry of the Court awaiting its order. (d) Report of Sale by Marshal. At the conclusion of the sale, the Marshal shall forthwith file a written report with the Court of the fact of sale, the date, the price obtained, the name and address of the successful bidder, and any other pertinent information. (e) Time and Procedure for Objection to Sale.

An interested person may object to the sale by filing a written objection with the Clerk within seven days following the sale, serving the objection on all parties of record, the successful bidder, and the Marshal, and depositing such sum with the Marshal as determined by him or her to be sufficient to pay the expense of keeping the property for at least seven days. Payment to the Marshal shall be in cash, certified check or cashier's check. (f) Confirmation of Sale. A sale shall be confirmed by order of the Court within seven days, but no sooner than three days, after the sale.

If an objection to the sale has been filed, the Court shall hold a hearing on the confirmation of the sale. The Marshal shall transfer title to the purchaser upon the order of the Court. (g) Disposition of Deposits. Objection Sustained.

If an objection is sustained, sums deposited by the successful bidder will be (1) returned to the bidder forthwith. The sum deposited by the objector will be applied to pay the fees and expenses incurred by the Marshal in keeping the property until it is resold, and any balance remaining shall be returned to the objector. The objector will be reimbursed for the expense of keeping the property from the proceeds of a subsequent sale. Objection Overruled.

If the objection is overruled, the sum deposited by the objector will be applied to (2) pay the expense of keeping the property from the day the objection was filed until the day the sale is confirmed, and any balance remaining will be returned to the objector forthwith. LAMR (e)(13) Discharge of Stipulations for Value and Other Security. When an order is entered in any cause marking the case dismissed or settled, the entry shall operate as a cancellation of all stipulations for value or other security provided to release the property seized that were filed in the case, unless otherwise provided in the order or by the Court. LOCAL ADMIRALTY AND MARITIME RULE (f).

LIMITATION OF LIABILITY LAMR (f) Security for Costs. The amount of security for costs under Supplemental Rule F(1) shall be $250, and it may be combined with the security for value and interest, unless otherwise ordered. 28 Amended: June 19, 2013 L. Civ. R. 9.3 SPECIAL MATTERS - LOCAL PATENT RULES FOR THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY TABLE OF CONTENTS 1. 2.

3. 4.

SCOPE OF RULES

Title 1.1. 1.2. Scope and Construction 1.3. Modification of these Rules Effective Date 1.4.

1.5. Patent Pilot Project GENERAL PROVISIONS 2.1. Governing Procedure (a) Initial Scheduling Conference Exchange of Expert Materials 2.2. Confidentiality 2.3.

Relationship to Federal Rules of Civil Procedure 2.4.

PATENT DISCLOSURES 3.1.

Disclosure of Asserted Claims and Infringement Contentions 3.2. Document Production Accompanying Disclosure 3.2A. Non-Infringement Contentions and Responses Invalidity Contentions 3.3. 3.4.

Document Production Accompanying Invalidity Contentions 3.4A. Responses to Invalidity Contentions 3.5. Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity (a) (b) Invalidity Contentions If No Claim of Infringement Inapplicability of Rule 3.6. Disclosure Requirements for Patent Cases Arising Under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”) 3.7.

Amendments 3.8. Advice of Counsel CLAIM CONSTRUCTION PROCEEDINGS 4.1. 4.2. 4.3.

4.4. Completion of Claim Construction Discovery 4.5. Claim Construction Submissions 4.6. Claim Construction Hearing Exchange of Proposed Terms for Construction Exchange of Preliminary Claim Constructions and Extrinsic Evidence Joint Claim Construction and Prehearing Statement L. Civ. R. 9.3 -- LOCAL PATENT RULES 1.

SCOPE OF RULES L.

Pat.

R. 1.1.

Title. 29 These are the Local Patent Rules for the United States District Court for the District of New Jersey. They should be cited as “L. Pat.

R. .” L. Pat.

R. 1.2.

Scope and Construction. These rules apply to all civil actions filed in or transferred to this Court which allege infringement of a patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a declaratory judgment that a patent is not infringed, is invalid or is unenforceable. The Local Civil Rules of this Court shall also apply to such actions, except to the extent that they are inconsistent with these Local Patent Rules. If the filings or actions in a case do not trigger the application of these Local Patent Rules under the terms set forth herein, the parties shall, as soon as such circumstances become known, meet and confer for the purpose of agreeing on the application of these Local Patent Rules to the case and promptly report the results of the meet and confer to the Court.

L. Pat.

R. 1.3.

Modification of these Rules. The Court may modify the obligations or deadlines set forth in these Local Patent Rules based on the circumstances of any particular case, including, without limitation, the simplicity or complexity of the case as shown by the patents, claims, products, or parties involved. Such modifications shall, in most cases, be made at the initial Scheduling Conference, but may be made at other times by the Court sua sponte or upon a showing of good cause. In advance of submission of any request for a modification, the parties shall meet and confer for purposes of reaching an agreement, if possible, upon any modification.

L. Pat.

R. 1.4.

Effective Date. These Local Patent Rules take effect on January 1, 2009. They govern patent cases filed, transferred or removed on or after that date. For actions pending prior to the effective date, the Court will confer with the parties and apply these rules as the Court deems practicable.

REPEALED EFFECTIVE JULY 6, 2021.

L. Pat.

R. 1.5.

Patent Pilot Project. Procedures for allocation and assignment of patent cases under the Patent Pilot Project pursuant to Pub. L. No. 111-349, § 1, are provided in L. Civ. R. 40.1(f) and Appendix T to the Local Civil Rules. 2.

GENERAL PROVISIONS L.

Pat.

R. 2.1.

Governing Procedure. (a) Initial Scheduling Conference. When the parties confer pursuant to Fed. R. Civ. P. 26(f), the parties shall discuss and address in the Discovery Plan submitted pursuant to Fed. R. Civ. P. 26(f) and L.Civ.R. 26.1(b)(2) the topics set forth in those rules and the following topics: (1) Proposed modification of the obligations or deadlines set forth in these Local Patent Rules to ensure that they are suitable for the circumstances of the particular case (see L. Pat. R. 1.3); (2) The scope and timing of any claim construction discovery including disclosure of and discovery from any expert witness permitted by the court; (3) 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; (4) How the parties intend to educate the Court on the patent(s) at issue; and 30 (5) The need for any discovery confidentiality order and a schedule for presenting certification(s) required by L.Civ.R. 5.3(b)(2).; and (6) The availability and timing of production of invention records (including inventor laboratory notebooks and analytical test results); The availability and timing of production of ANDA product research and development documents; The availability and timing of production of ANDA product samples; The date of conception and the date of reduction to practice for each patent asserted in the action, if applicable; Each inventor's availability for deposition in the matter; Availability of foreign witnesses for deposition and foreign documents; Whether there is a 30-month stay and if so, when it ends; A date for substantial completion of document production and a method for determining compliance; Any other issues or matters that a party believes are time sensitive.

L. Pat.

R. 2.2.

Confidentiality. Discovery cannot be withheld or delayed on the basis of confidentiality absent Court order. Pending entry of a confidentiality order, discovery and disclosures deemed confidential by a party shall be produced to the adverse party for outside counsel's Attorney's Eyes Only, solely for purposes of the pending case and shall not be disclosed to the client or any other person. Within 14 days after the initial Scheduling Conference, (a) the parties shall present a consent confidentiality order under L. Civ. R. 5.3(b)(2), or (b) in the absence of consent, a party shall apply for entry of a confidentiality order under L. Civ. R. 5.3(b)(5) and L. Civ. R. 37.1(a)(1).

The Court will decide those issues and enter the appropriate order, or the Court may enter the District's approved Confidentiality Order as set forth in Appendix S to these Rules if appropriate, in whole or in part. With respect to all issues of discovery confidentiality, the parties shall comply with all terms of L.Civ.R. 5.3.

L. Pat.

R. 2.3.

Relationship to Federal Rules of Civil Procedure. Except as provided in this paragraph or as otherwise ordered, it shall not be a 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 Local Patent Rules, absent other legitimate objection. A party may object, however, to responding 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 that they are premature in light of the timetable provided in the Local Patent Rules: (a) Requests seeking to elicit a party's claim construction position; (b) Requests seeking to elicit a comparison of the asserted claims and the accused apparatus, product, device, process, method, act, or other instrumentality; 31 (c) Requests seeking to elicit a comparison of the asserted claims and the prior art; and (d) Requests seeking to elicit the identification of any advice of counsel, and related documents. Where a party properly objects to a discovery request (or declines to provide information in its initial disclosures under Fed. R. Civ. P. 26(a)(1 as set forth above, that party shall provide the requested information on the date on which it is required to be provided to an opposing party under these Local Patent Rules or as set by the Court, unless there exists another legitimate ground for objection.

L. Pat.

R. 2.4.

Exchange of Expert Materials. (a) Disclosures of claim construction expert materials and depositions of such experts are governed by L. Pat.

R. 4.1, et seq., unless otherwise ordered by the Court.

(b) Upon a sufficient showing that expert reports related to issues other than claim construction cannot be rendered until after a claim construction ruling has been entered by the Court, the disclosure of expert materials related to issues other than claim construction will not be required until claim construction issues have been decided. 3.

PATENT DISCLOSURES L.

Pat. R. 3.l. Disclosure of Asserted Claims and Infringement Contentions. Not later than 14 days after the initial 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 following information: (a) 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 shall be as specific as possible.

Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall 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) Other than for design patents, 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), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function; (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; (e) Other than for design patents, whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality; (f) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; 32 (g) If a party asserting 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; and (h) If a party asserting patent infringement alleges willful infringement, the basis for such allegation.

L. Pat.

R. 3.2.

Document Production Accompanying Disclosure. With the “Disclosure of Asserted Claims and Infringement Contentions,” the party asserting patent infringement shall produce to each opposing party or make available for inspection and copying: (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 herein shall 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 L. Pat. R. 3.1(f), whichever is earlier; (c) A copy of the file history for each patent in suit (or so much thereof as is in the possession of the party asserting patent infringement); (d) All documents evidencing ownership of the patent rights by the party asserting patent infringement; (e) If a party identifies instrumentalities pursuant to L. Pat.

R. 3.1(g), documents sufficient to show the operation of any aspects or elements of such instrumentalities the party asserting patent infringement relies upon as embodying any asserted claims; and (f) All documents or things that a party asserting patent infringement intends to rely on in support of any of its infringement contentions under these Rules. (g) With respect to each of the above document productions, the producing party shall separately identify by production number which documents correspond to each category.

L. Pat.

R. 3.2A.

Non- Infringement Contentions and Responses. Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing an assertion of patent infringement shall serve on all parties its “Noninfringement Contentions and Responses” to Infringement Contentions which shall include the following: (a) The written basis for its Non-Infringement Contentions and responses; (b) The party's responses shall follow the order of the infringement claims chart that is required under L.Pat.R. 3.1(c), and shall set forth the party's agreement or disagreement with each allegation therein, including any additional or different claims at issue; (c) The production or the making available for inspection of any document or thing that it intends to rely on in defense against any such Infringement Contentions.

L. Pat.

R. 3.3.

Invalidity Contentions. 33 Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing an assertion of patent infringement shall serve on all parties its "Invalidity Contentions” which shall contain 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 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, and where feasible, author and publisher.

Prior art under 35 U.S.C. § 102(b) 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) 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); (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; (c) Other than for design patents, 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; and (d) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(b) or enablement or written description under 35 U.S.C. § 112(1) of any of the asserted claims including a detailed explanation of the bases for the asserted grounds.

L. Pat.

R. 3.4.

Document Production Accompanying Invalidity Contentions. With the “Invalidity Contentions," the party opposing an assertion of patent infringement shall 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, composition, or structure of any aspects or elements of an Accused Instrumentality identified by the party asserting patent infringement in its L.Pat.R. 3.1(c) chart; and (b) A copy or sample of the prior art identified pursuant to L. Pat. 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 shall be produced.

(c) A party asserting invalidity shall also produce any other document or thing on which it intends to rely in support of its assertion. (d) With respect to each of the above document productions, the producing party shall separately identify by production number which documents correspond to each category.

L. Pat.

R. 3.4A.

Responses to Invalidity Contentions. 34 Not later than 14 days after service upon it of the “Invalidity Contentions,” each party defending the validity of the patent shall serve on all parties its “Responses to Invalidity Contentions” which shall include the following: (a) For each item of asserted prior art, the identification of each limitation of each asserted claim that the party believes is absent from the prior art, except for design patents, where the party shall supply an explanation why the prior art does not anticipate the claim; (b) obvious; If obviousness is alleged, an explanation of why the prior art does not render the asserted claim (c) The party's responses shall follow the order of the invalidity chart required under L. Pat. R. 3.3(c), and shall set forth the party's agreement or disagreement with each allegation therein and the written basis thereof; (d) For each asserted grounds of invalidity under L.Pat.R.3.3(d), a detailed explanation of how the asserted claim complies with 35 U.S.C. §112; and (e) The production or the making available for inspection and copying of any document or thing that the party intends to rely on in support of its Responses herein.

L. Pat.

R. 3.5.

Disclosure Requirement in Patent Cases for Declaratory Judgment of Invalidity. (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 invalid, L. Pat.

R. 3.1 and 3.2 shall not apply unless and until a claim for patent infringement is made by a party. If the declaratory defendant does not assert a claim for patent infringement in its answer to the complaint, or within 14 days after the Initial Scheduling Conference, whichever is later, the party seeking a declaratory judgment of invalidity shall serve upon each opposing party its Invalidity Contentions that conform to L. Pat. R. 3.3 and produce or make available for inspection and copying the documents described in L. Pat.

R. 3.4.

Each party opposing the declaratory plaintiff's complaint seeking a declaratory judgment of invalidity shall serve its “Responses to Invalidity Contentions” as required under L. Pat.

R. 3.4A.

(b) Inapplicability of Rule. This L. Pat. R. 3.5 shall not apply to cases in which a request for a declaratory judgment that a patent is invalid is filed in response to a complaint for infringement of the same patent, in which case the provisions of L. Pat.

R. 3.3 and 3.4 shall govern.

L. Pat.

R. 3.6.

Disclosure Requirements for Patent Cases Arising Under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). The following applies to all patents subject to a Paragraph IV certification in cases arising under 21 U.S.C. § 355 (commonly referred to as “the Hatch-Waxman Act”). This rule takes precedence over any conflicting provisions in L. Pat.

R. 3.1 to 3.5 for all cases arising under 21 U.S.C. § 355.

(a) On the date a party answers, moves, or otherwise responds, each party who is an ANDA filer shall produce to each party asserting patent infringement the entire Abbreviated New Drug Application or New Drug Application that is the basis of the case in question. (b) Not more than seven days after the initial Scheduling Conference, each party asserting patent infringement shall serve on all parties a “Disclosure of Asserted Claims” that lists each claim of each patent that 35 is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted. (c) Not more than 30 days after the initial Scheduling Conference, each party opposing an assertion of patent infringement shall provide to each party asserting patent infringement the written basis for its "Invalidity Contentions," for any patents referred to in the opposing party's Paragraph IV Certification, which shall contain all disclosures required by L. Pat.

R. 3.3.

(d) Any "Invalidity Contentions" disclosed under L. Pat. R. 3.6(c) shall be accompanied by the production of documents required under L. Pat.

R. 3.4(b) and (c).

(e) Not more than 30 days after the initial Scheduling Conference, each party opposing an assertion of patent infringement shall provide to each party asserting patent infringement the written basis for its "NonInfringement Contentions," for any patents referred to in the opposing party's Paragraph IV Certification which shall include a claim chart identifying each claim at issue in the case and each limitation of each claim at issue. The claim chart shall specifically identify for each claim which claim limitation(s) is/(are) literally absent from each opposing party's allegedly infringing Abbreviated New Drug Application or New Drug Application. (f) Any “Non-Infringement Contentions” disclosed under L. Pat. R. 3.6(e) shall be accompanied by the production of any document or thing that each party who is an ANDA filer intends to rely on in defense against any infringement contentions by each party asserting patent infringement.

(g) Not more than 45 days after the disclosure of the “Non-Infringement Contentions” as required by L. Pat. R. 3.6(e), each party asserting patent infringement shall provide each opposing party with a “Disclosure of Asserted Claims and Infringement Contentions,” for all patents referred to in each opposing party's Paragraph IV Certification, which shall contain all disclosures required by L. Pat.

R. 3.1.

The infringement contentions shall be limited to the claims identified in L. Pat.

R. 3.6(b).

(h) Any “Disclosure of Asserted Claims and Infringement Contentions” disclosed under L. Pat. R. 3.6(g), shall be accompanied by the production of documents required under L. Pat.

R. 3.2.

(i) Not more than 45 days after the disclosure of “Invalidity Contentions” as required by L. Pat.

R. 3.

6(c), the party defending the validity of the patent shall serve on each other party its “Responses to Invalidity Contentions” as required under L. Pat.

R. 3.4A.

(j) Each party that has an ANDA application pending with the Food and Drug Administration (“FDA”) that is the basis of the pending case shall: (1) notify the FDA of any and all motions for injunctive relief no later than three business days after the date on which such a motion is filed; and (2) provide a copy of all correspondence between itself and the FDA pertaining to the ANDA application to each party asserting infringement, or set forth the basis of any claim of privilege for such correspondence pursuant to L.Civ.R. 34.1, no later than seven days after the date it sends same to the FDA or receives same from the FDA.

L. Pat.

R. 3.7.

Amendments. Amendment of any contentions, disclosures, or other documents required to be filed or exchanged pursuant to these Local Patent Rules may be made only by order of the Court upon a timely application and showing of good cause. The application shall disclose whether parties consent or object. Non-exhaustive examples of circumstances that may, absent undue prejudice to the adverse party, support a finding of good cause include: (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; (c) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention; (d) disclosure of an infringement contention by a Hatch- 36 Waxman Act party asserting infringement under L. Pat.

R. 3.6(g) that requires response by the adverse party because it was not previously presented or reasonably anticipated; and (e) consent by the parties in interest to the amendment and a showing that it will not lead to an enlargement of time or impact other scheduled deadlines. The duty to supplement discovery responses under Fed. R. Civ. P. 26(e) does not excuse the need to obtain leave of Court to amend contentions, disclosures, or other documents required to be filed or exchanged pursuant to these Local Patent Rules.

L. Pat.

R. 3.8.

Advice of Counsel. Unless otherwise ordered by the Court, not later than 30 days after entry of the Court’s claim construction order, or upon such other date as set by the Court, each party relying upon advice of counsel as part of a patent-related claim or defense for any reason shall: (a) Produce or make available for inspection and copying any written advice and documents related thereto 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 thereto for which the attorney-client and work product protection have been waived; and (c) Serve a privilege log identifying any documents other than those identified in subpart (a) above, except those authored by counsel acting solely as trial counsel, relating to the subject matter of the advice which 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 this L. Pat. R. 3.8 shall not be permitted to rely on advice of counsel for any purpose absent a stipulation of all parties or by order of the Court.

4.

CLAIM CONSTRUCTION PROCEEDINGS L.

Pat.

R. 4.1.

Exchange of Proposed Terms for Construction. (a) Not later than 14 days after service of the “Responses to Invalidity Contentions” pursuant to L. Pat. R. 3.4A, not later than 45 days after service upon it of the “Non-Infringement Contentions and Responses” pursuant to L. Pat. R. 3.2A in those actions where validity is not at issue (and L. Pat.

R. 3.3 does not apply), or, in all cases in which a party files a complaint or other pleading seeking a declaratory judgment not based on validity, not later than 14 days after the defendant serves an answer that does not assert a claim for patent infringement (and L. Pat. R. 3.1 does not apply), each party shall serve on each other party a list of claim terms which that party contends should be construed by the Court, and identify any claim term which that party contends should be governed by 35 U.S.C. § 112(6). (b) The parties shall thereafter meet and confer for the purposes of limiting the terms in dispute by narrowing or resolving differences and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement. (c) This rule does not apply to design patents.

L. Pat.

R. 4.2.

Exchange of Preliminary Claim Constructions and Extrinsic Evidence. (a) Not later than 21 days after the exchange of the lists pursuant to L. Pat. R. 4.1, the parties shall simultaneously exchange preliminary proposed constructions of each term identified by any party for claim construction, including constructions for each term for which "plain and ordinary" meaning is asserted. Each such "Preliminary Claim Construction" shall also, for each term which any party contends is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that term's function.

37 (b) At the same time the parties exchange their respective “Preliminary Claim Constructions,” each party shall also identify all extrinsic evidence, all references from the specification or prosecution history that support its preliminary proposed construction and designate any supporting extrinsic evidence including, without limitation, dictionary definitions, citations to learned treatises and prior art and testimony of all witnesses including expert witnesses. Extrinsic evidence shall be identified by production number or by producing a copy if not previously produced. With respect to all witnesses including experts, the identifying party shall also provide a description of the substance of that witness' proposed testimony that includes a listing of any opinions to be rendered in connection with claim construction. (c) Not later than 14 days after the parties exchange the “Preliminary Claim Constructions” under this rule, the parties shall exchange an identification of all intrinsic evidence and extrinsic evidence that each party intends to rely upon to oppose any other party's proposed construction, including without limitation, the evidence referenced in L. Pat.

R. 4.2(b).

(d) The parties shall thereafter meet and confer for the purposes of narrowing the issues and finalizing preparation of a Joint Claim Construction and Prehearing Statement. (e) This rule does not apply to design patents.

L. Pat.

R. 4.3.

Joint Claim Construction and Prehearing Statement. Not later than 30 days after the exchange of “Preliminary Claim Constructions” under L. Pat. R. 4.2(a), the parties shall complete and file a Joint Claim Construction and Prehearing Statement, which shall contain the following information: (a) (b) The construction of those terms on which the parties agree; Each party's proposed construction of each disputed term, together with an identification of all references from the intrinsic evidence that support that construction, and an identification of any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction or to oppose any other party's proposed construction, including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art, and testimony of all witnesses including experts; (c) An identification of the terms whose construction will be most significant to the resolution of the case. The parties shall also identify any term whose construction will be case or claim dispositive or substantially conducive to promoting settlement, and the reasons therefor; (d) The anticipated length of time necessary for the Claim Construction Hearing; and (e) 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 his or her testimony including, for any expert, each opinion to be offered related to claim construction.

(f) Any evidence that is not identified under L. Pat. R. 4.2(a) through 4.2(c) inclusive shall not be included in the Joint Claim Construction and Prehearing Statement. (g) This rule does not apply to design patents.

L. Pat.

R. 4.4.

Completion of Claim Construction Discovery. Not later than 30 days after service and filing of the Joint Claim Construction and Prehearing Statement, the parties shall complete all discovery relating to claim construction, including any depositions with respect to claim construction of any witnesses, other than experts, identified in the Preliminary Claim Construction 38 statement (L. Pat. R. 4.2) or Joint Claim Construction and Prehearing Statement (L. Pat.

R. 4.3).

This rule does not apply to design patents.

L. Pat.

R. 4.5.

Claim Construction Submissions. (a) Not later than 45 days after serving and filing the Joint Claim Construction and Prehearing Statement, the parties shall contemporaneously file and serve their opening Markman briefs and any evidence supporting claim construction, including experts’ certifications or declarations (“Opening Markman Submissions”). (b) Unless otherwise ordered by the Court, any discovery from an expert witness who submitted a certification or declaration under L. Pat. R. 4.5(a) shall be concluded within 30 days after filing the Opening Markman Submissions.

(c) Not later than 60 days after the filing of the Opening Markman Submissions, the parties shall contemporaneously file and serve responding Markman briefs and any evidence supporting claim construction, including any responding experts’ certifications or declarations. (d) With regard to design patents only, subsections (a), (b), and (c) shall not apply. Where a design patent is at issue, not later than 45 days after the submission of “Non-Infringement Contentions and Responses” under L. Pat. R. 3.2A and/or “Responses to Invalidity Contentions” under L. Pat.

R. 3.4A, the parties shall contemporaneously file and serve opening Markman briefs and any evidence supporting claim construction. Not more than 30 days after the filing of the opening Markman briefs, the parties shall contemporaneously file and serve responding Markman briefs and any evidence supporting claim construction.

L. Pat.

R. 4.6.

Claim Construction Hearing. Within two weeks following submission of the briefs and evidence specified in L. Pat. R. 4.5(c) and (d), counsel shall confer and propose to the Court a schedule for a Claim Construction Hearing, to the extent the parties or the Court believe a hearing is necessary for construction of the claims at issue. Adopted: December 11, 2008; Effective January 1, 2009.

Amended: March 18, 2011; October 4, 2011; June 19, 2013; February 1, 2017, March 24, 2021; July 6, 2021. UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY REPORT OF THE LOCAL PATENT RULES COMMITTEE Explanatory Notes to Proposed Local Patent Rules In June 2008, Chief Judge Garrett E. Brown, Jr., appointed a special Local Patent Rules Committee consisting of District Judges, Magistrate Judges, a cross-section of attorneys, and a Deputy Clerk of the Court, under the Chairmanship of the Hon. Jerome B. Simandle, U.S.D.J. The purpose of the Committee was to address whether there was a need for separate local rules governing patent cases in this District, and if so, to evaluate such potential rules. The consensus of the Committee was that a recommended standard protocol for patent cases would likely be helpful to the Court and to the parties. The Committee further concluded that it should look to other districts where local patent rules were already in place in developing a framework for this District.

As a starting point, the Committee surveyed all districts where local patent rules were then in effect. Based on that review, the Committee concluded that it would use the Patent Local Rules of the Northern District of California as a template, with variants as may be appropriate in light of the practices, procedures, and Local Civil Rules that have been followed in this District. 39 First among those considerations is the special role our Magistrate Judges play in case management. For example, in contrast to many other districts, the Magistrate Judges in New Jersey have primary responsibility for most pre-trial activities.

The Magistrate Judges, therefore, are able to efficiently “customize” discovery and scheduling based on the needs of the parties and the subject matter of the lawsuit. Thus, the Committee took into account that in some instances the Court should have the discretion, where it may deem it appropriate, to accelerate or modify the schedule set forth in the local patent rules for less complex cases where the technology is relatively simple or there is little dispute as to the structure, function or operation of the accused item. With this in mind, the Committee recognized that local patent rules should be consistent with current practices of the Court when providing guidance in the management of patent cases as well as providing to the parties some predictability in the format of the process. Another special consideration addressed by the Committee was the entry of a discovery confidentiality order early in the case consistent with the obligations under Third Circuit authority, which obligations are not ordinarily found outside of the Circuit.

The Committee also considered certain procedural matters that might apply to Hatch-Waxman cases as these types of actions are in some respect different from the conventional patent cases. In the end, drawing on the existing local patent rules in other districts and modified as warranted by the Committee, the proposed local patent rules were submitted to the Board of Judges in September 2008. Although the charge of the Committee was to investigate the need for, and as appropriate, propose local patent rules, it also recognized the changes in patent law and applicable authority may warrant future modifications to these rules. Accordingly, it is the recommendation of the Committee to continue to oversee and evaluate the implementaton and operation of these Rules and to consider modifications where appropriate or necessary.

The Committee stands ready to serve if requested by the Court to do so. Local Patent Rules Committee Hon. Jerome B. Simandle, U.S.D.J., Chair Hon. Stanley R. Chesler, U.S.D.J. Hon. Mary L. Cooper, U.S.D.J. Hon. Joseph A. Greenaway, U.S.D.J. Hon. Faith S. Hochberg, U.S.D.J. Hon. Jose L. Linares, U.S.D.J. Hon. William Martini, U.S.D.J. Hon. Peter G. Sheridan, U.S.D.J. Hon. Tonianne J. Bongiovanni, U.S.M.J. Hon. Joel Schneider, U.S.M.J. Hon. Patty Shwartz, U.S.M.J. John T. O’Brien, Legal Coordinator Arnold B. Calmann, Esq. Thomas Curtin, Esq. Marc S. Friedman, Esq.

Dennis F. Gleason, Esq. 40 Mary Sue Henifin, Esq. Peter Menell, Prof. of Law, Univ. of Calif., Berkeley School of Law William L. Mentlik, Esq. George F. Pappas, Esq.

Matthew D. Powers, Esq. Donald Robinson, Esq. Robert G. Shepherd Esq. September 10, 2008 UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY REPORT OF THE LOCAL PATENT RULES COMMITTEE Explanatory Notes for 2011 Amendments In September 2010, almost two years after the Local Patent Rules had been adopted, the Committee reconvened to assess the impact and effectiveness of the Local Patent Rules.

Based on the experiences of members of the Committee from the Judiciary and the Bar, there was an unanimous view that the Local Patent Rules have served to benefit the Court and the parties in patent litigation. Notwithstanding those positive experiences, the Committee also believed that certain amendments might be warranted. Those areas of proposed changes include: (a) design patents; (b) certain disclosure obligations; (c) clarifying disclosure of evidence in connection with a Markman hearing; (d) need for responses to infringement and invalidity contentions; (e) specific modifications for disclosures exclusive to Hatch-Waxman cases; (f) amendments to required submissions or filings; and clarification in the language of rules. Subcommittees were appointed for each of the subject areas and shortly thereafter recommendations were proposed to the full Committee, which discussed them at length.

With regard to design patents, shortly after the Committee had submitted its proposed patent rules in 2008, the Court of Appeals for the Federal Circuit issued its en banc ruling in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), which held, in part, that a trial court should not provide a detailed verbal description of the claimed design. This holding is in tension with certain of the Local Patent Rules which call for a narrative claims chart, claim construction contentions and a claim construction hearing. The Committee determined that in light of the Federal Circuit authority, modifications were appropriate to better suit the needs of design patents.

See L. Pat. R. 3.1(c) and (e); 3.3(c); 3.4A(c); 4.1(c); 4.2(e); 4.3(g); 4.4; and 4.5(d). While the Local Patent Rules expressly reference obligations regarding infringement and invalidity, the Committee noted that in cases outside of Hatch-Waxman matters, no provision presently exists that requires the allegedly infringing party to provide its non-infringement contentions. Accordingly, the Committee proposed disclosure obligations for non-infringement similar to those required for assertion of infringement and invalidity.

See L. Pat.

R. 3.2A(a) and (b); and 3.4(c).

As to invalidity contentions, while there are disclosure obligations by a party asserting invalidity, the Committee determined that a requirement that mandates that the patent holder respond in kind to invalidity contentions will provide parity between the parties and serve to focus the invalidity challenge. See L. Pat.

R. 3.4A(a),(b) and (c); and 3.5 (a).

41 To help ensure that the spirit of the disclosure obligations is fully appreciated, the Committee recommended various rules requiring parties to disclose all materials that they intend to rely upon in connection with infringement, non-infringement, and invalidity contentions and or responses thereto. See L. Pat.

R. 3.2(f); 3.2A(c); 3.4(c); and 3.4A(d).

In the area of Hatch-Waxman actions under L. Pat. R. 3.6, the Committee concluded that in order to help narrow the focus of a generic’s invalidity contentions, the patent holder should be required to provide early disclosure of each patent and patent claim for infringement to which its infringement contentions would be limited. This eliminates speculation and added work by the generics in formulating their non-infringement and invalidity contentions. Changes recommended to disclosure obligations in non-Hatch-Waxman cases as they would apply in the Hatch-Waxman context were also proposed.

In addition, the Committee determined that the ANDA filer should produce its Abbreviated New Drug Application or New Drug Application shortly after filing an answer or motion as this is a fundamental element of the Hatch-Waxman action. It was also recommended that the ANDA filer be required to advise the Food and Drug Administration (“FDA”) of any motion for injunctive relief and supply the parties with relevant communications with the FDA which concern the subject matter filed in the District Court. This is intended to keep the FDA and parties apprised of any proceedings that may impact the ongoing litigation. See L. Pat.

R. 3.6(a), (b), (c), (i) and (j).

In an effort to avoid potential misunderstandings as to the scope of permitted amendments to obligations under the Local Patent Rules, the Committee sought to clarify that amendments apply to all filings with the Court or exchanges between the parties as may be required by the Local Patent Rules. The proposed rule also makes plain that any amendments require the approval of the Court, notwithstanding consent by the parties. See L. Pat.

R. 3.7.

Finally, as to claim construction and claim construction proceedings, the Committee proposed adding language to clarify that evidence to be used must be disclosed in a timely fashion. See L. Pat.

R. 4.2(b) and (c); and 4.3(f).

In December 2010, the Committee submitted the proposed amendments to the Board of Judges for their consideration. Local Patent Rules Committee Hon. Jerome B. Simandle, U.S.D.J., Chair Hon. Stanley R. Chesler, U.S.D.J. Hon. Mary L. Cooper, U.S.D.J. Hon. Faith S. Hochberg, U.S.D.J. Hon. Peter G. Sheridan, U.S.D.J. Hon. Tonianne J. Bongiovanni, U.S.M.J. Hon. Joel Schneider, U.S.M.J. Hon. Mark Falk, U.S.M.J. Hon. Patty Shwartz, U.S.M.J. John T. O’Brien, Legal Coordinator Arnold B. Calmann, Esq. Thomas Curtin, Esq. David De Lorenzi, Esq.

Marc S. Friedman, Esq. Dennis F. Gleason, Esq. Mary Sue Henifin, Esq. Norman E. Lehrer, Esq.

42 Peter Menell, Prof. of Law, Univ. of Calif., Berkeley School of Law William L. Mentlik, Esq. George F. Pappas, Esq. Matthew D. Powers, Esq. Donald Robinson, Esq.

Robert G. Shepherd Esq. December 2, 2010 UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY REPORT OF THE LOCAL PATENT RULES COMMITTEE Explanatory Notes for 2017 Amendments The Local Patent Rules were implemented in September 2008, and certain amendments to the Rules were adopted with the March 2011 revision to the Rules. Over the course of the last ten months, the Local Patent Rules Advisory Committee has once again examined the operation of the Local Patent Rules and, consistent with past history, has found that the Rules generally are operating well, and provide a rational and reasonably efficient structure for the judicial administration, litigation and trial of patent matters in the District of New Jersey. However, as a result of learning from experiences in operating under the Rules since they were last amended, certain issues have arisen that led to the Committee’s consideration of possible modifications to the Rules.

In order to balance and clarify certain issues, expedite issues for the Court and Magistrate Judges in particular, and attempt to enhance the overall pretrial process, the Committee considered several potential amendments to the Rules. Committee Process-- Committee members identified issues of interest or potential amendments for consideration by the entire Committee . The Committee then identified the issues of highest order of priority. That process resulted in the appointment of subcommittees directed to each such issue.

Each subcommittee investigated, examined and evaluated the issues, and determined whether an amendment or Rule revision was necessary. The subcommittees then submitted reports to the Committee as a whole, and those reports and any potential amendments to the Rules were then discussed at length by the entire Committee. Ultimately, the Committee voted to approve certain amendments. Amendments -- The following amendments were approved by the Board of Judges after submission by the Patent Rules Advisory Committee: Rule 2.1(a)(6)- With respect to matters to be discussed for the purpose of preparing the Joint Discovery Plan for submission to a Magistrate Judge in advance of the initial Scheduling Conference, a new subpart is included that expands the topics to be discussed between the parties in order to expedite matters, and attempt to avoid more protracted disputes later in the discovery process (e.g., availability of invention records, product samples, whether there is a 30-month stay and when it ends, and scheduling order issues, etc.).

The Committee recommended encouraging a complete and thorough discussion of issues that need to be addressed by the Court at the initial Rule 26 conference. 43 Rule 2.2- The Committee recommended that the Discovery Confidentiality Order be submitted in 14 days rather than 30 days subsequent to the initial Scheduling Conference in an attempt to expedite the exchange of foundation discovery, which in many instances comprises commercially sensitive information. Rules 3.3(d) (Invalidity Contentions) and 3.4A (Responses to Invalidity Contentions- This amendment would require a party asserting invalidity under Sec. 112 of the Patent Act to set forth the factual basis for that assertion, and would require the patent owner to respond with a detailed explanation of how the claim complies with Section 101 and 112. Rule 3.6 (c) and (e)- With regard to Hatch-Waxman matters, the Committee recommended that the time for submission of invalidity and noninfringement contentions be extended from 14 days to 30 days from the date of the Scheduling Conference.

The Committee concluded that the current 14-day period presented too compressed a schedule, and that the additional time for such submissions would not significantly impact overall case management, particularly in light of other changes under these Rules. Rules 4.1 and 4.2 (Exchange of claim terms for construction)- Pursuant to this amendment, parties would be required to explain the meaning of “plain and ordinary” assigned to each claim term. The Committee determined that parties often rely on the Court to determine what the parties mean by that phrase. The Committee concluded that the Local Patent Rule should be amended to require a party to define its understanding of the phrase “plain and ordinary meaning” for each claim term for which that phrase is asserted.

In May 2016, the Committee submitted the proposed amendments to the Board of Judges for their consideration. Local Patent Rules Committee Hon. Stanley R Chesler, U.S.D.J., Chair Hon. Jerome B. Simandle, U.S.D.J., Chief Judge, Ex officio Hon. Patty Shwartz, U.S.C.J. Hon. Mary L. Cooper, U.S.D.J. Hon. Douglas E. Arpert, U.S.M.J. Hon. Tonianne J. Bongiovanni, U.S.M.J. Hon. Michael A. Hammer, U.S.M.J. Hon. Lois H. Goodman, U.S.M.J. Hon. Joel Schneider, U.S.M.J. Hon. Leda D. Wettre, U.S.M.J. Hon. Karen M. Williams, U.S.M.J. John T. O’Brien, Legal Coordinator Arnold B. Calmann, Esq. Thomas Curtin, Esq. David De Lorenzi, Esq.

John E. Flaherty, Esq. Dennis F. Gleason, Esq. Edgar H. Haug, Esq. Mary Sue Henifin, Esq.

Norman E. Lehrer, Esq. Charles M. Lizza, Esq. 44 Peter Menell, Prof. of Law, Univ. of Calif., Berkeley School of Law William L. Mentlik, Esq. George F. Pappas, Esq.

Donald Robinson, Esq. Robert G. Shepherd Esq. Liza M. Walsh, Esq