Claim Charts book, Part I

PART I: INTRODUCTION TO CLAIM CHARTS — PURPOSES & REQUIREMENTS

Claim charts: Some simple examples

A claim chart takes the “business end” of a patent – its claims – and breaks those claims down into parts or components (for patented devices) or into steps (for patented methods or processes), comparing each part or step in the patent claim on the one hand, with a corresponding part or step found somewhere else, usually in a product accused of infringing the patent or in a piece of prior art being used to try to invalidate a patent claim. Like so:

(The left column represents a portion of US 4,097,899 claim 12, and the imaginary infringement facts in the right column are based on an invalidity chart included in GE v. Nintendo, 983 F.Supp. 512 (D.N.J., 1997).)

This is not presented as an ideal chart. For example, it fails to explicitly assert infringement, and instead merely juxtaposes evidence of infringement with each claim limitation. On the other hand, it does take care to properly handle the “means … for” limitation, juxtaposing infringing technology with the means disclosed in the patent, rather than confining itself to the raw language of the patent claim.

Apart from making the comparison using a claim of the patent (as opposed for example to its title, a drawing, or an abstract), the most noticeable feature of claim charts is the breaking or splitting or parsing of each claim into smaller components (“limitations,” i.e., elements of a device or steps of a process), and performing the comparison along those individual components rather than “holistically.”

In the example above, the left column of the chart represents a single sentence: “12. Video record player apparatus comprising: a player RF signal input terminal; a player RF signal output terminal; a player power supply developing supply potentials when selectively enabled; means, rendered operative in response to supply potential development by said power supply, for forming …”. The rows in the example chart correspond to semicolon-delimited phrases in the claim (which have also been assigned “part numbers” such as [12a] and [12b]); more important, each such phrase is aligned with something allegedly corresponding to it in a defendant’s product.

As a further example, a initial claim chart (PIC), from which the following is excerpted, was found acceptable in AVG v. Electronic Arts, 359 F.Supp.2d 558 (EDTX, March 2005) (Davis J):

In contrast, the following example from an amended IC, seemingly more detailed, was found unacceptable several years later by the same court in Sutton v. Nokia, 2009 US Dist. LEXIS 129747 (EDTX, Feb. 2009) (Davis J):

Though the unacceptable version is more detailed, including even source-code citations, it nonetheless could be found less acceptable than a seemingly vaguer chart, because for example the left hand column (LHC) contains an undifferentiated mass of sublimitations (a), (b), and (c) each of which likely require their own row in the chart, with the LHC for that row juxtaposed to specific facts in the right hand column (RHC).

In addition, the acceptable chart constituted preliminary infringement contentions (PIC), of which less is expected than in amendment infringement contentions which have the benefit of discovery. In other words, what constitutes an adequate or inadequate claim chart depends in large part on the stage of litigation.

Claim charts: A working definition

A claim chart compares the claims of a patent with something else, almost always outside the patent itself. The comparison is not on a claim-by-claim basis; it is performed on the individual elements or steps comprising the claim. The “something else,” whose own individual parts, components, elements, or steps will be compared separately with each element or step of the patent claim, is generally a product accused of infringing the patent, or prior art which has been asserted as rendering the patent invalid. The chart is generally referred to as the party’s Infringement Contentions (ICs), Preliminary Infringement Contentions (PICs), Invalidity Contentions, and so on.

There are important exceptions to most of these statements (what about design patents, or claims with a single limitation, or the “as a whole” requirement for obviousness analysis, or negative limitations, or “consists of” claims, or …?), and these exceptions will be discussed in detail, but as a working definition, a claim chart takes the claims of a patent, breaks them into elements or steps, and compares each element or step with an element or step found (or not) in an accused product or piece of asserted prior art.

Note that one claim limitation may be juxtaposed to 0 (absence), 1, or more than element or step; and conversely that multiple limitations may be juxtaposed with a single element or step. While infringement and invalidity require that every limitation be covered (note the “all-elements rule”), there is no requirement of one-to-one correspondence. As to breaking each claim into elements, the chart will generally only do so with claims which have been asserted in the litigation.

The chart tears each asserted claim along its “seams,” so to speak. At least as a first approximation, these seams are located along semicolons in the single sentence that forms the patent claim. The semicolon-delimited chunks of text are known as “limitations” (or “integers” in the UK). Such limitations correspond to e.g. elements comprising a device claim or steps comprising a method claim. These parts of the claim are known as limitations because, all else being equal, the more of them there are (or the more complex each one is), the more limited is the scope of the claim that contains them.

Each limitation is placed in a separate row in the chart. The chart is generally two columns, and the text of the limitation is placed in the chart’s left column (LHC). The chart’s right column (RHC) is used to show something, almost always outside the patent itself, which a party in the litigation asserts corresponds, or does not correspond, to the limitation in the LHC of the same row. Limitations may contain sub-limitations, either explicitly (which will be given their own rows) or implicitly (which generally will not, at least in the patent-holder’s charts, though D will often want to emphasize sub-limitations within their own rows).

The end result is a claim chart which “maps” (i.e., asserts some consistent association between) each and every element or step of one of more asserted patent claims on the one hand, to allegedly corresponding specific locations in an accused “instrumentality” (device, method, medium, or system) on the other, or to corresponding locations in e.g. prior art.

The LPRs require a chart identifying “specifically where” each limitation of each asserted claim is found within each accused product, so the RHC will need some specific connection to a location in the accused product or prior art. Not (in the manner of a pasta-sauce advertisement) “it’s in there,” nor (merely inferred presence) “it must be in there somewhere, because…”. See e.g. CSR Tech. v. Freescale Semiconductor, citing Bender v. Maxim. “Where” implies a location, and a location typically has a name, coordinates, or  some other identifier which distinguishes it from other locations. This ID should be in terms appropriate to the location itself (i.e., the language used by the other side in its schematics, source code, documentation, etc.), not mimicking the mere language of the claim.

The “specifically where” requirement is essentially the factual equivalent of a legal “pinpoint” citation. In other words, it should not work to parse a claim down into its limitations, dutifully place each limitation in its own row, and then copy and paste the same large reference, or same set of disaggregated facts, into the RHC of each row.

Such disaggregated copy & paste has actually occurred in some cases, prompting demands from the other side, e.g. Vasudevan v. IBM, that the chart be struck, or redone with the material in each RC corresponding only to the single limitation on the LHC of that row (e.g. “that source code which satisfies limitation [1.3], and only [1.3]”). Such “super-pinpointing” is sometimes impossible to achieve, and insisting upon it in all cases contradicts well-established patent law that a limitation may be “met” by the combination of multiple elements or steps in an accused product or prior art, and conversely that multiple elements or steps may be described by a single limitation (see e.g. MobileMedia v. Apple). But in many and probably most limitations, a one-to-one correspondence can be made with a specific location, and even when not required under the LPRs this is, if nothing else, an important goal for the charts that a party should make for its own internal use. Ideally then, the material shown in the RHC of a given row should correspond only to the limitation in the LHC of that same row. Even without a “super-pinpoint” requirement that the RHC show only what matches the LHC for a given limitation, and nothing more, at any rate patent claim limitations are to be juxtaposed with locations.

But not merely juxtaposed. Unless it is unusually clear why the facts in the RHC have been shown in correspondence to the limitation in the LHC, the chart is expected to explicitly assert what the connection is (e.g., “the framis feature of the accused device is identical to the widget limitation of the asserted claim”) and to explain why the facts presented support (not necessarily prove) the assertion. While in some cases this will be trivial (“a framis is well understood in the art as identical with a widget”), in many cases it will require some thought (“hmm, why is it that our facts showing signal detection can also be used to show signal broadcasting?; does the fact that it’s detected necessarily mean it is also broadcast?”), and for example under the doctrine of equivalents (DoE) would require a careful walk-through (not merely a mantra-like recitation) of sub-features of the limitation (generally, its function, way, and result). Even if the limitation and the juxtaposed instrumentality use exactly the same language (“framis”), they do not necessarily mean the same thing by this terminology, and it may be one party’s or the other’s burden to demonstrate whether the match is more than merely syntactic.

A two-column chart seems like no big deal, but the claim-chart requirement is a higher hurdle to clear than appears from a distance.

[TODO: insert “not a holistic exercise” section]

[TODO: brief introduction to what, who, when, where, why, how sections below]

Comparing what to what?

As the name implies, claims tables use the claims of patent as the basis for comparison. This is to be distinguished from using the patent as a whole, or its title, abstract, or drawings, as the contents of the chart’s LC. At the same time, claim charts must reflect some claim construction, and this will generally be informed by the patent specification. Charting of “means for” and other functional claim elements must refer to means disclosed in the specification.

This is also to be distinguished from a frequent misconception of inventors, who wish to use their own product as a basis for comparison with that of an allegedly infringing competitor. On the other hand, this are several occasions for product-to-product comparisons. For example, to show that one allegedly infringing product chosen for charting is representative of, and that its chart can stand in for, other accused products, it may be helpful to chart the so-called “representative instrumentality” against the other accused products. As another example, following an injunction, showing that the infringer’s “new” product violates the injunction may be shown better by comparing the new product with that which was enjoined, rather than going back to first principles to re-show infringement. Finally, the accused infringer may wish to point to the patent-holder’s own product, ostensibly covered by the patent, as part of a “reverse doctrine of equivalents” type of argument.

Having referred to comparisons of patent claims with accused products, that which is accused is often but not necessarily a product. The patent statute refers not only to selling and importing, but also using, making, and offering for sale. The generic term often used is “accused instrumentality,” which covers devices, methods, systems, compositions of matter, and other types of claimed invention, and which can cover not only directly revenue-generating products, but also mere offers of such products, bids to make infringing materials, processes used entirely in-house, and so on.

The comparison of patent claims with another instrumentality is not necessarily that of another party. As noted earlier, there are several occasions, such as the “domestic industry” showing in an ITC importation action, in which a patent claim must be charted against the patent-holder’s own product; another example is a invalidity chart mapping a patent owner’s claims against its own invalidating prior art (such as on-sale or public-use more than one year before the patent’s priority date).

To show the relevant elements of an instrumentality in the RC of a claim chart, drawings or photographs (together with “circles and arrows and a paragraph … explaining what each one was”) may be employed. Apart from such direct pointing to a visual representation of an instrumentality, what will appear in the RC is of course not the product itself (except arguably in the case of a purely textual computer source code), but some information about it. This information may be reverse engineered from a publicly-accessible product (such reverse engineering in any case usually necessary for patent holder’s initial ICs, pre-discovery), or from documentation about the product. Marketing materials are frowned upon (see e.g. Finjan v. Proofpoint), and care must be taken with speculative future-looking internal materials, gleaned in discovery, which may not accurately reflect what was eventually built. With the possible exception of offers for sale, it is almost always an as-built device or method, not a plan or other document relating to a device or method, that is the target of litigation. At the same time, there are cases in which the other side has been asked (for example in deposition) to compare an asserted claim with a drawing or other hypothetical example of a device or method not in controversy.

Most of the points above assume charting an accused instrumentality, i.e. infringement and non-infringement charts. The same points also apply to invalidity or validity charts. Note that, when charting to patented prior art or published patent applications, the comparison is not claim-to-claim, but rather claim-to-disclosure. That is, the assertedly invalid patent is not compared as a whole to previous patents, nor on the other hand is one or more of its claims compared to earlier claims, but rather the claims (properly construed in light of the patent as a whole) are broken down into limitations, just as with infringement contentions, and a limitation-by-limitation comparison performed against the enabling disclosures in a piece of prior art.

Generally, each claim chart covers a single accused instrumentality or single piece of prior art. However, one glaring exception is an obviousness chart, which will necessarily employ a combination of two or more pieces of prior art, and/or common knowledge of the PHOSITA at the relevant time. As a further example, multiple accused products may in some instances be handled in a single chart, either by way of a single “representative instrumentality” (as noted above), or by including subheads in each row of the RC to handle presumably minor differences among products. When using the subhead chart method, however, there is a great danger of creating so-called “Frankencharts” in which some limitations are taken from product A, and others from product B; indeed this can occur even in a chart for a single product which has multiple modes or features which are arguably mutually incompatible.

Finally, while claim charts as discussed here compare a patent claim with something outside the four corners of the patent, this is to be distinguished not only from claim-construction charts (including joint claim-construction charts covered by the LPRs), but also from charts used to show lack of enablement by comparing the claims with the disclosures of the patent as a whole.

[TODO: partial exception for design patents: usually compare patent drawings to accused design, but if commercial embodiment no significant distinction from patent drawings, then permissible to compare embodiment with accused, Lee v. Dayton-Hudson; see design patents below.]

Who does the comparison? (Who knows more?)

It appears straight-forward that for infringement the plaintiff (P) compares its patent claims with the defendant’s (D) technology, and that for invalidity D compares P’s patent claims with the prior art (which may belong to P, particularly for on-sale and public-use defenses; to D; or to a third party).

A party’s claim charts are generally followed by the other side’s response charts. In its non-infringement response charts, D need not show non-infringement in any global sense, but rather rebuts P’s specific assertions of where D supposedly infringes (this is even the case in a declaratory judgment action, in which the positions of P and D are swapped). Similarly, in its validity charts, P need not prove validity as such (especially as P’s patent comes with a presumption of validity), but rather P responds to D’s specific assertions of invalidity, and at least in theory P need only show that D lacks clear and convincing evidence of invalidity.

But as clear as the party’s respective claim-chart burdens would appear to be from the nature of the litigation, each party may try to shift part of its burden to the other side. P by producing bare-boned, “bare minimum,” preliminary infringement contentions (PICs) may be acting on the assumption that D ought to know, from little more than the text of an asserted patent claim and the name of D’s product, why P has reason to believe that D infringes. Indeed, that was the assumption behind recently-abrogated and long-ignored FRCP Form 18, and indeed, armed only with a patent claim and a product name, D might suss out a decent idea of P’s theory of the case. Similarly, D might by its preliminary invalidity contention be saying, in essence, “here’s the prior art we were able to find, so far, in the 30 days we’ve had to submit this claim chart. The chart aligns each of your claim limitations with the corresponding page:lines citation in an earlier patent and page numbers in an earlier printed publication. It’s your patent, and you’ve already been through the exercise at the PTO of replying to the examiner’s anticipation and obviousness rejections over other pieces of prior art. You can see what we’re getting at, without us having to spell it out for you.”

These reasonable-sounding and common views miss the point, however. One reason for claim charts, as discussed below, is to avoid the need for mind-reading or speculation regarding the other side’s case. LPRs require claim charts in part as a replacement for the contention interrogatories that were a regular part of pre-LPR patent litigation. Boilerplate claim charts defeat this purpose, and in effect force D into making the comparison that P is supposed to make, and vice versa. The N.D. Ill. LPRs state that, to accomplish the overall purpose of helping the parties “to identify the likely issues in the case, to enable them to focus and narrow their discovery requests,” the parties’ disclosures “must be meaningful – as opposed to boilerplate – and non-evasive.”

There is a larger issue here than mere laziness, lack of time, or (very commonly) “let them figure it out” or “don’t do their job for them” gamesmanship. Claim-chart burdens (similar to discovery cost allocations) ultimately depend upon who generally knows more about patent infringement, the patent holder or the accused infringer?

It may be felt instinctively that P ought to know, and ought to be able to easily spot, what its own invention looks like, and therefore that P is in the best position to locate its invention in D’s pile of technology. After all, in the absence of a license taken out from P, P’s invention ought not to be in D’s pile, and should stick out like a sore thumb. As expressed in one older patent infringement case from before mandatory claims tables, when parties often disputed contention interrogatories, the court noted, “In patent cases … the court can think of no one more qualified than the inventors to express opinion as to what constitutes theft of their inventiveness.”

But if P should be able to look in D’s pile, and recognize P’s own boosted property, at the same time D should know its pile better than P should know D’s pile. P may be in the position of looking for a needle in a haystack, and P’s knowledge of the exact appearance of the needle may be of little help.

More important, when it comes to processes or methods not necessarily practiced in public, or to publicly-accessible products whose internal operation or construction is not necessarily a feasible object of reverse engineering, the point could equally be made that no one is more qualified than D to express an opinion on what their technology does, and whether it aligns with a template created by someone else, in this case, a patent claim created by P. After all, technology vendors often must compare their products to external standards and external requirements or specification documents, and a patent claim can be viewed as such a standard or requirements template.

D’s almost-inherently greater knowledge of its own technology is of course a basis for discovery. Burdens in discovery are typically placed on the party that knows more and/or would have an easier or less costly time producing the evidence. To the extent that D knows more than P about how D’s technology works, and even about whether D’s technology includes each element or step of P’s claimed invention, that’s a large part of what discovery is for in such cases.

But claim charts are not discovery, and one key type of claim chart – initial or once-called preliminary infringement contentions (PICs) – are not only produced pre-discovery, but act largely as admission tickets to discovery in patent litigation.

This, together with D’s greater knowledge of the accused instrumentality, is sometimes said to create a “Catch-22” or “chicken-and-egg problem” for P. On the one hand, P must generate a reasonably-specific PIC regarding P’s reasons for believing that D infringes, before the court will require D to open its kimono to P. While P’s reasons may include “information and belief,” it should rely sparingly on this formulation. On the other hand, P may believe (and may in cases even be correct) that it cannot provide much specificity absent discovery. (D is less likely to make Catch-22 excuses for spotty invalidity charts, as prior art by its very nature must have been publicly accessible at the relevant time, and hence as available to D as to P.)

This ostensible Catch-22 dilemma is raised especially in software patent cases, where it is well known that D’s source code is a definitive source of information regarding D’s software products or methods, and where such source code is often tightly held as D’s “crown jewels.” It will be noted below that reverse engineering (RE) of products, publicly available on the market, often cuts this Gordian knot; at least attempting RE is practically a prerequisite for a reasonable pre-filing investigation under Rule 11 for patent litigation, and the level of detail required in PICs has been held to be that level of detail which can be gleaned from RE “or its equivalent.”

But even given the widespread acceptance of RE as a vital tool in pre-filing (and hence pre-discovery) investigation for patent litigation, “D knows more” often rears its head while firms work on claim charts. At its most extreme, the implicit belief is that D should do its own damn infringement chart, coming close to res ipsa loquitur from Byrne v. Boodle, as if D’s alleged patent infringement was, in its inscrutability to patent-holder P, akin to a flour barrel falling from D’s warehouse onto P’s head.

Shifting from P to D the burden from P to D of analyzing infringement has in one instance (products allegedly made by a patented process) been codified in 35 USC 295 which permits shifting the burden of proving non-infringement to D (!) when, in part, P “has made a reasonable effort to determine the process actually used in the production of the product and was unable so to determine.”

It was noted earlier that in deposition, a witness (especially a 30(b)(6) witness) might be asked to in essence fill in claim chart by performing an on-the-spot limitation-by-limitation comparison of claims against a product, a hypothetical, or prior art. The defending attorney will of course object that this “calls for a legal conclusion,” but the request is common, as are slight variations such as taking D’s diagram of D’s product, and asking D’s witness to label the diagram using P’s nomenclature; or D’s interrogatory asking P to compare P’s patent claim with prior art selected by D.

At the end of the day, unsurprisingly it is P’s burden to show infringement by a preponderance of the evidence, and D’s burden to show invalidity by clear and convincing evidence. Whether or not P and D can get away with much less in their claim charts (see below on summary judgment), best practice is to use the claim-charts requirement as an opportunity to work through (albeit often under tight deadlines) why it believes it will be able to make such a showing.

When are claim charts created?

Claim charts are produced early in patent litigation, as well as later as the case progresses. Typically claim charts are produced under tight deadlines, particularly for a responding party which will typically have only 30 days to produce a meaningful response chart, such as D’s non-infringement contentions in response to P’s infringement contentions, or P’s validity contentions in response to D’s invalidity contentions.

The earliest claim charts, often called PICs, will be provided shortly after the case is filed, and will reflect P’s pre-filing investigation (which must have been reasonable under Rule 11; see xxx below on interaction among claim charts under LPRs and pre-filing investigation under Rule 11). The term “PIC” once designated a separate “Preliminary Infringement Contention,” but these have generally been phased out in favor of initial infringement contentions (ICs). The point is that there are not two different types of charts, nor are PICs separate from ICs. There is a single contention chart, with an initial version which will be missing some information supplied in the final version (initial ICs are pre-discovery), but which generally will not propound dramatically different case theories from those in the final IC. This despite the fact that initial ICs are pre-discovery and pre-Markman; non-initial ICs are often pre-Markman.

The requirement for early claim charts applies to D as well as to P, and D must supply meaningful, non-boilerplate non-infringement and invalidity charts in as little as 30 days after receiving P’s charts. This applicability to D as well as to P means that claim charts are not necessarily a useful tool to defend Ds from “trolls .” (Note however that proposed legislation such as the “Innovation Act” HR9 requires claim charts for pleading infringement, but not for pleading invalidity.)

The intent for initial ICs, that are expected to not radically differ from the final ICs, is to early lock-in or “crystallize” case theories. Claim-chart requirements replace contention interrogatories, which were often deferred until after discovery, and until after claim construction (Markman), resulting in lengthy uncertainty as to the other side’s case theory. The goal of early case lock-in would appear at first to contradict the entire purpose of fact-finding during discovery, and parties naturally will often want to adjust their factual positions following discovery, with further adjustment after a Markman ruling. But without early commitment to a case theory (i.e., early non-preliminary claim charts), the result is “musical chairs” or “shifting sands” litigation, with dramatic changes to party theories of infringement and invalidity following the Markman ruling; see e.g. O2 Micro v. Monolithic Power Sys. The claim-charts requirement was designed to avoid the “musical chairs” problem, as well as the related “Whack-a-Mole” problem, in which a party presents multiple theories, without firmly committing to any one, thereby forcing the other side to (at best) over-invest in case investigation.

Of course, parties will be allowed to amend their claim charts with “good cause,”  absent undue prejudice to the other side, as explained in chapter xxx on amending claim charts. Note the difference from FRCP 15. However, see chapter xxx on frequent appeals to an ostensible “reserved right” to amend or supplement, in particular by experts; any such right cannot simply be “reserved,” but depends on good cause, and lack of undue prejudice to the other side. Good cause for amendment is based largely not on the presence of newly-discovered info as such, but rather on what reasonably could have been discovered earlier with “diligence” use of public information (reverse engineering or its equivalent) and/or discovery. See also chapter xxx on duties to supplement claim charts.

Combined with the fact that each party’s final IC is intended to not come as a surprise to the other party, the early-disclosure-of-case-theory claim chart requirement can have a perverse result: a tendency to assert the kitchen sink in PICs, without much basis beyond “information and belief,” so as to leave a “placeholder” or “hook” in case a theory later turns out to be necessary. In particular, many PICs recite, as a mindless mantra, the function/way/result schema for equivalence (DoE). Alternatively, in some PICs, P thinks it has a slam dunk on literal infringement, says nothing on the DoE, then ends up after the Markman ruling wanting to assert the DoE, and not having left a hook for itself to do so in its PIC. The perverse result is of course meaningless boilerplate recitation of DoE in PICs (see e.g. Garmin v. TomTom); this is perverse because it contradicts the claim-chart goal of meaningful theory lock-down. However, any set of rules such as this will necessarily require trade-offs between multiple contradictory goals; see below for further discussion of how the LPR claim-chart requirements navigate among contradictory goals such as giving P its day in court, avoiding harassment of D, and so on.

[TODO: more on how proposed federal legislation (Goodlatte) would require charts at time of filing, and how this differs (slightly) from LPR requirement for PICs e.g. within 14 days of initial case conference.]

“Where” issues for claim charts

Having covered WHAT, WHO, and WHEN issues above, and about to discuss WHY issues below, for completeness a few WHERE points can be made about claim charts.

Claim charts themselves are all about “where,” in that the LPRs require that a claim chart indicate “specifically where” each element or step of a patent claim is found embodied in, or practices by, some other object, method, or reference. As discussed in detail at xxx below, claim charts are about location, location, location: not only asserting some association between a claim limitation on the one hand and a real-world product or reference on the other, but more specifically showing where the limitation is found in the product or reference.

[TODO: charts re: importation (ITC) or exportation (parts) should explicitly handle where the alleged act occurred]

As a further “where” point, claim charts following discovery may contain highly-confidential “attorney eyes only” material (such as citations from computer source code) which cannot be seen by the other side, and this often requires that such claim charts be produced and/or maintained at a designated secure location, with more convenient circulation of redacted versions. See xxx below.

Finally, a party, especially its 30(b)(6) witness, may be asked to produce a claim chart (or claim-chart like mapping) on the spot, at a deposition. See xxx below.

Why claim charts?: Underlying purposes & policies

Not proof: It would be easy enough to say that, with a claim chart, a party “shows infringement,” “shows invalidity,” “shows non-infringement,” “rebuts invalidity,” or otherwise “makes its case,” and easy enough to assume that making such a showing is the purpose of claim charts. However, for all the importance this book ascribes to claim charts, their purpose is actually not to prove a party’s case, nor are claim charts intended as an arena for substantive disputes (see e.g. H-W Technology v. Apple, citing Balsam Coffee v. Folgers). “The purpose of the Contentions is to outline the theories … and streamline discovery, not to provide proof” (AntiCancer v. Pfizer). [TODO: need procedural contexts for generalized quotations from cases]

[TODO: Not evidence, but…: Claim charts are not evidence as such, except see LPRs section below on “Admissibility of claim charts as evidence”.]

More than mere notice: At the same time, the purpose of claim charts is also not to provide mere “notice” in some bare-minimum sense which can be satisfied with an obligatory boilerplate “let’s not do their work for them” or “it’s good enough for ’em” chart. For example, P alerting D to little more than the claims being asserted, without specifically identifying what activity or product of D’s allegedly constitutes infringement, is mere notice (see e.g. Computer Acceleration v. Microsoft, and see old Form 18). As seen below, an important purpose of claim charts, apart from notice, is early lock-in of case theories.

More than notice, less than proof: The purpose of claim charts is something in between mere notice on the one hand, and proof on the other. The standard is that of establishing that a party will have a reasonable chance of being able to make its case. While claim charts are not pleading as such (though this would change under Goodlatte’s patent reform bill), the standard for claim charts can be analogized to the “plausibility” standard for pleading under Iqbal, Twombly, and In re Bill of Lading, in which a litigant shows why it believes it has a reasonable prospect of proving particular case theories (that is, combinations of law and fact).

Replacing contentions rogs: The underlying purpose behind claim charts can perhaps best be understood by asking why early claim charts (PICs) in particular are required, and why these early claim charts, produced pre-discovery and pre-Markman, are not intended to deviate substantially from the final ICs that parties produce post-discovery and post-Markman. What set of problems were intended to be solved by the requirement of PICs? These were intended to replace contention interrogatories that parties would otherwise employ to learn the other side’s case and/or force the other side into taking an actual position. Claim charts take the place of interrogatories that parties would likely have propounded in the absence of the LPRs. Contention interrogatories of course still exist under FRCP 33(b). However, back when a patent litigant couldn’t depend on LPRs to require that the other side produce contentions (generally in the form of claim charts), the litigant had to specifically request such contentions and — more important — the other side could often successfully defer producing its contentions until after discovery and after claim construction.

[TODO: Claim charts as pleading: “Infringement contentions serve as substitutes for interrogatories, but they also act as forms of pleading that disclose the parties’ theories of their case and thereby shape discovery and the issues to be determined at trial” (Power Integrations v. Fairchild, NDCAL, 2013; similar language in many other cases). See above on “substitute for interrogatories.” See also Realtime Data v. Packeteer, EDTX, 2009: “‘Confirming’ theories of infringement is a task left to discovery, while the preparation and supplementation of infringement contentions is a matter of pleading and merely notifies…”]

Heightened pleading: The claim-chart requirements can be viewed as part of a general trend away from notice pleading, towards heightened “plausibility” pleading, reflected in other areas of law such as securities class actions and prisoner litigation. In this general trend, some tasks are moved from discovery to pleading. While, again, claim charts are not yet part of pleading, they are not part of discovery either: PICs in fact are a precondition to discovery. The goal is to restrict litigation to “plausible” cases. Alternatively, this can be seen as a goal of forcing litigants, early on, to make their cases plausible.

Not an arena for substantive disputes: One implication is that a claim chart can be incorrect, without thereby offending the claim-chart rules. As noted above, claim charts are not intended as an arena for substantive disputes. See e.g. SSL v. Cisco (deny motion to compel supplemental IC, when challenging correctness of substantive infringement theory rather than sufficiency of notice as to infringement theories). Employing an incorrect claim construction would not doom a claim chart, for example. However, employing an unreasonable claim construction should (see e.g. Eon-Net v. Flagstar, in which a chart read a “hard copy” limitation onto a web page; however, also see xxx below on the typical real-world results of inadequate claim charts).

Failure of proof: Conversely, while claim charts are not intended to prove a party’s case, an inadequate claim chart can lead to a “failure of proof” (Celotex) and summary judgment. A party’s failure to early include a theory (such as, and especially, the doctrine of equivalents) in its claim charts can preclude a party from later asserting that theory. (Whether a bare-boned mantra recitation of the theory is a sufficient “hook” to “preserve” the theory is a different question. See e.g. Depomed v. Activis, in which D’s could have raised indefiniteness early on, without specific facts.) [TODO: move this with SJ discussion below]

No musical chairs: Claim charts should force parties to take a firm, or at least semi-solid, position, early in the case. Published opinions regarding claim charts repeatedly refer to the goal of lock-in, early “crystalization” of the case, avoiding the “shifting sands” or “musical chairs” approach (especially following a Markman ruling). See e.g. O2 Micro v. Monolithic Power, cited in H-W v. Apple, re: “shifting sands approach to claim construction.” In other words, claim charts are designed in part to address a perceived problem with claim construction, that is, the tendency to substantially alter theories, including cited facts, following a Markman ruling. See also S3 v. Nvidia re: vexatious shuffling of positions, musical chairs, putting all one’s cards on the table, up front.

[TODO: but also not a “straightjacket”; see Comcast v. Finisar (“All that has been said about our local contentions rule and its goal to suppress the ‘shifting sands’ approach to litigation is true. But it is equally true that the rule is not a straitjacket into which litigants are locked from the moment their contentions are served. There is a modest degree of flexibility, at least near the outset.”)]

Conflicting goals: This goal of avoiding moving targets in litigation (which also includes the “Whack-a-Mole” problem in which a litigant by careful use of phrases such as “See for example” avoids committing to a particular theory of infringement or invalidity), is supposed to met by requiring early commitment to case theories. There is an obvious problem here, however, in that the requirement of early commitment, like marriage before the first date, contradicts the learning and disclosure that is largely the purpose of pretrial litigation, including discovery. How is the early-commitment rule for claim charts to be squared with the very purpose of discovery? Indeed, numerous claim charts violate the rules discussed so far, and practice exactly what claim charts were intended to prevent, and yet as will be seen at xxx below, the courts are overly cautious when faced with such deficient claim charts. In this way, the courts may be trying to balance the conflicting goals relating to pleading and discovery.

Balancing discovery & certainty: LPRs “seek to balance the right to develop new information in discovery with the need for certainty as to legal theories” (O2 Micro v. Monolithic Power; Kruse v. Volkswagen)

Early lock-down: Thus, apart from the notice to the other side, claim charts are intended to serve the important goal of locking down case theories, early in the case.

Claim charts & “trolls”: The goal of early lock-down of case theories might be seen as consistent with a larger goal of “curbing bogus and abusive litigation”, “stopping trolls”, and “curbing fishing expeditions” (or, conversely, of “slamming the federal courthouse doors” per Scott Dodson, New Pleading in the Twenty-First Century, and Sarah Staszak, No Day in Court). Indeed, the inclusion of statutory claim charts in Goodlatte’s patent reform bill is likely intended to reduce litigation by so-called “trolls” (non-practicing entities, or NPEs). And in HR9, claim charts are required for pleading infringement but not invalidity (though they are also required for a defendant’s counterclaims). As they stand in the LPRs, the claim-chart rules apply equally to D as well as to P, with D particularly under tight deadlines not of its own choosing, and the rules can as readily curb abusive litigation by defendants, as by plaintiffs. As one example, a defendant’s kneejerk counterclaim will be handled as summarily as a plaintiff’s claim (see e.g. View Eng. v. Robotic); perhaps more so, as D has less time to prepare its case and is therefore more likely to cut corners. Some scholars have found Twombly being applied more readily to defendants than to plaintiffs.

Curbing fishing expeditions & streamlining discovery: The requirement of claim charts in part reflects a general trend to replace some discovery with mandatory disclosures; moving from discovery to pleading or near-pleading requirements has an aim of avoiding “satellite litigation” over what is discoverable. While one can doubt whether claim charts have otherwise helped “streamline discovery” (see Linex Tech., citing STMicro), they likely have at least help reduce disputes as to each party’s entitlement to the other side’s contentions; contention interrogatories were once a key battle ground. On the other hand, there is now a large body of case law on the sufficiency or insufficiency of claim charts. At any rate, by forcing parties to think through their cases on a limitation-by-limitation basis, and to realize which few limitations held case weaknesses, claim charts have likely helped narrow down cases to a smaller number of limitations in dispute. It is said that claim charts have as a goal reducing “fishing expeditions” (see e.g. Diagnostic (DSC) v. Symantec; see also Theranos v. Fuisz, citing Elan Micro v. Apple), but to the extent this term refers to wide-open discovery requests, they are unlikely to have had this result. The N.D. Illinois local patent rules note, “the purpose of these provisions is to require the parties to identify the likely issues in the case, to enable them to focus and narrow their discovery requests.” This laudable goal applies not only to the start of the case, but is ongoing, with claim charts serving as part of the litigation “funnel.”

Claim chart as ticket of admission to the next stage in litigation: Claim charts are an important means for a party to show why it is entitled to advantage to the next stage in litigation. In particular, PICs determine whether the other side should be required to open its kimono in discovery, and trigger non-discovery mandatory disclosures under the LPRs (which should not be confused with the far less substantial mandatory disclosures under the FRCP). See e.g. Theranos v. Fuisz (stay D’s discovery obligations in light of P’s deficient infringement contentions), Blue Spike v. Adobe (ditto).

Teeing-up the case for a Markman claim construction hearing: Properly-done claim charts should also help prepare each party for claim construction, but showing which limitations and sub-limitations are problematic. By forcing each party to think through its case, even down to the sub-limitation level, properly-done claim charts help reveal a case’s factual weaknesses, and thus help reveal areas where legal (claim construction) support would be helpful. To arrive at this point, i.e. to have a “properly-done” claim chart rather than a pro forma one that is “good enough for now,” the party may need to retain a consulting expert earlier than it would otherwise prefer. The very process of creating a PIC will, at the very least, help determine the preferred claim construction for a later Markman hearing.

Claim charts & gamesmanship: The claim-chart requirement is intended to reduce gamesmanship [cite]. Not surprisingly, claim charts have become a new arena for gamesmanship (in the form for example of bare-minimum charts which simply go through the motions of disclosing a party’s theories, with the party much later “amending”) and harassment (e.g., massive thousand-page charts in which a few substantive case theories are buried). Claim charts are often ground out, at the last possible minute, under such guiding principles as “The judge and jury are never going to read this”, “The other side are sophisticated, they should be able to figure out what we’re getting at”, and “Why do their work for them?” (all sentiments the author has heard). Driven in part by the rules themselves (see above re: DoE), parties often treat their PICs and ICs as “wishing wells,” loose collections of verbiage which can later be used as support for a subsequently-developed theory. Nonetheless, curbing gamesmanship is an important goal, as is avoiding the need for mind-reading or speculation regarding the other side’s case. To this end, sometimes charts which appear to be pro forma exercises do subtly disclose, to a party reading between the lines, a theory of the case. Parties do use claim charts to communicate the known strengths and weaknesses of their case to the other side, without explicitly acknowledging such.

Claim charts are not evidence, except: Claim charts are not intended as evidence, in that the fact-finder will not rely on them as such as the basis for a decision. Nonetheless, claim charts are intended to point to the evidence that the party at any given stage in the litigation would use to make the claims-related elements of its case. As such, claim charts may be used in assessing summary judgment (see below). However, two instances in which claim charts are evidence are (1) PICs as material relevant to P’s reasonable pre-filing investigation under Rule 11 (PICs should show that P has exhausted publicly-available information, and has engaged in “reverse engineering or its equivalent” to learn patent-relevant details of the accused product); and (2) claim charts resented in licensing demands/negotiations (or with demand letters sent to customers) may create the basis for a declaratory judgment (DJ) action; see xxx.

Claims charts & summary judgment (SJ): Claim charts can be used in connection with SJ practice. While, as noted above, not intended to prove a party’s case, claim charts should point to evidence sufficient to support a reasonable fact-finder’s decision. Not coming up to this minimum standard can result in “failure of proof” (Celotex). A claim chart can also be used to defeat SJ by raising a genuine issue of material fact (see e.g. Voter Verified v. Election). This is typically best done through an expert’s declaration. See also Orenshteyn v. Citrix. [TODO: move failure of proof (Celotex) above to here]

Claim charts as “speed bump”, “stop and think”, blessing in disguise: It is perhaps best to think of claim charts as “speed bumps” or “speed limits” — annoying, perhaps, but forcing you, at various stages in litigation, to think through the case on an element-by-element basis, and make your “theories” (i.e., combinations of claim language and facts) clear to yourself. By way of analogy, the FRCP commentary urges attorneys to “stop and think”. The requirement that patent litigants produce meaningful, non-boilerplate claim charts can be seen as an injunction to “stop and think” about the case’s weaknesses as well as strengths, in detail.

Balancing specific to PICs: Preliminary/initial contentions seek to balance between D’s exclusive access to some facts on the one hand, and P’s ability to diligently mine all publicly-accessible facts on the other hand. Put differently, PICs balance between the providing meaningful notice to D and avoiding “fishing expeditions” by P (which are expensive to both D and P) on the one hand, and avoiding presenting P with a “chicken and egg” problem of fact discovery on the other hand (P needs certain facts to provide sufficient notice to D, but D has exclusive access to some of those facts).

[TODO: claim charts not a mere technicality, akin to old common-law pleading; see e.g. KI Ventures v. Fry’s (CAFC)]

[TODO: LPRs as patent-specific “policy lever” for otherwise transsubstantive rules of civil procedure; see FRCP 2 below]

Claim-chart and related requirements from Local Patent Rules and other authorities, with comments

The basic rule for initial infringement contentions (formerly known as PICs), found in the Local Patent Rules (LPRs) for e.g. N.D. Cal., E.D. Tex. (but not e.g. S.D. N.Y.), begins:

“A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality…” (N.D. Cal. Patent L.R. 3-1(c)).

Each x3: Each limitation of each claim for each instrumentality. Note the requirement is really for a Limitations Chart rather than a Claim Chart.

Representative limitations: If the asserted claims include repetitive limitations, it is preferable to NOT duplicate the same information, especially if lengthy, each time the limitation appears. However, the otherwise-duplicative information should not replaced with a mere “see claim 1” reference; see xxx below. In particular, be careful of the same limitation language appearing in different claim types (e.g. system vs. apparatus), as this may call for different facts.

Representative instrumentalities: When there are a large number of accused instrumentalities (products, services, etc.; see below), the requirement that each limitation be charted for “each Accused Instrumentality” can be overcome by using “representative instrumentalities”. However, it must be shown WHY a charted instrumentality is representative of the others. See xxx.

Location, location, location, and naming: Note the requirement demands that the chart “identify[] specifically where” each limitation is contained. The chart is all about the location within the instrumentality of each element or step identified by the patent claim. Such locations typically have names or other identifiers (numbers, coordinates, part numbers, etc.). The chart should wherever possible employ the nomenclature of the instrumentality, NOT that of the patent. Case law frowns on “mimicking” the “mere” language of the claim, i.e., P merely employing its own (P’s) language to describe D’s technology, in contrast to P employing D’s language to describe D’s technology, and then tying this to, or weaving this with, the language from P’s claim; see xxx.

Location of method steps and negative limitations: The “specifically where” requirement is not a perfect fit for the steps of method claims, nor for negative limitations (e.g. “substantially without noise”). P generally will point to parts or components that carry out a step, or to locations in technical documentation or source code. For example, a different rule regarding methods or processes (in contrast to individual steps of a process) notes that, if the name of the process/method is unknown, a chart may reference “any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process” — this likely would apply to individual steps, as well as overall processes. Negative limitations are generally shown, not by attempting to prove a negative in some global sense (“nowhere in D’s accused product does it do X…”), but rather by showing that, within the confines of the other limitations, X is not done.

“Specifically”: Note that requirement demands that the chart indicate “specifically” where each limitation is located. The courts frown on merely inferring the existence of a limitation, which is not only insufficiently specific, but also fails to indicate a location. Of course, P pre-discovery legitimately may not know this information for each and every limitation, and so may employ the “information and belief” formulation, but only so long as it truly has information and belief, as opposed to mere hopeful speculation inviting a fishing expedition. The “specifically” requirement has force; see e.g. Allvoice v. Microsoft (CAFC re: W.D. Wash.), Keranos v. Silicon Storage (CAFC re: E.D. Tex.).

Holistic claim-by-claim approach: Interestingly, the S.D. N.Y. rules only require a claim-by-claim, not limitation-by-limitation, infringement contentions disclosure “… which identifies for each opposing party, each claim of each patent-in-suit that is allegedly infringed and each product or process of each opposing party of which the party claiming infringement is aware that allegedly infringes each identified claim” (S.D.N.Y. Local Patent Rule 6).

Instrumentalities: The term “instrumentality” is generally explained within the LPRs by way of example: “… apparatus, product, device, process, method, act, or other instrumentality …” (N.D. Cal. Patent L.R. 3-1(b)).

Naming each accused instrumentality: The entire rule, from which the above set of exemplary instrumentalities has been extracted, requires:

“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;” (N.D. Cal. Patent L.R. 3-1(b)).

“of each opposing party of which the party is aware”: At the outset of the litigation, a party may not be aware of all relevant instrumentalities, or even of all relevant defendants. The test for later amendment is not merely earlier unawareness, but whether a reasonably-diligent party could have learned of the instrumentality and/or defendant. Relevant cases include products under development or in beta testing at the time suit was filed.

“This identification shall be as specific as possible”: The “as possible” test calls for reasonable diligence in unearthing publicly-accessible information. In later seeking amendment (which is where such rules typically find their application), a party should not fall back on its own simple failure to diligently mine publicly-accessible sources of information.

“Each product, device, and apparatus shall be identified by name or model number, if known”: Though not explicit in this portion of the rule, the “if known” is not an invitation to merely inquire into one’s own scanty current knowledge. Instead, the “specific as possible” clause should govern, requiring “exhaustion” of public sources of information. See xxx on “exhaustion.”

“Each method or process shall be identified by name, if known…”: As noted above, the rules expect that accused technology will have names, and that these names (rather than the mere language of the claim) will be employed in claim charts. And as quoted above, the rule goes on to suggest that if the name of the process/method is unknown, a chart may reference “any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process”.

Doctrine of equivalents (DoE): The rules generally require that DoE be asserted early in the litigation (the rules as quoted above and here apply to initial infringement contentions, to be served “Not later than 14 days after the Initial Case Management Conference”):

“Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;” N.D. Cal. Patent L.R. 3-1(e)

Function/way/result, and why: In some districts, e.g. N.D. Ill. (see also S.D. Ohio; W.D. Penn.; Utah), a DoE assertion in the chart must include function/way/result (F/W/R) analysis; again, this applies to initial contentions, thus creating a ripe area for amendment disputes when a party fails to early assert DoE and/or asserts it in a thoughtless boilerplate manner:

“For any claim under the doctrine of equivalents, the Initial Infringement Contentions must include an explanation of each function, way, and result that is equivalent and why any differences are not substantial;” N.Ill. LPR 2.2(d)

Note the requirement of an explanation “why,” which arguably should be made more widely applicable in claim charts.

Means-plus-function under 112(f) or 112(6): The rules generally require that the patent owner call out limitations to be treated as functional, which means supplied by the patent disclosure:

“… 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.” N.D. Cal. Patent L.R. 3-1(c)

or in some districts:

“… the identity of the corresponding structure and function and where such structure and function is found in the Accused Instrumentality;” N.D. Ohio L.P.R. 3-1(c)

The identity of the structure, act, or material (SAM) — i.e., the means which carries out the function — can be placed in the left column of the chart, as in the example at xxx above; this is then juxtaposed to the SAM found in the accused product. Note that 112(f) covers not only those limitations with a “means for…” clause, but any purely functional language. On the other hand, it is not so much the limitation as a whole which is governed by 112(f), but rather a specific “means for…” clause within the limitation. Generally, it is NOT in the interest of the patent holder asserting infringement to contend applicability of 112(f), as this narrows claim scope to the specifically-disclosed means, though it is in the patent-holder’s interest vis-a-via invalidity.

Indirect infringement: Of course, indirect infringement, by way of inducement or contribution, requires an act of direct infringement, which must be charted:

“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.” N.D. Cal. Patent L.R. 3-1(d).

Since the chart itself is in 3-1(c), indirect infringement need not be spelled out in the chart itself, though it arguably should be to the extent there are limitation-specific acts of inducement or contribution. Note also that inducement and contribution both generally require knowledge of the patent, and hence a degree of willfulness: [TODO, change this, don’t imply this relationship between indirect and willful infringement]

Willful infringement: “If a party claiming patent infringement alleges willful infringement, the basis for such allegation.” (N.D. Cal. Patent L.R. 3-1(h).) Since willful infringement is generally viewed as calling for heightened pleading (see In re Bill of Lading), the “basis” called for here is likely that of plausibility pleading. [TODO: But this suggests that everything else requires something less than plausibility standard?; note explicitly that willfulness is not analogous to fraud, and does not require pleading with particularity; TODO: if P is asserting D’s willful infringement, it should be clear enough to P how D infringes, that P can do a better-than-average PIC; willfulness assertion weakened if P has problems pointing to details on infringement?]

Particularity: N. Ill. and D.Utah requires “identification, with particularity” of each item of prior art; D. Maryland requires that an enablement defense “set forth with particularity what is lacking in the specification to enable…”;

Design patents: the N.D.N.Y. rules provide guidance for charting infringement of design patents:

“For each design patent or variety of plant patent claim that is alleged, a chart displaying each view of the design or variety of plant patent drawings and a view of the accused design or variety of plant from every available angle for all embodiments.” (N.D.N.Y. L.P.R. 3-1(c)(ii).)

Note the “view … from every available angle for all embodiments” requirement, which corresponds to the “each x3” requirement for utility patents discussed above. See the Crocs case discussed at xxx, however, in which a more limited number of views is employed. [TODO: “each angle depicted in the design patent”?]

Importation: see International Trade Commission (ITC below) [TODO: this tends to imply that importation is only actionable at the ITC, but it is actionable under 35 USC 271, albeit not with an order to block imports]

Practicing/working the invention: While US patent law does not require that a patent owner “work” or practice the invention as a prerequisite to suing for infringement — hence the phenomenon of non-practicing entities (NPEs) or “trolls” — there are areas in which P is better positioned if it works the invention; see xxx. The ITC requires a showing of “domestic industry”; see ITC below. In some districts (e.g. N.D. Cal., S.D. Cal., E.D. Tex., N.D.N.Y.), the rules require that P identify any working/practicing on which it may rely:

“If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.” (N.D. Cal. Patent L.R. 3-1(g))

While not included within the 3-1(c) chart, showing that the claimed invention is practiced is best done with a chart, preferably (though not necessarily) of a representative asserted claim.

Initial invalidity contentions on a tight deadline: The infringement contention requirements above apply early in the case, as part of initial or preliminary infringement contentions (PICs), and are generally due within 10 days of the initial case management conference. However, as the patent holder is master of its case, it has a good deal of say in when it must produce these PICs. In contrast, while the accused infringer generally has a longer period (28 to 45 days following service of infringement contentions) in which to produce its initial invalidity contentions, this is a much tighter deadline as the defendant has little control over when the plaintiff will choose to file suit. Contrast:

“Not later than 14 days after the Initial Case Management Conference, a party claiming patent infringement shall serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.'” (N.D. Cal. Patent L.R. 3-1)

with:

“Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Invalidity Contentions” which shall contain the following information:…” (N.D. Cal. Patent L.R. 3-3)

Invalidity contentions: In other respects, the invalidity contentions are largely a mirror image of the infringement contentions:

“A chart identifying where specifically in each alleged item of prior art each limitation of each asserted claim is found…” (N.D. Cal. Patent L.R. 3-3(c))

Prior art: The rules generally spell out the types of prior art which are available, including not only patents and prior-art publications (including, by implication, published patent applications), but also the class of unpublished prior art under 102(b) which includes on-sale and public-use material (see e.g. N.D. Cal. Patent L.R. 3-3(b)).

On sale, public use, and offers for sale: “Prior art under 35 U.S.C. ç 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.” (N.D. Cal. Patent L.R. 3-3(b))

Note the focus not on the sale itself, but rather on the offer for sale.

Obviousness: The party must spell out (though not necessarily within the chart) whether anticipation (lack of novelty) or obviousness is being asserted:

“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;” (N.D. Cal. Patent L.R. 3-3(b))

Note the requirement for an “explanation of why”  and for identification of “any” combinations. Given a large number of prior art references, the identification of “any” combinations can become unwieldy, and some cases have allowed representative combinations; see xxx.

Explain reasons for combining: In some districts, the specific motivation to combine must be explained:

“Why, if obviousness is alleged, the prior art renders the allegedly invalid claims obvious, including why combining the identified items of prior art demonstrate obviousness, and explain why a person of skill in the art would find the allegedly invalid claims obvious in light of such combinations (e.g., reasons for combining references).” (N.D. Ind. L.P.R. 3-1(e)(a)(4))

Obviousness chart: As noted above, obviousness under e.g. the N.D. Cal. rules need not be analyzed inside a chart. [?] However, parties typically do produce obviousness charts, sometimes with multiple-column format; see xxx. One district, N.D. Indiana, explicitly requires obviousness charting:

“Within 28 days after receiving the preliminary infringement contentions, each party opposing the patent infringement claim must serve on all parties its preliminary invalidity contentions. These contentions must include a chart (or charts) identifying each allegedly invalid claim, and each item of prior art that anticipates or renders each claim obvious. Claim charts must contain the following contentions: …”, followed by the N.D. Ind. obviousness requirements quoted above. (N.D. Ind. L.P.R. 3-1(e)(a).)

Lack of enablement: The rules require early assertion of defenses such as lack of enablement (“early” because this is found in xxx rather than in xxx):

“Any grounds of invalidity based on 35 U.S.C. 101, 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.” (N.D. Cal. L.P.R. 3-3(d))

While these fall outside the 3-3(c) chart requirement, often a chart will provide a useful way to show lack of enablement of one of more limitations. See also D. Maryland LPR: “each party asserting an enablement defense must set forth with particularity what is lacking in the specification to enable one skilled in the art to make or use the invention, specifically citing information or materials obtained in discovery to the extent feasible.”

Unenforceability (inequitable conduct): As it requires showing intent to deceive, inequitable conduct before the PTO may require pleading with particularity, e.g. N.D.N.Y.:

“Subject to amendment in the event of later discovered facts, unenforceability contentions shall contain, in detail, each ground then known upon which the accused infringer will assert that any patent in suit is unenforceable. If the accused infringer’s claim of unenforceability is based upon inequitable conduct, the accused infringer shall describe each omission or misrepresentation made to the Patent and Trademark Office (PTO) and shall state all grounds upon which the accused infringer will argue at trial that those prosecuting the patent intended to deceive the PTO, including the identification of any prior art references not disclosed to the PTO during the prosecution of the patent in suit, any facts suggesting that one or more persons substantially involved in the prosecution of the patent in suit were aware of such prior art reference prior to the issuance of the patent in suit, and any facts relevant to the element of intent to deceive.” (N.D.N.Y. L.P.R. 3.3(c))

Declaratory judgment (DJ) contentions: The rules include procedures for DJ actions, e.g., where the court is asked for a finding of non-infringement or invalidity, even in the absence of an in-court assertion of infringement; see xxx. DJ assertions of non-infringement and invalidity are handled somewhat differently. Patent-holding D is expected to file a claim for patent infringement in its answer to apprehensive P’s complaint. See e.g. N.D. Cal. 3-5, E.D. Tex. 3-5, N.D. Ind. 3-1(g).

Response charts: The local patent rules do not uniformly cover response charts such as non-infringement and validity. These for example are absent in the N.D. Cal. rules. However, some districts do spell out whether responses are to admit/deny for each patent claim limitation, or whether the response can focus solely on limitations asserted to be missing:

Non-infringement contentions: Contrast admit/deny (e.g. W.D. Wash.) with assertion of absence (e.g. D. Nev.):

Admit or deny: “For each Asserted Claim against that party, a chart stating whether the party admits that that element is present in the Accused Device or contends that it is absent from the Accused Device. If the party contends that an element is absent from the Accused Device, it shall set forth in detail the basis for that contention.” (W.D. Wash. L.P.R. 121(a))

Assertion of absence: “A detailed description of the factual and legal grounds for contentions of noninfringement, if any, including a clear identification of each limitation of each asserted claim alleged not to be present in the Accused Instrumentality;” (D. Nev. L.P.R. 16.1-8(a); see also 16-1.10, in which party responding to non-infringement contentions must admit/deny: “The response shall include a detailed description of the factual and legal grounds responding to each contention of non-infringement, invalidity, including whether the party admits to the identity of elements in asserted prior art and, if not, the reason for such denial; and unenforceability.”)

Validity contentions: These are generally a mirror-image of non-infringement contentions, with similar distinctions between admit/deny (e.g. N.Ill.) and assertion of absence (e.g. D.N.J.), though note that obviousness may be treated separately:

Admit or deny: “The Initial Response to Invalidity Contentions shall contain a chart, responsive to the chart required by LPR 2.3(b)(3), that states as to each identified element in each asserted claim, to the extent then known, whether the party admits to the identity of elements in the prior art and, if not, the reason for such denial.” (N. Ill. LPR 2.5)

Assertion of absence: “(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) If obviousness is alleged, an explanation of why the prior art does not render the asserted claim obvious;” (D.N.J. LPR 3-4A(a)-(b))

[TODO: insert discovery requests which are equivalent to asking other side to do a claim chart, e.g. ND Cal 2-5: “(b) 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;” and “(c) Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art;” ND Cal LPR handles these re: untimely requests; “premature”?; see FRCP 33, court can defer rogs.]

Final contentions: Some district rules e.g. N.D. Ill. require filing of “final” contentions, while others e.g. N.D. Cal. treat similar concerns as part of the rules on amending. In N.D. Ill., the rules allow less than one-half year between initial and final contentions:

“A party claiming patent infringement must serve on all parties “Final Infringement Contentions” containing the information required by LPR 2.2 (a)-(h) within twenty-one (21) weeks after the due date for service of Initial Infringement Contentions.” (N.D. Ill. L.P.R. 3-1; similar timeline for invalidity contentions)

[TODO: more on final contentions especially “deeming” the contentions as final, e.g. E.D. Tex. LPR 3-6(a) states, “Each party’s ‘Infringement Contentions’ and ‘Invalidity Contentions’ shall be deemed to be that party’s final contentions, except as set forth below,” setting forth an allowed amendment, without leave required, following the court’s claim construction, with all other amendment requiring leave of the court for good cause.]

Amending: The local rules on amending patent contentions is where the rubber meets the road, as it is here that the rules will most likely be enforced — when a party seeks to amend, or is ordered to amend, a deficient or incomplete claim chart. Amending is not a right to be reserved (see xxx), but is permitted for good cause and absence of undue prejudice to the other party. Contrast more liberal amending under FRCP 15. “Unlike the liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly conservative” (Acer. v. Tech. Properties, NDCAL, 2011). [So for purposes of amendment, claim charts are not pleading; see xxx.] Whereas FRCP 15 places the burden on the party opposing amendment, the LPRs burden the party seeking amendment to show good cause. N.D. Cal.’s local rules provide three important examples of good cause:

“Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving 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; and
(c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.” (N.D. Cal. Patent L.R. 3-6(a)-(c))

Nonpublic & diligent: Note that amending has good cause when it includes nonpublic information, and when the party had previously been diligent in seeking information. As discussed in detail in xxx on pre-filing investigation, “diligence” in this context mean “exhausting” public sources of information, including via e.g. reverse engineering. A party should not be allowed to amend with newly-uncovered information, if it could earlier have uncovered and included this same information. The same point applies to amendment with new theories, such as DoE. The amending rules cast a shadow over the other rules. Also see below on amending expert reports.

[TODO: claim chart amendment following claim construction, e.g. S.D. Cal. 3.6(a): “As a matter of right, a party asserting infringement may serve Amended Infringement Contentions no later than the filing of the parties’ Joint Claim Construction Chart.” Etc. See e.g. EDTX 3-6(a) final contentions.]

Duty to supplement: The duty to supplement claim charts derives from FRCP 26(e), in which a party must supplement its disclosures and responses “in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing…”. In some districts e.g. S.D.N.Y. this is explicitly applied to claim charts:

“The duty to supplement in Fed. R. Civ. P. 26(e) shall apply to the Infringement Contentions and the Invalidity Contentions required by Local Patent Rules 6 and 7.”

In e.g. N.D. Cal., “The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.”

Mandatory disclosures accompanying claim charts: At the same time as claim charts are produced, parties may also need to produce materials that would otherwise be the subject of a discovery request from the other side. For example, in N.D. Cal.:

“With the ‘Disclosure of Asserted Claims and Infringement Contentions,’ the party claiming patent infringement shall produce to each opposing party or make available for inspection and copying: … [materials re: offer to sell, public use; conception, reduction to practice, etc.; file wrapper; ownership; practicing/working] (N.D. Cal. Patent L.R. 3-2)

“With the ‘Invalidity Contentions,’ the party opposing a claim of patent infringement shall produce or make available for inspection and copying: … [materials re: source code, etc. to show operation of accused device; any prior art not appearing in file wrapper] (N.D. Cal. Patent L.R. 3-4)

Note that these mandatory disclosures are not parallel, in that D’s invalidity contentions are to be accompanied by the material (e.g. source code) that P wants in order to prove infringement, and that (to a lesser extent) P’s infringement contentions are accompanied by some of the material (e.g. re: public use and offers to sell) that D wants to prove invalidity. D’s disclosures are possibly only mandatory in response to sufficient infringement charts; see e.g. Theranos v. Fuisz (stay D’s discovery obligations in light of P’s deficient infringement contentions).

[TODO: need entry for LPRs on claim construction, including technology tutorial for court, and role of the accused product in efficient claim construction. E.g., N.D. Ohio 4.6: “At the hearing, the parties shall submit the best available specimens of patented technology and allegedly infringing activity (e.g. products, schematics, photos, product information sheets).” Why is alleged infringing activity coming into Markman hearing? For efficiency; don’t bother construing terms that won’t help resolve dispute. See SRI v. Matsushita; Wilson Sporting Goods v. Hillerich (2006 cases).]

Joint Claim Construction Chart: Though substantially different from the types of charts covered in this book, it should be noted that LPRs require a Joint Claim Construction Chart from the parties. For example, S.D. Cal.:

“Not later than fourteen (14) days after service of the ‘Responsive Claim Constructions’ pursuant to Patent L.R. 4.1.c, the parties must complete and file a Joint Claim Construction Chart, Joint Claim Construction Worksheet and Joint Hearing Statement. … b. The Joint Claim Construction Chart must have a column listing complete language of disputed claims with the disputed terms in bold type and separate columns for each party’s proposed construction of each disputed term. Each party’s proposed construction of each disputed claim term, phrase, or clause, must identify all references from the specification or prosecution history that support that construction, and identify 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 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 percipient and expert witnesses. For every claim with a disputed term, each party shall identify with specificity the impact of the proposed constructions on the merits of the case.” (S.D. Cal. L.P.R. 4.2; see also e.g. N.D. Cal. Patent L.R. 4-3)

[TODO: more on case timing with respect to claim construction; see claim chart amendments above]

Experts: While expert reports are covered under FRCP 26(a)(2)(B) and expert depositions under FRCP 26(b)(4)(A), some LPRs also specify requirements for experts, e.g. N.D. Ill. LPR 5.1 covers timing for initial expert reports (21 days after claim construction ruling) and rebuttal expert reports (35 days after initial expert report). See xxx on the timing of expert reports and claim charts with respect to the Markman claim construction ruling. N.D. Ill. also has a “presumption against supplementation of reports”:

“Amendments or supplementation to expert reports after the deadlines provided herein are presumptively prejudicial and shall not be allowed absent prior leave of court upon a showing of good cause that the amendment or supplementation could not reasonably have been made earlier and that the opposing party is not unfairly prejudiced.” (N.D. Ill. L.P.R. 5.3)

Experts & claim construction: The LPRs often address expert-witness issues in the context of claim construction, e.g. E.D. Tex.:

“Not later than 60 days after service of the ‘Invalidity Contentions,’ the parties shall complete and file a Joint Claim Construction and Prehearing Statement, which shall contain the following information: … (d) 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…” (E.D. Tex. P.R. 4-3; see also 4-3(b), similar to S.D. Cal. 4.2 above, identifying extrinsic evidence in support of or against a claim construction expected to be supplied by testimony of an expert witness)

Purposes of initial contentions (PICs): The comments to N.D. Ill. LPRs ascribe a purpose to the initial charts: “The purpose of the initial disclosures pursuant to LPR 2.2 – 2.5 [re: initial infringement, invalidity, non-infringement contentions, and initial responses] is to identify the likely issues in the case, to enable the parties to focus and narrow their discovery requests.” N.D. Ill. comment to LPR 1.6. Further:

Meaningful, not boilerplate; non-evasive: “LPR 2.2 – 2.5 supplements the initial disclosures required by Federal Rule of Civil Procedure 26(a)(1). As stated in the comment to LPR 1.6, the purpose of these provisions is to require the parties to identify the likely issues in the case, to enable them to focus and narrow their discovery requests. To accomplish this purpose, the parties disclosures must be meaningful — as opposed to boilerplate — and non-evasive. These provisions should be construed accordingly when applied to particular cases.” (N.D. Ill. comment to LPR; see also D.Utah comment to LPR 2)

Admissibility of claim charts as evidence: In N.D. Ill, precisely because of their purpose in focusing and narrowing the case, the initial charts “are inadmissible as evidence on merits” (Comment: “Permitting use of the initial disclosures as evidence on the merits would defeat this purpose. A party may make reference to the initial disclosures for any other appropriate purpose.”) N.D. Ill. LPR 1.6 & comment. However, in e.g. N.D. Cal., even initial claim charts are apparently admissible as evidence:

“Admissibility of Disclosures [] Statements, disclosures, or charts governed by these Patent Local Rules are admissible to the extent permitted by the Federal Rules of Evidence or Procedure. However, the statements and disclosures provided for in Patent L.R. 4-1 and 4-2 [re: claim construction] 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 Local Rules shall be taken.” N.D. Cal. Patent L.R. 2-4.

[TODO: note above material (Admissibility of claim charts as evidence) in section on purpose of claim charts, modify statement that claim charts are not evidence as such; would want to use a party’s claim charts as evidence of e.g. its implied position on claim construction, or its position on what infringes, which could be used re: invalidity.]

Signing claim charts; Rule 11: In N.D. Ill., “All disclosures made pursuant to LPR 2.2 [initial infringement contentions], 2.3 [initial non-infringement and invalidity contentions], 2.4, 2.5 [initial response to invalidity contentions], 3.1 [final infringement and invalidity contentions], and 3.2 [final non-infringement and validity contentions] must be dated and signed by counsel of record (or by the party if unrepresented by counsel) and are subject to the requirements of Federal Rules of Civil Procedure 11 and 26(g).” N.D. Ill. L.P.R. 1.5; see also S.D.N.Y. L.P.R. 3. Note the explicit reference to Rule 11 (which permits sanctions for improper pleadings, motions, and papers which e.g. harass, cause unnecessary delay, or needlessly increase the cost of litigation) and to FRCP 26(g) (signing disclosures, discovery requests, etc., following a reasonable inquiry, etc.). See also N.D. Cal. (“All statements, disclosures, or charts filed or served in accordance with these Patent Local Rules shall be dated and signed by counsel of record”), E.D. Tex. (ditto). Signing is by the attorney, not the party.

Sanctions: For example, N.D. Tex. (Dallas) allows that “Failure to comply with the requirements of this paragraph [3-1 Disclosure of Asserted Claims and Preliminary Infringement Contentions, including 3-1(a)(3) claim chart] , including the requirement of specificity and detail in contending infringement, may result in appropriate sanctions, including dismissal.” LPR 3-1(b); with a similar rule 3-3(b) for Preliminary Invalidity Contentions.

Good faith: For example, N.D. Cal. allows that “A failure to make a good faith effort to narrow the instances of disputed terms or otherwise participate in the meet and confer process of any of the provisions of section 4 [re: claim construction] may expose counsel to sanctions, including under 28 U.S.C. 1927.” N.D. Cal. Patent L.R. 4-7. More broadly, e.g. D. Nev. also covers initial disclosures. D. Nev. L.P.R. 16.1-21. Under 28 USC 1927, “Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.”

[TODO: limits on number of asserted claims per patent; limits on number of prior-art references (e.g. initially 12 in Utah, 10 in final ICs); see Joint CC Chart below for limits on number of terms for claim construction]

[TODO: above, add in cases enforcing and/or commenting on rules]

A convenient source of Local Patent Rules is http://www.localpatentrules.com which, in addition to district-by-district rules, provides convenient categories for comparison, such as Amending/Final Contentions; Declaratory Judgment Infringement Contentions; Infringement Production (D and P); Joint CC Statement; Non-infringement Contentions; etc.

Claim chart for importation (ITC): Infringement by importation is not covered by the LPRs. Such cases are [typically?] heard by the International Trade Commission (ITC). The ITC’s rules require:

“A showing … when practicable, by a chart that applies each asserted independent claim of each involved U.S. patent to a representative involved article of each person named as violating section 337 of the Tariff Act or to the process under which such article was produced;” (ITC Rules 210.12 (a)(9)(viii); https://www.usitc.gov/secretary/fed_reg_notices/rules/itcrules409.pdf)

Note that the ITC chart applies to a “representative involved article,” and hence may allow for streamlined charting when large product families are accused; see xxx on representative instrumentalities.

Pictures of tangible goods: The ITC specifically requires pictures, linked to the chart: “(x) Drawings, photographs, or other visual representations of both the involved domestic article or process and the involved article of each person named as violating section 337 of the Tariff Act of 1930, or of the process utilized in producing the imported article, and, when a chart is furnished under paragraphs (a)(9)(viii) and (a)(9)(ix) of this section, the parts of such drawings, photographs, or other visual representations should be labeled so that they can be read in conjunction with such chart…”

ITC “domestic industry” (working/practicing) chart: To satisfy the technical prong of its domestic industry requirement (see xxx), ITC expects a chart showing the patentee’s own practicing/working of the invention in the US; as explained at xxx, this can be by even an (unwilling) licensee. ITC Rules 210.12(a)(9)(ix): “A showing that an industry in the United States, relating to the articles protected by the patent exists or is in the process of being established. The complainant shall make such showing by appropriate allegations, and when practicable, by a chart that applies an exemplary claim of each involved U.S. patent to a representative involved domestic article or to the process under which such article was produced…”

Note that only an exemplary claim need be charted to show domestic industry. [TODO: The domestic industry needs to be current (or in near future?), not merely past.]

Proposed federal legislation (Goodlatte “Innovation Act,” HR9): Rep. Goodlatte (R.-VA), chairman of the House Judiciary Committee, has for several years sponsored a bill which would, inter alia, make initial infringement claim charts a federal statutory requirement, as part of pleading a patent infringement case. The most prominent feature of the bill, currently called the “Innovation Act” (HR9), is its “loser pays” provision. An earlier version, HR3309, passed the House but not the Senate. HR9 has been approved by the House Judiciary Committee. According to Rep. Goodlate, “The bill targets abusive patent litigation behavior and not specific entities with the goal of preventing individuals from taking advantage of gaps in the system to engage in litigation extortion.  It does not attempt to eliminate valid patent litigation…. Requiring parties to do a bit of due diligence up front before filing an infringement suit is just plain common sense…. The legislation prevents any one party in a patent lawsuit from unilaterally racking up extreme litigation costs for another party in an attempt to force a dubious settlement.” (http://goodlatte.house.gov/news/documentsingle.aspx?DocumentID=358)

Proposed federal infringement claim chart requirement: “… For each accused instrumentality … a clear and concise statement of — (A) where each element of each claim … is found within the accused instrumentality; and (B) with detailed specificity, how each limitation of each claim … is met by the accused instrumentality.”

Note each x3: each element of each claim within each accused instrumentality

Note continued focus on location: “where each element … is found within” the instrumentality

Note the “clear and concise statement,” which in many ways is more difficult than dumping 100 pages of material into the right-hand column of a claim chart (see xxx on this common practice). A clear and concise statement is also riskier to a party than a vague lengthy one, as the former provides a clearer target for the other side.

“How”: At the same time, the statement cannot be too concise, as the requirement requires “detailed specificity” as to “how” each limitation is met, i.e., some explanation of why D’s Y matches P’s X.

Enacting LPR claim charts: Note that the proposed statutory requirement would make the LPR initial infringement claim chart requirements uniform and nationwide, and would formally turn them into pleading. Question: would existing case law regarding infringement contentions be relevant in interpreting the statutory version, which large enacts the same claim-chart form (albeit only for initial infringement contentions)?

Application to infringement and counterclaim, but not to invalidity or non-infringement: The federal statutory requirement would apply to P’s infringement contentions (including D’s counterclaim), but not to D’s invalidity or non-infringement contentions:

“281A. Pleading requirements for patent infringement actions … a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not readily accessible to such party…”

“Not readily accessible” and goal of “a bit of due diligence up front”: The carve-out for information which “is not readily accessible” appears at first to be large, sufficiently large to evaporate the bill’s goal of forcing Ps to exercise more “due diligence” before filing suit (see xxx on pre-filing investigation). However, “information not readily accessible” is clarified and tightened in a subsequent paragraph of the bill:

“(b) INFORMATION NOT READILY ACCESSIBLE — If information required to be disclosed … is not readily accessible to a party after an inquiry reasonable under the circumstances, as required by Rule 11 of the Federal Rules of Civil Procedure, that information may instead be generally describe, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information.”

Note “after an inquiry reasonable under the circumstances” as required by Rule 11, and note the requirement description (at least, “generally describe”) of the efforts made to acquire information.

Loser pays: While claim charts are most relevant here, the big feature of Goodlatte’s bill is “loser pays”: 35 USC 285. “… The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party … unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust.” [TODO: contrast current wording of 35 USC 285; see fee-shifting at xxx below.]

FRCP relationship to claim charts, LPRs:

FRCP 1: A goal of the rules is “the just, speedy, and inexpensive determination of every action and proceeding.” The “speedy” and “inexpensive” parts might be kept in mind while working on claim charts (as might the FRCP Advisory Committee Notes (ACN) on Rule 11: “The rule continues to require litigants to ‘stop-and-think’ before initially making legal or factual contentions).

While searching for the word “pages” in claim chart cases might indicate that courts find the sheer size of a chart persuasive as to its adequacy (see e.g. xxx), at least some courts are clearly not impressed by massive repetitive charts produced with cut and paste (see e.g. Connectel v. Cisco: Connectel’s “six hundred footnotes simply refer back to the same handful of string cites”, in case granting motion to compel, and ordering Connectel to comply with LPR 3-1).

FRCP 2: “There is one form of action – the civil action.” It might be argued that the LPRs, and the claim-charts requirement under LPRs, wrongly imposes an extra burden on patent litigants not imposed in other areas of the law, and therefore violates the transsubstantive intent of FRCP 2. However, the FRCP permits local rules (see FRCP 83(a) below), and several other areas of law have specific rules with heightened pleading, e.g. securities litigation (the PSLRA) and prisoner litigation (the PLRA). While these are statutory, the patent claim-chart requirements are likely to also become statutory (see Goodlatte above). This is also consistent with Markman v. Westview, making patent claim construction a legal matter for the judge rather than a factual matter for the jury.

FRCP 8(a)(2) pleadings & Twombly/Iqbal: A pleading must contain “a short and plain statement of the claim showing that the pleader is entitled to relief…”. To the extent that claim charts are pleadings (see xxx above), they are subject to the balancing act required by 8(a)(2): on the one hand “short” and on the other hand actually “showing” entitlement, i.e., not merely conclusory. In Twombly v. Bell Atlantic, the Supreme Court has interpreted the “showing…” clause:

“The need at the pleading stage for allegations plausibly suggesting (not merely consistent with) agreement reflects the threshold requirement of Rule 8(a)(2) that the ‘plain statement’ possess enough heft to ‘sho[w] that the pleader is entitled to relief.'”

And in Iqbal v. Ashcroft, in which the Supreme Court clarified that “plausibility” pleading was required in all civil actions, it further explained Rule 8:

“A pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action will not do.’ …  Two working principles underlie our decision in Twombly. First, the tenet that a court must accept as true all of the allegations accepted in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice…. We ‘are not bound to accept as true a legal conclusion couched as a factual allegation.’ Rule 8 marks a notable and generous departure from the hyper-technical, code-pleading regime of a prior era, but it does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions. Second, only a complaint that states a plausible claim for relief survives a motion to dismiss…. a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than mere conclusions, are not entitled to the assumption of truth.”

To the extent that claim charts are treated as pleadings, Iqbal would apply. Many claim charts fail under this standard: even when enormous productions going far beyond a “short and plain statement,” claim charts are frequently merely conclusory, e.g. by parroting or mimicking the claim language when identifying the other side’s accused technology. See xxx on common claim-chart problems. A “threadbare recital of the elements” of a COA likely includes a parroting of each element or limitation of an asserted patent claim.

[TODO: note that a request for temporary restraining order (TRO) or preliminary injunction (PI) requires showing “likelihood of success on the merits,” which is a higher standard than plausibility, and so likely requires a better claim chart.]

FRCP 8(b)(1)(B) admit/deny: “In responding to a pleading, a party must: … admit or deny the allegations asserted against it by an opposing party.” 8(b)(5): “A party that lacks knowledge or information sufficient to form a belief about the truth of an allegation must so state, and the statement has the effect of a denial.” 8(b)(6): “Effect of Failing to Deny. An allegation … is admitted if a responsive pleading is required and the allegation is not denied. If a responsive pleading is not required, an allegation is considered denied or avoided.” To the extent applicable to claim charts considered as pleadings (see xxx above), this would require that, when a response chart is required, a party’s failure to engage with each and every limitation of the responded-to chart should be treated as not-denied. See below on FRCP 11(b)(4) and the “ostrich position.”

FRCP 8(d)(2) alternate statements: “A party may set out 2 or more statements of a claim or defense alternatively or hypothetically… If a party makes alternative statements, the pleading is sufficient if any one of them is sufficient.” 8(d)(3) inconsistent statements: A party may state multiple claims or defenses “regardless of consistency”. This is consistent with the claim-charts practice of employing, before a Markman ruling, multiple alternative claim constructions in the same chart, and likewise the practice of asserting literal infringement “or” the DoE, and anticipation “or” obviousness.

FRCP 10(b) requires paragraphs “each limited as far as practicable to a single set of circumstances.” Adoption of this rule by claim-chart drafters would alleviate the inconvenience, delay, and expense associated with the common practice of devoting many pages to a single row in the chart, e.g. claim limitation juxtaposed with 7 pages of source code without a pinpoint citation (Sutton v. Nokia) (which practice has provoked an over-reaction, seeking e.g. “ONLY those lines of source code for each limitation that are necessary to allegedly meet each such limitation”, Vasudevan v. IBM). See discussion at xxx.

FRCP 10(c) permits (though does not require) incorporation by reference: “A statement in a pleading may be adopted by reference elsewhere in the same pleading or in any other pleading or motion.” Adoption of this suggestion by claim-chart drafters would reduce the currently common practice of copy & paste repetition of material from one row to another of the chart, resulting in charts that may exceed a thousand pages. While courts sometimes look to the size of charts to help determine whether they are merely conclusory, even an enormous chart can be merely conclusory, and at least some courts are not fooled by mere bulk, e.g. Connectel v. Cisco: “six hundred footnotes simply refer back to the same handful of string cites” to a single document. Since the backward reference, and incorporation by reference, are not new technologies, why do so many claim charts employ copy & paste? Perhaps a fear of failure of proof, when a necessary element is set forth with a mere “See xxx”. See discussion at xxx.

FRCP 11(a) signing: “Every pleading, written motion, and other paper must be signed by at least one attorney of record…”. FRCP 11(d) “This rule does not apply to disclosures and discovery requests, requests, responses, objections, and motions under Rules 26 through 37” (which are instead covered under FRCP 26(g), see below). If claim charts (especially PICs) are regarded as pleadings, then they are covered under Rule 11; if they are regarded as responses to (implicit) contention interrogatories (see FRCP 33(a)(2) below), then claim charts are covered under Rule 26(g). See 11(b) below on the case-law application of Rule 11 to PICs.

FRCP 11(b) continuing certification: “By presenting to the court a pleading, written motion, or other paper… [including] by later advocating it…” an attorney certifies. To the extent that Rule 11 governs claim charts, especially PICs, it also imposes a continuing duty as to even initial/preliminary charts. See also FRCP 15 and 26(e) below on the duty to supplement.

FRCP 11(b) reasonable inquiry: Under Rule 11, by “presenting to the court a pleading, written motion, or other paper,” an attorney certifies “that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances…”. There is an important overlap between preliminary or initial infringement contentions (PICs) under the LPRs (e.g. NDCAL 3-1) on the one hand, and reasonable pre-filing investigation, as reflected in the PICs, under Rule 11 (“inquiry reasonable under the circumstances”) on the other hand. Often, to satisfy the requirements of LPR 3-1 and/or Rule 11, “reverse engineering or its equivalent are required” (Network Caching v. Novell). See xxx on View Eng’g v. Robotic Systems, Judin v. US, Antonious v. Spalding, Renesas v. Nanya, Vigilos v. Sling Media, Netlist v. Smart Storage, etc.

FRCP 11(b)(1): “not presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation…” This likely has application to certain monstruously large and repetitive (and at the same time, conclusory) PICs that are ground out with copy & paste in some cases.

FRCP 11(b)(3) information & belief: “… the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery…”. Claims charts often recite “information and belief” without thought; see xxx. The Advisory Committee Notes (ACN) to FRCP 11 point out that the “information and belief” allowance “does not relieve litigants from the obligation to conduct an appropriate investigation into the facts that is reasonable under the circumstances; it is not a license to join parties, make claims, or present defenses without any factual basis or justification.” The ACN also points out that, should an information & belief assertion not pan out, the litigant is called upon “not thereafter to advocate such claims or defenses,” but 11(b)(3) does “not require a formal amendment to pleadings for which evidentiary support is not obtained.” See FRCP 26(e)(1) duty of supplementation below.

FRCP 11(b)(4) denials: “… the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a lack of information”. In other words, denials should not derive from “the ostrich position”; the duty of reasonable inquiry under the circumstances holds. See FRCP 8(b)(1)(B) above on admit/deny.

FRCP 11(c) sanctions: The court “may” impose a sanction on the attorney, law firm, or party that violated Rule 11 or is responsible for its violation. Note “may” not “must”, and contrast FRCP 26(g) “must”. FRCP 11(c)(4): “A sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” FRCP 11(c)(2): 21-day safe harbor. See xxx below on the occasional but infrequent application of Rule 11 sanctions to claim charts, e.g. View Eng’g v. Robotic Systems (applied to D counterclaim), but note that the LPRs e.g. 3-1 can often be invoked instead of Rule 11; note Netlist v. Smart Storage (while some courts’ analysis blends LPR 3-1 with Rule 11, court agrees with Shared Memory v. Apple in avoiding such an analysis).

FRCP 12 motions: While claim charts are the target of many motions, including motions to dismiss, to compel, and to exclude (see xxx below), these are not typically made pursuant to Rule 12, but rather pursuant to the LPRs themselves, or the court’s inherent power (see FRCP 16(f) below). See e.g. GN Resound v. Callpod (D’s motion to strike under LPR 3-1 granted; it could also file for failure to state a claim under FRCP 12), Big Baboon v. Dell (CDCAL had no LPRs, but for this case adapt LPRs from NDCAL), Morningware v. Hearthware (motion to strike under 16(f) and 37, construed as motion to strike pursuant to LPR 2.2 and 3.1).

FRCP 15 amended pleadings: “A party may amend its pleading once as a matter of course… In all other cases, a party may amend its pleading only with the opposing party’s written consent or the court’s leave. The court should freely give leave when justice so requires.” In contrast to the liberal FRCP amendment rules, the LPRs have a different emphasis: “good cause” (though also e.g. NDCAL LPRs xxx with free amendment within 1 month after claim construction?). See frequently-quoted Amtel v. Information Storage: “Unlike the liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’ approach to claim construction.” [Note that this treats claim charts as not-pleadings.]

FRCP 16 pretrial conferences: see claim construction “meet and confer” and “Joint Claim Construction Chart” in LPRs, e.g. EDTX 4-5(d), NDCAL 4-1(b), SDCAL 4-2(b).

FRCP 16(f): “On motions or on its own, the court may issue any just orders…”. FRCP 16(f) has been invoked as a recognition of the court’s inherent power to enforce orders and to impose sanctions pertaining to claim charts (see e.g. Anascape v. Microsoft). However, rather than reach down to the court’s inherent power, there is a preference for hearing motions pursuant to more specific rules, including the LPRs.

FRCP 26(a)(1)(A) mandatory disclosures: “Except as exempted … or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties: … (ii) a copy – or a description by category and location – of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment”.

In an earlier version of the rule, “may use to support its claims or defenses” was “relevant to disputed facts alleged with particularity in the pleadings”. While narrowed from “relevant to disputed facts,” the rule was broadened to not include the “alleged with particularity” precondition. Indeed, FRCP 26(a)(1)(E) states, “A party is not excused from making its disclosures because … it challenges the sufficiency of another party’s disclosures…”.

The LPRs have much broader mandatory disclosures (i.e., “without awaiting a discovery request”) than those in FRCP 26(a)(1). These mandatory disclosures include not only the claim charts, but document production in response to the other side’s claim charts. See “Mandatory disclosures accompanying claim charts” in LPRs section above, e.g. NDCAL 3-4 (“the party opposing a claim 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 of any aspects or elements of an Accused Instrumentality”), wherein the point was made that D’s disclosures are only mandatory in response to sufficient infringement charts; see xxx. [But is that true?? Wouldn’t that be an invitation to ancillary disputes, and contradict the spirit of FRCP 26(a)(1)(E), and contradict the removal of the “alleged with particularity” requirement from 26(a)(1)(A)? On the other hand, allowing bare-boned conclusory PICs to force D to open its kimono would violate the spirit of the LPRs. See e.g. Theranos v. Fuisz.]

FRCP 26(a)(2)(B) expert report: “Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report – prepared and signed by the witness – if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain: (i) a complete statement of all opinions the witness will express and the basis and reasons for them; (ii) the data or other information considered by the witness in forming them…” [Check wording against most recent version!]

Often, an expert testifying to infringement, non-infringement, invalidity, or validity, will include a claim chart, or the textual equivalent of a claim chart, in the expert report, as the basis for the expert’s opinion. Though not preferred, the expert may adopt the party’s claim charts. But if adopting the party’s claim charts, the expert should do so explicitly, rather than silently copying and pasting the party’s charts (presence of the same typographical errors in the party’s chart as in the expert’s is a dead give-away, and a ripe subject for deposition questioning).

Conversely, the expert report cannot be used to “back-fill” deficient party claim charts; see xxx below noting many cases in which a portion of an expert report was struck or excluded as outside the scope of the party’s contentions (e.g. Asus v. Round Rock: “P cannot include a placeholder in its contentions that generally asserts indirect infringement, and then later clarify the infringement theory through an expert report”).

FRCP 26(c) protective order: A protective order (PO) may cover, not only documents regarded as confidential, such as source code, but can also cover non-initial claim charts themselves containing excerpts from confidential materials. The claim chart may be “attorney eyes only” (AEO) and maintained at a secure site. In such cases, a redacted claim chart should be produced. See xxx.

FRCP 26(e)(1) duty of supplementation: “A party who has made a disclosure under Rule 26(a) – or who has responded to an interrogatory, request for production, or request for admission – must supplement or correct its disclosure or response: (A) in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing; or (B) as ordered by the court.” FRCP 26(e)(2): “For an expert whose report must be disclosed under Rule 26(a)(2)(B), the party’s duty to supplement extends both to information included in the report and to information given during the expert’s deposition.”

Some LPRs explicitly invoke 26(e)’s application to claim charts, e.g. SDNY LPR 9: “The duty to supplement in Fed. R. Civ. P. 26(e) shall apply to the Infringement Contentions and the Invalidity Contentions required by Local Patent Rules 6 and 7” (see Intellectual Ventures v. JP Morgan Chase).

Other LPRs note the relation between the FRCP duty to supplement and the LPR requirement that amendments obtain leave of court for good cause to amend, e.g. NDCAL LPR 3-6: “The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.” See also Peerless v. Crimon (ND Ill.) on whether LPRs “trump” FRCP with regard to amendment and supplementation (see also ANPATDIG 2.50.150 “Deadlines and permissions of Federal Rules of Procedure generally trump Local Rules”).

FRCP 26(f) discovery conference: Many LPRs explicitly reference the 26(f) discovery conference, e.g. NDCAL 2-1(b) requiring that, in addition to the topics set forth in 26(f), the parties’ 26(f) conference shall also address any proposed modifications to the obligations or deadlines set forth in the LPRs, and issues relating to claim construction, including scope and timing of discovery, format of the Markman hearing, and “How the parties intend to educate the court on the technology at issue.”

FRCP 26(g) discovery signing & sanctions: “… every discovery request, response, or objection must be signed by at least one attorney of record… By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry: (A) with respect to a disclosure, it is complete and correct as of the time it is made; and (B) with respect to a discovery request, response, or objection, it is: … (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.”

26(g) is the discovery equivalent of Rule 11, which applies to “Every … paper” but which has a carve-out in 11(d) for discovery materials. Whereas Rule 11 sanctions are “may” (see FRCP 11(c) above), 26(g) sanctions are “must”; see FRCP 26(g)(3).

To the extent claim charts are viewed as responses to implicit interrogatories, rather than as pleadings, (see FRCP 8 above and FRCP 33 below), FRCP 26(g) applies. While working on claim charts (and especially while mechanically grinding out claim charts), it would pay to heed the ACN for 26(g), which “obliges each attorney to stop and think about the legitimacy of a discovery request, a response thereto, or an objection. The term ‘response’ includes answers to interrogatories …”.

FRCP 30(b)(6) organization’s designated deponent: “… The persons designated must testify about information known or reasonably available to the organization.” A 30(b)(6) witness can be asked at their deposition to do a claims chart or equivalent (e.g., a drawing, labelled with terminology from the claim limitations). While likely drawing the objection “calls for a legal conclusion” (i.e., the deponent has been asked to tie the facts of the organization’s technology to the law of the case, represented by the claim language), this can be a fruitful technique, and the results can be incorporated into claim charts, expert reports, and other materials. See xxx.

FRCP 33(a)(2) contention interrogatories: “An interrogatory is not objectionable merely because it asks for an opinion or contention that relates to fact or the application of law to fact…”. In patent litigation under the LPRs, such contention rogs are largely replaced by claim charts. Indeed, this is a key purpose of claim charts; see e.g. FusionArc v. Solidus (NDCAL): LPR 3-1 provides a “streamlined” mechanism to replace the “series of interrogatories that defendants would likely have propounded in its absence.”

However, the provision of claim charts does not entirely replace contention rogs under FRCP 33; some LPRs contain “Relationship to Federal Rules of Civil Procedure” provisions with carve-outs largely relating to contention rogs. See e.g. NDCAL 2-5, under which “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) … that the discovery request or disclosure requirement is premature in light of, or otherwise conflicts with, these Patent Local 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 Patent Local Rules,” which is followed by a list including information typically found in Infringement Contentions (“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”) and in Invalidity Contentions (“Requests seeking to elicit from an accused infringer a comparison of the asserted claims and the prior art”).

In other words, a party may object to as premature a discovery request for, or decline to provide under 26(a)(1) mandatory disclosures, material which belongs in the claim charts. In addition, FRCP 33(a)(2) gives the court authority to defer an interrogatory answer.

N.D. Ohio LPR 3-10(a) states, “Unless otherwise ordered by the Court, the parties’ contentions and responses shall have the same binding effect on a party as a response to an interrogatory made under Rule 33 of the Federal Rules of Civil Procedure.” Similar language appears in several other LPRs. This raises a general question as to the binding effect or otherwise of claim charts, perhaps by analogy to any binding effect of interrogatory responses under FRCP 33; FRCP 33(c): “Use. An answer to an interrogatory may be used to the extent allowed by the Federal Rules of Evidence.”

According to the ACN for FRCP 33, “The principal question raised with respect to the cases permitting such [contention] interrogatories is whether they reintroduce undesirable aspects of the prior pleading practice, whereby parties were chained to misconceived contentions or theories, and ultimate determination on the merits was frustrated…. But there are few if any instances in the recorded cases demonstrating that such frustration has occurred. The general rule governing the use of answers to interrogatories is that under ordinary circumstances they do not limit proof…. Although in exceptional circumstances reliance on an answer may cause such prejudice that the court will hold the answering party bound to his answer … the interrogating party will ordinarily not be entitled to rely on the unchanging character of the answers he receives and cannot base prejudice on such reliance. The rule does not affect the power of a court to permit withdrawal or amendment of answers to interrogatories. [] The use of answers to interrogatories at trial is made subject to the rules of evidence. The provisions governing use of depositions, to which Rule 33 presently refers, are not entirely apposite to answers to interrogatories, since deposition practice contemplates that all parties will ordinarily participate through cross-examination.” In other words, a rule of Buyer Beware or caveat emptor perhaps applies to claim charts, at least when regarded as responses to implicit contention rogs.

FRCP 34 producing documents, including electronically stored information [ESI]) is likely the source of most non-public evidence used in non-initial claim charts. Of course, such material is not yet available in initial or preliminary contentions (PICs), which are pre-discovery. Of course, post-discovery claim charts could cite to depositions, requested admission, and interrogatory responses, and litigants preparing for depositions or propounding interrogatories could design them to yield material usable in a claim chart, but in practice this tends to not be done. An engineer’s simple deposition reply, “Yes, we do X” is generally viewed as less suitable for a claim chart than, say, 10 pages of source code appearing to indicate the doing of X.

FRCP 37: (a) “Motion for an Order Compelling Disclosure or Discovery”; 37(b): “Failure to Comply with a Court Order” and sanctions; 37(c): “Failure to Disclose, to Supplement an Earlier Response, or to Admit”: One district explicitly makes Rule 37 applicable to LPR failures (D.Utah LPR 1.5: “All disclosures made pursuant to LPR … are subject to the requirements of Rules 11 and 26(g), and the sanctions available under Rule 37 of the Federal Rules of Civil Procedure”). One court has refused to apply 37(a), while holding 37(b) applicable, to an LPR failure (Perfect Surgical v. Olympus, NDCAL), while a court in the same district held any motions filed under LPR 3-1 as subject to Rule 37, including award of attorney fees (Cal. Inst. Of Computer Assisted Surgery v. Med-Surgical Services, NDCAL), and a court in another district construed a motion to strike under 16(f) and 37 as instead a motion to strike under the LPRs, with 16(f) and 37 reserved for “extreme cases” (Morningware v. Hearthware, ND Ill.). See ANPATDIG 2.50.200 (“Rule 37 Sanctions applied to Local Patent Rules”).

FRCP 37(c)(1) includes a built-in sanction: “If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or harmless.” See application to PICs in DSC v. Symantec (CDCAL). FRCP 37(c)(1) is especially applicable to restrict late-disclosed evidence or theories, which are a common problem in claim charts, e.g. DoE and indirect infringement. Also see Teashot v. Green Mountain Coffee (D. Colo.) (case employing FRCP 26(e) and 37(c) where no LPRs; helpful to understand relation between LPR claim charts and FRCP).

FRCP 56 summary judgment (SJ): (a) “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” FRCP 56(c)(1): “Supporting Factual Positions. A party asserting that a fact cannot be or is genuinely disputed must support the assertion by: …” (A) citing materials in the record, or (B) showing that cited materials do not establish the absence or presence of a genuine dispute. FRCP 56(e): “Failing to Properly Support or Address a Fact. If a party fails to properly support an assertion of fact or fails to properly address another party’s assertion of fact as required by Rule 56(c), the court may: (1) give an opportunity to properly support or address the fact; (2) consider the fact undisputed for purposes of the motion; (3) grant summary judgment if the motion and supporting materials – including the facts considered undisputed – show that the movant is entitled to it; or (4) issue any other appropriate order.”

While SJ is not on the pleadings, and while claim charts may be viewed as pleadings, SJ is on the current state of the evidence, and this state of the evidence may best be reflected in claim charts. Claim charts may form the basis for an SJ or partial SJ motion, especially an SJ motion asserting “failure of proof” under Celotex:

Celotex v. Catrett, 477 US 317 (1986) (failure of proof): “The plain language of Rule 56… mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial. In such a situation, there can be ‘no genuine issue as to any material fact,’ since a complete failure of proof concerning an essential element of the nonmoving party’s case necessarily renders all other facts immaterial. The moving party is ‘entitled to a judgment as a matter of law’ because the nonmoving party has failed to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof.”

An “element” is not only an element of a cause of action (such as “at night” or “dwelling house” in common-law burglary), but includes an element or step, i.e. limitation, of a patent claim. Even if a party has devoted a row in a claim row to each semicolon-delimited phrase in the patent claim, it may have entirely missed a limitation (see e.g. sublimitations at xxx), and more important it may have employed merely conclusory statements, including mere mimicking of claim language, such that the party has failed to make a factual assertion about the limitation. Conclusory language is legal not factual, and thus not entitled to be treated as true for purposes of SJ (see xxx). Thus, D in particular can use P’s claim chart to show that P has no evidence as to one or more claim limitations, and thus has a “failure of proof” subject to SJ.

See the results section below, including several cases of SJ or partial SJ on the basis of deficient infringement contentions (Howmedica v. Deuy, In re Papst Licensing, Nomadix v. HP, Icon Outdoors v. Core Resources; see also Nazomi v. Nokia).

FRCP 83(a)(1) local rules: “After giving public notice and an opportunity for comment, a district court, acting by a majority of its district judges, may adopt and amend rules governing its practice. A local rule must be consistent with – but not duplicate – federal statutes and rules adopted under 28 USC 2072 and 2075…”. 28 USC 2072 and 2075 are part of the Rules Enabling Act (REA), which provides authority for the FRCP itself; the Supreme Court’s power to prescribe general rules of procedure “shall not abridge, enlarge or modify any substantive right.”

FRCP 84 forms, including Form 18 for patent infringement: the Supreme Court abrogated the forms effective Dec. 2015, along with this rule that these simple forms “suffice under these rules.” Form 18 asserted a patent number, but did not specify any asserted claim numbers, and it did not name the accused instrumentality, instead generally alleging that the defendant has infringed and is still infringing “by making, selling, and using the electric motors that embody the patented invention”. Without necessarily endorsing the Twombly/Iqbal pleading standard (see FRCP 8 above), the Committee on Rules of Practice and Procedure of the Judicial Conference of the US viewed the forms as “out of date” and noted that “the increased complexity of most modern cases have resulted in a detailed level of pleading that is far beyond that illustrated in the forms.”

Other rules, model orders, & management guides

In addition to the LPRs and FRCP, discussed above, see also:

• Individual court rules, e.g. “Order relating to patent cases before Judge T. John Ward” requiring e.g.:
  • Filing “Note of Compliance with P.R. 3-1 [or 3-3]”, because “certain parties attempted to avoid the rule that Preliminary Contentions are final except as provided in P.R. 3-6 and P.R. 3-7”;
  • “Infringement and Invalidity Contentions for Software”: “The lack of access to source code coupled with an opponent’s right to prepare a defense has led to numerous discovery disputes,” so party need not comply with 3-1 until 30 days after source code produced by opposing party;
  • If claim or limitation is software, party need only identify it as such in 3-1 PIC, but need not identify WHERE met in accused instrumentality; has 30 days after other side produces source code to do so (identify the source code, with specificity); this ONLY re: software claim contentions
• See collection of model orders (ca. 2012) at http://www.practiceprogram.org/Event/FileDownload/28
• “Model Order Focusing Patent Claims and Prior Art to Reduce Costs,” EDTX
• “A Model Order Limiting Excess Patent Claims and Prior Art,” Model Order Committee (Rader, Davis, et al.), http://patentlyo.com/media/docs/2013/07/model-order-excess-claims.pdf (following In re Katz Interactive Call Processing Patent Litigation)
• “An E-Discovery Model Order,” Federal Circuit Advisory Council
• Federal statutes, e.g. 35 USC 285 “objectively baseless” (see fee-shifting below); 28 USC 1927 “multiplies the proceedings … unreasonably and vexatiously”
• Patent Case Management Judicial Guide, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2637605
• Section 337 Patent Investigation Management Guide, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1603330 (ITC importation investigations)

Results of inadequate claim charts

Having covered the rules (primarily LPR and FRCP) governing claim charts, we turn to the results of failing those rules with an inadequate claim chart.

First, what makes a claim chart inadequate? There is a full discussion of common claim-chart problems at xxx, but briefly the problems are these:

• Missing an asserted claim, or missing an unasserted claim depended upon by an asserted claim
• Missing a limitation, e.g. one buried inside a lengthy semicolon-delimited clause containing multiple limitations, or a sublimitation
• Missing a case theory, especially doctrine of equivalents (DoE), obviousness, or indirect infringement
• Missing an accused instrumentality, e.g. when charting only a “representative instrumentality” which is not representative of an uncharted product
• Missing a defendant
• “Missing” above includes merely conclusory treatment, or the use of boilerplate or “placeholders” (such as “plaintiff reserves the right to later assert DoE”)
• Merely mimicking, parroting, or aping the claim language
• Overly relying on “information and belief”
• Overly relying on marketing materials, standards, or third-party materials
• Failing to provide “pinpoint” factual references
• Merely dumping a large volume of facts in juxtaposition to each claim limitation
• Assuming device/method operation from its results, output, or external appearance (“inventor fallacy”)
• Mixing & matching limitations from different/incompatible products/modes (“grab bag” or “Frankencharts”)
• “Laundry list”, “parts list”, or “bag of parts” claim charts, with disconnected parts/elements/steps (which only works for “kit” inventions)
• Overlying relying on mere examples (“For example but not necessarily limited to, see…”; i.e. adopting the language of discovery requests in claim charts)

Note however that a factual error does not make a claim chart inadequate, as charts are not intended as an arena to litigate substantive issues; a claim chart need only be reasonable. On the other hand, employing a clearly erroneous claim construction (which may be implied rather than explicit), e.g. Eon-Net v. Flagstar, or failing to account for the possibility (e.g. via alternate claim constructions) of what is later adopted as the court’s claim construction, can render a claim chart insufficient

Second, since a court is unlikely to find a claim chart insufficient sua sponte, what motions might be directed at allegedly insufficient charts?:

• Motion to compel (e.g. greater specificity)
• Motion to dismiss (e.g. accused products, defenses)
• Motion to enforce court order
• Motion to exclude (e.g. theory, defense, prior-art reference)
• Motion to join (e.g. additional accused infringer)
• Motion to limit (e.g. number of asserted claims)
• Motion to preclude (e.g. expert from testifying to X; other side from supplementing)
• Motion to stay (e.g. pending adequate claim chart)
• Motion to strike (e.g. infringement contentions, portion of expert report, amendments)
• Motion for summary judgment or partial SJ
• Motion for sanctions under FRCP 11
• Motion to supplement (e.g. to add new prior-art references)
• Motion to amend (e.g. PICs or ICs to add new accused product, or theory such as DoE or obviousness)

And third, how do such motions fare in the courts? The results are often less harsh than one might expect, with courts giving litigants second and third chances to get it right. In the following example cases, the court agreed that the claim chart (IC) was deficient in some way, but produced a mild result, with a motion to strike being treated for example as an order to amend within x days:

• Deny D motion to strike P’s ICs, but grant motion to compel P to supplement ICs, where P’s 3 “representative” charts (for over 100 accused products) did not comply with LPRs, P having failed to show that the accused products shared the same or substantially the same infringing circuitry (Bender v. AMD, NDCAL; see also Bender v. Infineon, Bender v. Maxim, Bender v. Freescale)
• Finding P’s 2^nd amended IC still failed to satisfy the court’s order, but refusing to sanction P by dismissing the suit and instead giving P one more chance to supplement its ICs (Bender v. Maxim, NDCAL)
• Holding D’s non-infringement SJ motion in abeyance, and ordering P to amend its claim chart, since P’s original claim chart did not show a plausible theory of infringement (BreathableBaby v. Crown Crafts, D. Minn.) [note “plausible”; Iqbal?]
• Grant P leave to amend ICs to correct deficiencies, rather than strike ICs, as striking the ICs would be a “death knell” sanction (Davis-Lynch v. Weatherford, EDTX)
• Deny D motion to strike ICs that allegedly add new theory of infringement, instead ordering P to serve more detailed ICs, finding that P had already disclosed the theory albeit with insufficient specificity (Eagle Harbor v. Ford Motor, WD Wash.)
• While grant D motion to strike P’s insufficient ICs (with conclusory allegations which fail to explain the basis for P’s belief that each limitation is met), also grant P leave to amend, rather than strike the ICs with prejudice and thus effectively end the lawsuit (Yama Capital v. Canon, SDNY)

Yet, there is the occasional very harsh result, including summary judgment or partial SJ stemming from inadequate claim charts:

• Grant D’s motion to strike portions of P’s expert opinions on DoE and indirect infringement, because P had not adequately included these theories in its ICs: “P cannot include a placeholder in its contentions that generally asserts indirect infringement, and then later clarify the infringement theory through an expert report” (ASUS v. Round Rock, NDCAL; see also Apple v. Samsung, ePlus v. Lawson, Fleming v. Escort, ContentGuard v. Amazon/Google, etc.; there are many instances of striking a portion of the expert report outside the scope of the party’s claim chart; but see e.g. Depomed v. Activis, with court appearing to encourage use of DoE placeholder)
• Grant P’s motion to strike portion of, and deny D’s motion to amend, D’s invalidity contentions that merely reference a prior-art item without specifically mapping aspects of the prior-art reference to elements of the claim (Anascape v. Microsoft, EDTX)
• Denying P leave to amend ICs after deadline, and dismissing infringing claims as to the products at issue, where P was not diligent in seeking amendment, and where P had failed to provide sufficient claim charts as to 8 of 10 accused products; P’s proposed claim charts were too conclusory to be a proper claim chart (Canvs v. US, Fed. Cl.)
• Grant SJ of non-infringement under DoE, as P’s general reservation of a right to assert DoE, made in its ICs, was insufficient to comply with LPRs requiring specific DoE contentions, and therefore P had waived assertion of DoE (Howmedica v. Deuy, DNJ; see also Icon Outdoors v. Core Resources; Nazomi v. Nokia; there are many instances where party waived DoE by trying to have placeholder, boilerplate, and/or “reserve right” in its ICs)
• Grant SJ of non-infringement against 47 accused products, as P’s ICs were insufficiently detailed as required by court’s prior orders in this case (In re Papst Licensing, DDC)
• Grant SJ of non-infringement, as P’s conclusory ICs failed to raise a genuine issue of material fact as to how accused source code met the claim limitations; also, evidence P offered to support its infringement theory had to be excluded as it was never produced to D during fact discovery (Nomadix v. HP, CDCAL) [note “how”?]
• Affirm district court’s award of Rule 11 sanctions (attorney fees) against law firm responsible for defective infringement contentions in D counterclaim; claim charts contained 120 claims from 8 patents, with infringement asserted based on little more than D’s VP belief that infringement was likely; unreasonable pre-filing investigaton (View Engineering v. Robotic, 208 F.3d 981, CAFC, 2000)

Of course, there is also a large middle area, with deficient claim charts leading to an order to compel:

• Grant P motion to compel D to serve more detailed preliminary non-infringement contentions; D had merely parroted claim language in saying that claim limitation was not met (Agri-Labs v. TapLogic, ND Ind.; DJ counterclaim)
• Grant D motion to compel P to serve amended PICs to address two missing claim limitations (Alberta Telecom v. Rambus, NDCAL)
• Grant D motion to compel P to provide detailed supplemental claim charts with pinpoint citations to D’s source code, and giving P a full 60 days to respond rather than mere 15 days  requested by D (Big Baboon v. Dell, CDCAL)
• Grant D motion to compel P to provide more definite ICs (or to supplement a interrogatory answer) to show specifically P’s theory of how D’s software infringed the claims; since D had produced its source code almost one year earlier, P had more than sufficient time to articulate sufficiently specific infringement theories (DSC v. Symantec)
• Grant P motion to compel D to provide a more definite and complete statement in its non-infringement contentions, the chart currently making blanket statements which do not meet the spirit of the LPRs; order D to file amended chart (responsive to P’s chart), with specific reasons and relevant distinctions why each element is not present literally or under DoE (Emcore v. Optium, WD PA)
• Grant D motion to compel P to provide supplemental ICs, where e.g. P failed to address claim limitations recited in wherein clauses (Shared Memory v. Apple, NDCAL) [see xxx on sub-limitations; see also Shared Memory v. Apple, striking without leave to amend P’s amended PICs]

Finally, it is important to remember that the court may disagree that the chart is deficient in the first place (in all the above cases, the claim charts were found deficient, yet with differing resuls):

• Deny P motion to compel D to supplement final invalidity contentions, because D’s chart showing a limitation with a “See e.g.” signal was sufficiently specific (Avago v. Elan Micro, NDCAL) [xxx on the “See e.g.” problem]
• Deny D SJ motion of non-infringement, where D asserted P’s ICs were deficient, because P’s ICs identified 300 lines of source code out of 20 million lines (Sun Micro v. Network Appliance) [does extracting 300 lines of code out of 20 million create sufficient focus?]

What are the factors courts consider in choosing between mild and harsh results for deficient claim charts? Apart from such considerations as proportionality between the degree of deficiency on the one hand, and severity of the requested court action on the other, factors include:

• Early or late stage in the litigation
• Whether discovery is still open or closed
• Amount of prejudice to the other party, and that other party’s reasonable reliance on the charts as they stand
• Whether the offending party is a solo inventor and/or a pro se litigant, with some excuse for inadequate claim charts
• Whether the offending party is one whose entire business is litigation (i.e., a non-practicing entity [NPE] or “troll”), who thereby has less excuse for inadequate claim charts
• Has the offending party brought problems on itself by choosing a large unwieldy case (“master of its case”)
• Would granting the motion effectively be a “death penalty” for the case
• Court’s belief that the offending party engaged in gamesmanship, vs. made an innocent mistake
• Willfulness, recklessness, frivolousness, harassment, other improper purpose
• Has the offending party already been issued a court order that it has disobeyed
• See FRCP 11 ACN factors:
  • Whether the improper conduct was willful, or negligent;
  • Whether it was part of a pattern of activity, or an isolated event;
  • Whether it infected the entire pleading, or only one particular count or defense;
  • Whether the person has engaged in similar conduct in other litigation;
  • Whether it was intended to injure;
  • What effect it had on the litigation process in time or expense;
  • Whether the responsible person is trained in the law;
  • What amount, given the financial resources of the responsible person, is needed to deter that person from repetition in the same case;
  • What amount is needed to deter similar activity by other litigants
• See factors used in determining if a party has “good cause” to amend under LPRs and/or FRCP 15:
  • The explanation for the failure to meet the deadline;
  • The importance of the thing that would be excluded (i.e. impact on party that wants to amend, if it can’t);
  • Potential prejudice in allowing the thing that would be excluded (i.e. impact on opposing party, if party allowed to amend)
  • Availability of a continuance to cure such prejudice
  • Is the party motivated by gamesmanship
  • What was the ease or difficulty of finding the new information or arriving at the new theory (i.e., the offending party’s diligence)
• See factors used in determining Rule 37 sanctions:
  • The prejudice or surprise to a party against whom the evidence is offered;
  • The ability of the injured party to cure the prejudice;
  • The likelihood of disruption to the trial schedule;
  • Bad faith or willfulness involved in not complying with the disclosure rules;
  • The importance of the evidence to the party offering it.
• See e.g. Grimm et al., Discovery Problems and their Solutions; Joseph, Sanctions: The Federal Law of Litigation Abuse; Vairo et al., Rule 11 Sanctions

An exhortation for better claim charts

It is important to emphasize that hasty, conclusory, boilerplate, or otherwise deficient claim charts can produce, not merely court-ordered results, but also self-imposed results. Producing a sufficient claim chart can force a party to come to grips with 2-3 thorny issues in its case. Evading these thorny issues by producing a deficient chart therefore can confuse the party as to the real strengths and weaknesses of the case, and the opponent’s case. Discovery becomes less focused: not only discovery requests, but also what “the team” spends its time on in document examination, source-code review, etc., as the deficient claim chart has helped hide the thorny issues for which discovery may be needed. The experts similarly end up avoiding the difficult issues, and when late in the game these finally emerge, the expert may be precluded from testifying to them. On the other hand, it must be admitted that the 2-3 issues that look difficult when drafting a PIC might turn out not to be the same 2-3 areas that the other side focuses on, and it is possible to prematurely focus on one set of issues, when the case will eventually turn on a different set of 2-3 issues. See xxx below on analyzing one’s own claim charts.

The possibly serious results of deficient claim charts may particularly affect experts. In many cases, as noted above, an expert was precluded from testifying to a topic, adequately disclosed in the expert report, but nonetheless was outside the scope of the party’s adequately-disclosed claim chart. Parties are not allowed to use expert reports to try to “back-fill” omissions in their claim charts, and such omissions include topics treated in a conclusory or boilerplate manner. Boilerplate in the claim chart cannot be used as a “placeholder” to be filled in later by the expert report — or, at least, it shouldn’t be, according to many cases. Conversely, deficiencies in an expert’s claim charts, as incorporated in the expert report, can of course also affect the party.

The set of case squibs shown above, about equally divided between mild, harsh, and medium results, may have given the impression that this equal division reflects the fate of deficient claim charts overall. It probably does not. For better or worse, the mild results appear to be predominant, with a party often given an extra 30 days to fix its claim chart, and “death penalty” or Rule 11 sanctions rare. One has to ask, what was the benefit to the opposing party in bringing a motion to strike or exclude, when the court ended up turning this into a motion to compel amendment; see xxx on pros and cons of different responses to the other side’s deficient charts.

While Rule 11 sanctions are rarely the result of deficient claim charts (in keeping with the rareness of Rule 11 sanctions generally), many courts nonetheless do use Rule 11 (albeit sanctionless) as the standard by which PICs are tested. Other courts try to avoid Rule 11 as much as possible. See Shared Memory v. Apple; Netlist v. Smart Storage; Theranos v. Fuisz. One of the rare cases with Rule 11 sanctions for a deficient claim chart is View Engineering v. Robotic, from 2000.

Even if litigants tend to “get away with” deficient claim charts, there are enough cases with bite that, to avoid becoming one of these exceptional cases, it is best to spend sufficient time on claim charts. And, to the extent there are harsh results, these can be against D as well as against P (View Eng’g v. Robotic involved D’s counterclaim).

It is precisely the “exceptional” case which can result in fee-shifting under 35 USC 285, and attorney’s fees have been awarded based on deficient claim charts. See e.g. Lumen View v. FindTheBest.com (CAFC declines to find abuse of discretion in district court finding exceptional case and awarding fees, based on ill-supported infringement contentions). Even with the Supreme Court’s rulings in Octane Fitness v. ICON and Highmark v. Allcare, the definition of an “exceptional” case remains unclear, and subject to court discretion. Note that fee-shifting is one of the features of Rep. Goodlatte’s Innovation Act, noted above. [TODO: Goodlatte revises 285 wording; note “objectively baseless” standard.]

Sanctions are a matter of court discretion, with appealed sanctions tested for abuse of discretion (see e.g. Lumen View above, and Yufa v. TSI, CAFC upholds SJ of non-infringement, based on defective infringement contentions). As a results, courts have wide latitude in how to respond to deficient claim charts. While there may be some predictability across federal districts (e.g. 285 fee-shifting likely denied in D.Del. but more likely awarded in SDNY), leading even to forum shopping, the overall unpredictability of the court’s response to a conclusory claim chart should be more of an incentive to take claim charts seriously.

[TODO: conclusion to Part I of book]

Part II