This is another installment in a series about Claim Charts. Part 1, The Claim Chart: Origins of a Patent Litigation Tool, provides a brief history of the Claim Chart. Today we discuss the Patent Local Rules. The remainder of this series contains practice pointers to help you better create Claim Charts.
As mentioned in Part 1, among other things, Patent Local Rules (PLRs) require the submission of Claim Charts by the parties to support positions of infringement and invalidity. For example, Section 3-1(c) of the Rules for the Northern District of California require that a party claiming patent infringement serve, among other items, "a chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Continuing on, Section 3-3(c) of the Rules for the Northern District of California require that each party opposing a claim of patent infringement shall serve on all parties its "Invalidity Contentions" which must include "a chart identifying where specifically in each alleged claim of prior art each limitation of each asserted claim is found".
Over 30 jurisdictions, including the Northern District of California, have their own PLRs containing requirements like those above. A listing of those jurisdictions can be found on our Local Patent Rules reference section on our main site. The timing requirements, among others, can vary district to district, so it is important to observe the local rules that are typically implemented by Scheduling Order. For example, in the Northern District of California, the infringement Claim Chart is due not later than 14 days after the Initial Case Management Conference and the invalidity Claim Chart is due no later than 45 days after service of the Disclosure of Asserted Claims and Infringement Contention. In the District of New Hampshire, the Infringement Claim Chart is due not later than 45 days after service of the last filed answer and the Invalidity Claim Chart is due not later than 45 days after service of the Preliminary Infringement Contentions.
Another reason to read the PLRs is that some Districts are silent on Claim Chart requirements. For example, the Southern District of New York makes no mention of required Claim Charts in its Rules. Differences like those above are important to the prosecution of your case. A good resource highlighting these differences can be found here.
Those in districts without PLRs can still benefit from the usage and submission of Claim Charts. Claim Charts provide a way to present your case with clarity and specificity to a judge and the eventual jury.
Join us again for Part 3 in our series where we will discuss best practices for creating your Claim Charts.