Requirements

1. Local and Federal Rules, Patent Rules

Many answers to frequently asked questions are contained in the Local Rules of the Eastern District of Missouri, the Federal Rules of Civil and Criminal Procedure, and the Federal Rules of Evidence. All counsel are expected to know these rules and to follow them. Patent cases will be governed by Judge Shaw's Patent Rules and the Local Rules except to the extent the Local Rules are inconsistent with the Patent Rules.

2. Electronic Filing.

The United States District Court for the Eastern District of Missouri has adopted the Case Management/Electronic Case Files (CM/ECF) system. Under CM/ECF, all pleadings, motions and other documents must be filed in electronic format. This requirement does not apply to pro se parties or to attorneys who have applied for and been granted an exemption from electronic filing. For more information concerning electronic filing and service of documents, please see the CM/ECF Administrative Procedures Manual available on this website and the CM/ECF & PACER portions of this website.

When an attorney electronically files a motion for leave to file a document out of time, a motion to file an amended complaint or answer, or a motion to file a memorandum in excess of 15 pages, the document for which leave is sought must be submitted as an attachment to the motion for leave, and should not be filed as a separate document.

3. Courtesy Copies of Dispositive Motions and Pretrial Compliance Materials

Parties shall submit a paper courtesy copy to chambers of (1) any motions to dismiss, motions for judgment on the pleadings, or motions for summary judgment, together with the memorandum in support and any exhibits; (2) any opposition memorandum, including exhibits; (3) any reply memorandum in support, including exhibits; and (4) all pretrial compliance materials. Courtesy copies may be mailed or hand-delivered to chambers at 111 South Tenth Street, Suite 12-N, St. Louis, Missouri 63102.

4. Informal Matters

Informal matters should be filed electronically with the Clerk's Office. The Court will contact counsel and request that they appear at informal matters if the Court requires additional information concerning a motion that has been filed. Otherwise, counsel need not attend informals. When necessary, informal matters will be held at 9:00 a.m. on Tuesdays and Thursdays in Courtroom No. 12-N.

5. Attorney Admissions

Please contact a member of Judge Shaw's Case Management Team to schedule an admission. Attorney admissions are conducted by prearrangement only, at the beginning of informal matters on Tuesdays and Thursdays, at 9:00 a.m. in Courtroom No. 12-N.

6. Court Docket

The court docket is managed by Judge Shaw's Case Management Team in the Clerk's Office. The Case Management Team handles all questions regarding the docket. Team members are:

Michele Crayton (Team Leader)	(314) 244-7921
Jeffrey Jones	(314) 244-7923
Nathan Lanasa	(314)244-7926

For Southeastern Division cases, please contact:

Cathy Gould	(573) 335-8538
Michelle Schaefer	(573) 335-3106

7. Rule 16 Scheduling Conferences

Judge Shaw conducts Rule 16 scheduling conferences in Courtroom No. 12-N, unless counsel are located out of town. In such cases, a telephone Rule 16 conference will be held. An Order Setting Rule 16 Conference is issued after all parties have filed responsive pleadings. This order requires the parties to meet and formulate a Joint Proposed Scheduling Plan ("JSP"). The JSP is to be filed with the Clerk's Office at least fifteen (15) days prior to the Rule 16 conference.

Unless otherwise ordered, the plaintiff's counsel is responsible for initiating the meeting of counsel and preparing and filing the JSP. A lack of cooperation by opposing parties does not relieve the plaintiff of the duty to file a JSP. If a party finds it necessary to file a separate JSP, a memorandum should be attached explaining why a joint JSP cannot be filed. Judge Shaw may dismiss a case for failure to comply with orders of the court if no JSP is filed.

At the Rule 16 conference, counsel should be prepared to describe their case in three sentences or less, and to discuss whether and on what date referral to Alternative Dispute Resolution is appropriate. Trial counsel should attend the Rule 16 conference whenever possible. Do not send a substitute who knows nothing about the case or who cannot discuss settlement or a trial date. Failure to attend a Rule 16 conference may result in the dismissal of a case or the imposition of monetary sanctions against counsel.

8. Case Management Orders

A Case Management Order ("CMO") will be issued shortly after the Rule 16 scheduling conference. The Scheduling Order portion of the CMO will contain all relevant deadlines for the case, and the Order Relating to Trial portion will detail pretrial compliance requirements. Counsel should read the CMO carefully and refer to it throughout the case for answers to procedural questions. Any requests for changes to a CMO must be made by written motion. Changes in the CMO with respect to dispositive motion deadlines and trial dates are seldom granted.

9. Treating Physicians

Treating physicians shall be considered expert witnesses under Rule 26(a)(2), Fed. Civ. P., to the extent they give testimony as to causation or prognosis.

10. Sealed Documents/Protective Orders

Proposed protective orders submitted to the court for approval which contemplate the filing of a file or documents under seal must contain a date certain on which the seal will be lifted or the documents returned to the parties. A proposed protective order lacking a date certain for lifting the seal or returning documents to the parties will be denied without prejudice. Attorneys are also referred to the provisions of E.D. Mo. Local Rule 13.05 concerning sealed documents and files.

11. Discovery Motion Docket

Judge Shaw issues rulings on disputed discovery motions only at a monthly Discovery Motion Docket ("DMD"). The DMD is normally held at 9:00 a.m. on the last Friday of each month, in Courtroom No. 12-N. Motions are heard in the order counsel arrive in the courtroom. The moving party is responsible for filing and serving a notice of hearing setting a disputed discovery motion on the DMD. The notice must be filed at least seven (7) days in advance of the docket. Unless all counsel consent, Judge Shaw will not address a motion at the DMD if the opposing party has not had the opportunity to file a response within the time allowed by the Local Rules. Disputed discovery motions which are not noticed for hearing at the DMD within forty-five days of filing may be denied without prejudice.

12. Pretrial Conference

In most civil cases, a final pretrial conference is held on the Thursday prior to the beginning of the civil trial docket. The conferences are held on the record in Courtroom No. 12-N, usually at 2:00 p.m. In Southeastern Division cases, a final pretrial conference is normally held immediately prior to the beginning of trial. At the conference, the Court will establish a final order of trial, issue rulings on any motions in limine, and address evidentiary problems. The parties' joint voir dire statement and stipulated facts must be prepared and filed prior to the pretrial conference, as required by the Case Management Order. In some instances, more than one case will be set for trial on a particular day. When this occurs, counsel are expected to keep in contact with the Case Management Team to determine whether their case will proceed as scheduled.

13. Trial Docket

Judge Shaw's trial docket lasts for one month. All Eastern Division criminal cases are set for the first Monday of the month. All civil cases are normally set for the second Monday of the month, and remain on the docket for the three-week duration of the civil docket. Trial dates in Southeastern Division cases will vary.

Attorneys or pro se parties in each civil case will normally be contacted 2-3 weeks prior to the beginning of the docket for a status report. They will be asked how long the trial is expected to last, and the status of any settlement negotiations. Attorneys and pro se parties should notify chambers, well in advance of the date of trial, if their case is settling or requires special attention by the Court.

All civil cases are assigned a number-one trial setting. If your case is on the civil docket for a particular month, you must be prepared to try the case starting on the second Monday of the month. Typically, cases will be tried in order of age, but other factors including length of trial and type of case are considered in determining the most efficient order of the docket. Definitive trial settings will be announced at the final pretrial conference.

If you wish to use audiovisual, computer or other special equipment at trial, please contact a member of the Case Management Team well in advance of trial to make arrangements.

14. Motions for Continuance in Criminal Cases

All motions for continuance of trial in criminal cases must include a specific statement of the factual basis for the requested continuance, from which the Court can determine whether the ends of justice would be served by granting the motion; i.e., whether the continuance outweighs the best interests of the public and the defendant in a speedy trial. See 18 U.S.C. § 3161(h)(8)(A). Any motion for continuance which does not include a statement of facts as described in this paragraph will be denied.

15. Transcripts

Counsel are to contact the Judge's official Court Reporter, Sue Moran (314-244-7983), to order transcripts or daily copy. If you wish to order daily copy of the trial transcript, please contact Ms. Moran well in advance of trial so she can make appropriate arrangements.

16. Use of Personal Data Identifiers

Under CM/ECF, documents in Court files and electronic transcripts of proceedings are available to the public via the Internet. As a result, personal data identifiers in these materials are subject to wide dissemination. Personal data identifiers include Social Security numbers, financial account numbers, names of minor children, dates of birth, and home addresses of individuals. Counsel should attempt to limit their use of personal data identifiers in pleadings and other documents filed with the Court, and in statements and questions to witnesses at trial. When use of such information is required, counsel may partially redact personal data identifiers as follows:

• Social Security numbers to the last four digits;
• financial account numbers to the last four digits;
• dates of birth to the year;
• names of minor children to the initials;
• home addresses to the city and state.

The Court is participating in the Electronic Availability of Civil Transcripts Pilot Project, under which counsel may request that personal data identifiers be redacted from the official transcript. Please direct all questions concerning the Court's participation in this pilot project to Lori Miller-Taylor, Chief Deputy Clerk, at (314) 244-7910.

17. Available Courtroom Technologies

The Court has evidence presentation equipment available, including an evidence camera (ELMO), VCR, monitors, and hook-ups for computer-stored evidence or computer presentations. Because this is shared equipment, it is not always available. Please call the Case Management Team in the Clerk's Office to schedule the equipment for your trial. They will also schedule a time for you to come to court to be trained on the equipment.

18. Courtroom Procedures

1. Use of Podium. Counsel shall stand at the podium during opening statements, examination of witnesses and closing arguments. If there are exhibits to be viewed by a witness, you may ask to approach the witness for that purpose. It is unnecessary to repeat your request to approach each time you have an exhibit to show the witness; the initial request to approach is sufficient.
2. Addressing the Court. Counsel shall stand when making objections or addressing the court.
3. Exhibits. Counsel must mark all exhibits in advance of trial.
4. Deposition Designations. Counsel should meet prior to the pretrial conference, and again prior to trial if necessary, to disclose which portions of deposition designations they will actually seek to read to the jury, and to attempt to resolve any disputes concerning deposition designations prior to seeking a ruling from the Court.
5. Voir Dire. Generally, counsel are permitted to conduct voir dire examination after some preliminary questions by the court. Counsel's questions must initially be directed to the panel as a whole. Individual examination of a prospective juror is permitted only if warranted by responses to questions. Individual prospective jurors should be addressed by their last name, preceded by Mr. or Ms. Do not repeat questions that have been asked by the court. Examinations that are repetitious or unduly lengthy will be terminated by the Court. Juror challenges will be considered after voir dire is completed at the bench. Exceptions may be made for disruptive jurors.
   The jury lists are not to be copied or duplicated in any way. The lists are not to be removed from the courtroom, and must be returned to the clerk following jury selection. Jurors are seated starting from the left to the right and from the back to the front of the jury box. A sample courtroom seating chart follows at the end of this memorandum. Seating charts are also available in Courtroom No. 12-N.
6. Jury Instructions. The current version of the Eighth Circuit Manual of Model Civil Jury Instructions should be used for all boilerplate and substantive matters covered by these instructions. Instructions from Devitt &
   Blackmar are permitted only where there is no applicable Eighth Circuit model instruction. The Missouri Approved Instructions (or another state's approved instructions, when appropriate) are used for issues governed by state law.
   The jury is given the instructions in writing. Counsel must submit two complete sets of instructions, including boilerplate instructions. One set of instructions shall be clean, i.e., with no citation to authority, no case caption, and no indication which party has offered the instruction, and shall include only the words "Instruction No. ___" at the top. The other set of instructions shall indicate the source of or authority for the instruction, and which party has offered it, in addition to having the words "Instruction No. ___" at the top. Counsel should also have jury instructions available on a computer disk formatted for WordPerfect 9.0 in order to assist the Court in making necessary changes.
7. Opening Statements. Opening statements, if any, shall not exceed twenty (20) minutes per party. Multiple parties on one side of a case who are represented by the same counsel will not have more than twenty (20) minutes for opening statements.
8. Addressing Witnesses, Clients and Counsel. All witnesses and opposing counsel must be addressed by their last names, with appropriate titles. Do not address any witnesses by their first names, even your clients, and please advise witnesses not to address counsel by their first names. Witness examination shall be limited to direct, cross, redirect and recross (only two bites of the apple.)
9. Redirect Examination. Redirect examination should not repeat direct examination, and recross examination should be limited accordingly.
10. Closing Argument. After all of the evidence is presented, the court will advise the parties how much time will be allotted for closing arguments. This will generally not exceed twenty (20) minutes. The plaintiff must use more than half the available time in the first part of closing argument. Counsel should inform the court if a warning is requested.

19. Courtroom Decorum

No food or drink is permitted, except for water. No chewing gum is permitted. No audible beepers or watches are allowed. Only counsel and parties are permitted to enter inside the bar railing. Exceptions may be made for persons assisting counsel or for client representation. Counsel should inform their clients, witnesses and other observers of these rules.

Judge Shaw's Courtroom - 12 North

Benches

38	37	36	35	34		33	32	31	30	29	28	27
26	25	24				23	22	21	20	19	18	17

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JUDGE CHARLES A. SHAW
PATENT RULES
TABLE OF CONTENTS

1. SCOPE OF RULES

1-1. Title

1-2. Scope and Construction

2. GENERAL PROVISIONS

2-1. Governing Procedure

(a) Initial Rule 16 Scheduling Conference

(b) Further Case Management Conferences

2-2. Confidentiality

2-3. Certification of Initial Disclosures

2-4. Admissibility of Disclosures

2-5. Relationship to Federal Rules of Civil Procedure

3. PATENT INITIAL DISCLOSURES

3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions

3-2. Document Production Accompanying Disclosure

3-3. Preliminary Invalidity Contentions

3-4. Document Production Accompanying Preliminary Invalidity Contentions

3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment

(a) Invalidity Contentions If No Claim of Infringement

(b) Applications of Rules When No Specified Triggering Event

(c) Inapplicability of Rule

3-6. Final Contentions

3-7. Amendment to Contentions

3-8. Willfulness

4. CLAIM CONSTRUCTION PROCEEDINGS

4-1. Exchange of Proposed Terms and Claim Elements for Construction

4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence

4-3. Joint Claim Construction and Prehearing Statement

4-4. Completion of Claim Construction Discovery

4-5. Claim Construction Briefs

4-6. Claim Construction Hearing

JUDGE CHARLES A SHAW
PATENT RULES

1. SCOPE OF RULES

1-1. Title.

These are the Rules of Practice for Patent Cases pending before the Honorable Charles A. Shaw in the United States District Court for the Eastern District of Missouri. They should be cited as "Patent 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 utility patent in a complaint, counterclaim, cross-claim or third party claim, or which seek a declaratory judgment that a utility patent is not infringed, is invalid or is unenforceable. The Court may accelerate, extend, eliminate, or modify the obligations or deadlines set forth in these Patent Rules based on the circumstances of any particular case, including, without limitation, the complexity of the case or the number of patents, claims, products, or parties involved. If any motion filed prior to the Claim Construction Hearing provided for in Patent R. 4-6 raises claim construction issues, the Court may, for good cause shown, defer the motion until after completion of the disclosures, filings, or ruling following the Claim Construction Hearing. The Local Rules of this Court shall also apply to these actions, except to the extent that they are inconsistent with these Patent Rules.

2. GENERAL PROVISIONS

2-1. Governing Procedure.

(a)Initial Rule 16 Scheduling Conference. When the parties confer with each other pursuant to Fed. R. Civ. P. 26(f), in addition to the matters covered by Fed. R. Civ. P. 26, the parties must discuss and address in the Joint Proposed Scheduling Plan filed pursuant to Fed. R. Civ. P. 26(f), the following topics:

(1) Proposed modification of the deadlines provided for in the Patent Rules, and the effect of any such modification on the date and time of the Claim Construction Hearing, if any;

(2) Whether the Court will hear live testimony at the Claim Construction Hearing;

(3) The need for and any specific limits on discovery relating to claim construction, including depositions of fact witnesses and expert witnesses;

(4) The order of presentation at the Claim Construction Hearing; and

(5) The scheduling of a Claim Construction Prehearing Conference to be held after the Joint Claim Construction and Prehearing Statement provided for in Patent R. 4-3 has been filed.

(b) Further Case Management Conferences. To the extent that some or all of the matters provided for in Patent R. 2-1(a)(1)-(5) are not resolved or decided at the initial Rule 16 Scheduling Conference, the parties shall propose dates for further Case Management Conferences at which such matters shall be decided.

2-2.Confidentiality.

If any document or information produced under these Patent Rules is deemed confidential by the producing party and if the Court has not entered a protective order, until a protective order is issued by the Court, the document shall be marked "confidential" or with some other confidential designation (such as "Confidential--Outside Attorneys Eyes Only") by the disclosing party and disclosure of the confidential document or information shall be limited to each party's outside attorney(s) of record and the employees of such outside attorney(s). If a party is not represented by an outside attorney, disclosure of the confidential document or information shall be limited to one designated "in house" attorney, whose identity and job functions shall be disclosed to the producing party 5 court days prior to any such disclosure, in order to permit any motion for protective order or other relief regarding such disclosure. The person(s) to whom disclosure of a confidential document or information is made under this rule shall keep it confidential and use it only for purposes of litigating the case.

2-3. Certification of Initial Disclosures.

All statements, disclosures, or charts filed or served in accordance with these Patent Rules must be dated and signed by counsel of record. Counsel's signature shall constitute a certification that to the best of his or her knowledge, information, and belief, formed after an inquiry that is reasonable under the circumstances, the information contained in the statement, disclosure, or chart is complete and correct at the time it is made.

2-4. Admissibility of Disclosures.

Statements, disclosures, or charts governed by these Patent Rules are admissible to the extent permitted by the Federal Rules of Evidence or Civil Procedure. However, the statements or disclosures provided for in Patent R. 4-1 and 4-2 are not admissible for any purpose other than in connection with motions seeking an extension or modification of the time periods within which actions contemplated by these Patent Rules must be taken.

2-5. Relationship to Federal Rules of Civil Procedure.

Except as provided in this paragraph or as otherwise ordered, it shall not be a legitimate ground for objecting to an opposing party's discovery request (e.g., interrogatory, document request, request for admission, deposition question) or declining to provide information otherwise required to be disclosed pursuant to Fed. R. Civ. P. 26(a)(1) that the discovery request or disclosure requirement is premature in light of, or otherwise conflicts with, these Patent Rules. 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 these Patent Rules:

1. Requests seeking to elicit a party's claim construction position;
2. Requests seeking to elicit from the patent claimant a comparison of the asserted claims and the accused apparatus, product, device, process, method, act, or other instrumentality;
3. Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art; and
4. Requests seeking to elicit from an accused infringer the identification of any opinions of counsel, and related documents, that it intends to rely upon as a defense to an allegation of willful infringement.

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 provide the requested information to an opposing party under these Patent Rules, unless there exists another legitimate ground for objection.

3. PATENT INITIAL DISCLOSURES

3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions.

Not later than 10 days after the initial Rule 16 Scheduling Conference, a party claiming patent infringement must serve on all parties a "Disclosure of Asserted Claims and Preliminary Infringement Contentions." Separately for each opposing party, the "Disclosure of Asserted Claims and Preliminary Infringement Contentions" shall contain the following information:

1. Each claim of each patent in suit that is allegedly infringed by each opposing party;
2. 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 must be identified by name or model number, if known. Each method or process must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
3. A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;
4. Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;
5. For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and
6. 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 must identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.

3-2. Document Production Accompanying Disclosure.

With the "Disclosure of Asserted Claims and Preliminary Infringement Contentions," the party claiming patent infringement must produce to each opposing party or make available for inspection and copying:

1. Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third party or joint development agreements) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention prior to the date of application for the patent in suit. A party's production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;
2. All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to Patent R. 3-1(e), whichever is earlier; and
3. A copy of the file history for each patent in suit.

The producing party shall separately identify by production number which documents correspond to each category.

3-3. Preliminary Invalidity Contentions.

Not later than 45 days after service upon it of the "Disclosure of Asserted Claims and Preliminary lnfringement Contentions," each party opposing a claim of patent infringement, shall serve on all parties its "Preliminary Invalidity Contentions" which must contain the following information:

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 must 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);
2. Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified;
3. A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and
4. Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1) of any of the asserted claims.

3-4. Document Production Accompanying Preliminary Invalidity Contentions.

With the "Preliminary Invalidity Contentions," the party opposing a claim of patent infringement must produce or make available for inspection and copying:

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 in its Patent R. 3-1(c) chart; and
2. A copy of each item of prior art identified pursuant to Patent R. 3-3(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, Patent R. 3-1 and 3-2 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant does not assert a claim for patent infringement in its answer to the complaint, no later than 10 days after the defendant serves its answer, or 10 days after the initial Rule 16 Scheduling Conference, whichever is later, the party seeking a declaratory judgment must serve upon each opposing party its Preliminary Invalidity Contentions that conform to Patent R. 3-3 and produce or make available for inspection and copying the documents described in Patent R. 3-4. The parties shall meet and confer within 10 days of the service of the Preliminary Invalidity Contentions for the purpose of determining the date on which the plaintiff will file its Final Invalidity Contentions which shall be no later than 50 days after service by the Court of its Claim Construction Ruling.

(b) Applications of Rules When No Specified Triggering Event. If the filings or actions in a case do not trigger the application of these 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 Patent Rules to the case.

(c) Inapplicability of Rule. This Patent R. 3-5 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in response to a complaint for infringement of the same patent.

3-6. Final Contentions.

Each party's "Preliminary Infringement Contentions" and "Preliminary Invalidity Contentions" shall be deemed to be that party's final contentions, except as set forth below.

1. (a) If a party claiming patent infringement believes in good faith that (1) the Court's Claim Construction Ruling or (2) the documents produced pursuant to Patent R. 3-4 so requires, that party may serve "Final Infringement Contentions" without leave of court that amend its "Preliminary Infringement Contentions" with respect to the information required by Patent R. 3-1(c) and (d). Any "Final Infringement Contentions" must be served no later than 30 days after service by the Court of its Claim Construction Ruling.
2. (b) Not later than 50 days after service by the Court of its Claim Construction Ruling, each party opposing a claim of patent infringement may serve "Final Invalidity Contentions" without leave of court that amend its "Preliminary Invalidity Contentions" with respect to the information required by Patent R. 3-3 if:

(1) a party claiming patent infringement has served "Final Infringement Contentions" pursuant to Patent R. 3-6(a), or

(2) the party opposing a claim of patent infringement believes in good faith that the Court's Claim Construction Ruling so requires.

3-7. Amendment to Contentions.

Amendment or modification of the Preliminary or Final Infringement Contentions or the Preliminary or Final Invalidity Contentions, other than as expressly permitted in Patent R. 3-6, may be made only by order of the Court, which shall be entered only upon a showing of good cause.

3-8. Willfulness.

Not later than 50 days after service by the Court of its Claim Construction Ruling, each party opposing a claim of patent infringement that will rely on an opinion of counsel as part of a defense to a claim of willful infringement shall:

1. (a) Produce or make available for inspection and copying the opinion(s) and any other documents relating to the opinion(s) as to which that party agrees the attorney-client or work product protection has been waived; and
2. (b) Serve a privilege log identifying any other documents, except those authored by counsel acting solely as trial counsel, relating to the subject matter of the opinion(s) which the party is withholding on the grounds of attorney-client privilege or work product protection.

A party opposing a claim of patent infringement who does not comply with the requirements of this Patent R. 3-8 shall not be permitted to rely on an opinion of counsel as part of a defense to willful infringement absent a stipulation of all parties or by order of the Court, which shall be entered only upon a showing of good cause.

4. CLAIM CONSTRUCTION PROCEEDINGS

4-1. Exchange of Proposed Terms and Claim Elements for Construction.

(a) Not later than 10 days after service of the "Preliminary Invalidity Contentions" pursuant to Patent R. 3-3, each party shall simultaneously exchange a list of claim terms, phrases, or clauses which that party contends should be construed by the Court, and identify any claim element 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 finalizing this list, narrowing or resolving differences, and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement.

4-2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence.

(a) Not later than 20 days after the exchange of "Proposed Terms and Claim Elements for Construction" pursuant to Patent R. 4-1, the parties shall simultaneously exchange a preliminary proposed construction of each claim term, phrase, or clause which the parties collectively have identified for claim construction purposes. Each such "Preliminary Claim Construction" shall also, for each element 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 element.

(b) At the same time the parties exchange their respective "Preliminary Claim Constructions," they shall each also provide a preliminary identification of extrinsic evidence, including without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of fact and expert witnesses they contend support their respective claim constructions. The parties shall identify each such item of extrinsic evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, fact or expert, the parties shall also provide a brief description of the substance of that witness' proposed testimony.

(c) 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.

4-3. Joint Claim Construction and Prehearing Statement.

Not later than 60 days after service of the "Preliminary Invalidity Contentions," the parties shall complete and file a Joint Claim Construction and Prehearing Statement, which shall contain the following information:

1. The construction of those claim terms, phrases, or clauses on which the parties agree;
2. Each party's proposed construction of each disputed claim term, phrase, or clause, together with an identification of all references from the specification or prosecution history which 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 of the claim or to oppose any other party's proposed construction of the claim, including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art, and testimony of fact and expert witnesses;
3. The anticipated length of time necessary for the Claim Construction Hearing;
4. Whether any party proposes to call one or more witnesses, including experts, at the Claim Construction Hearing, the identity of each such witness, and for each expert, a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert; and
5. A list of any other issues which might appropriately be taken up at a prehearing conference prior to the Claim Construction Hearing, and proposed dates, if not previously set, for any such prehearing conference.

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, including experts, identified in the Joint Claim Construction and Prehearing Statement.

4-5. Claim Construction Briefs.

(a) Not later than 45 days after serving and filing the Joint Claim Construction and Prehearing Statement, the party claiming patent infringement shall serve and file a motion for claim construction, a memorandum in support, and any evidence supporting its claim construction.

(b) Not later than 14 days after service upon it of a motion for claim construction, each opposing party shall serve and file its responsive memorandum and supporting evidence.

(c) Not later than 7 days after service upon it of a responsive memorandum, the party claiming patent infringement shall serve and file any reply memorandum and any evidence directly rebutting the supporting evidence contained in an opposing party's response.

4-6. Claim Construction Hearing.

Subject to the convenience of the Court's calendar, approximately two weeks following submission of the reply memorandum specified in Patent R. 4-5(c), the Court shall conduct a Claim Construction Hearing, to the extent the parties or the Court believe a hearing is necessary for construction of the claims at issue.

Courtroom

12 North

Address

111 South 10th Street

Suite 12.148

St. Louis, MO 63102

Phone

(314)244-7480

Judicial Assistant

Lolita Flinn

Law Clerks

Susan Heider

Maggie Peters

Lynn Reid

Team

Michele Crayton

(314)244-7921

Jeffrey Jones

(314)244-7923

Nathan Lanasa

(314)244-7926

Joyce Webb

(314)244-7929

Court Reporter

Sue Moran

(314)244-7983