Number range CHAPTER**FORM 4. RULE 26(f) REPORT (PATENT CASES)**

**UNITED STATES DISTRICT COURT**

**DISTRICT OF MINNESOTA**

Name of Plaintiff

CIVIL FILE NO. \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Plaintiff,

v\. RULE 26(f) REPORT

(PATENT CASES)

Name of Defendant

Defendant.

The parties/counsel identified below participated in the meeting
required by Fed. R. Civ. P. 26(f) and the Local Rules, on
\_\_\_\_\_\_\_\_\_\_\_\_, and prepared the following recommended
pretrial scheduling order.

The pretrial conference in this matter is scheduled for
\_\_\_\_\_\_\_\_\_\_\_\_, before the United States Magistrate Judge
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ in Room \_\_\_\_\_\_, Federal Courts
Building, \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_, Minnesota. The parties
\[request/do not request\] that the pretrial be held by telephone.

\(a\) Description of Case

> \(1\) Concise factual summary of Plaintiff\'s claims, including the
> patent number(s), date(s) of patent(s), and patentee(s);

\(2\) Concise factual summary of Defendant\'s claims/defenses;

\(3\) Statement of jurisdiction (including statutory citations);

\(4\) Summary of factual stipulations or agreements;

\(5\) Statement of whether jury trial has been timely demanded by any
party.

\(b\) Pleadings

> \(1\) Statement of whether all process has been served, all pleadings
> filed and any plan for any party to amend pleadings or add additional
> parties to the action;
>
> \(2\) Proposed date by which all hearings on motions to amend and/or
> add parties to the action shall be heard;

Date: \_\_\_\_\_\_\_\_\_\_\_\_

\(c\) Discovery and Pleading of Additional Claims and Defenses

> \(1\) Discovery is permitted with respect to claims of willful
> infringement and defenses of patent invalidity or unenforceability not
> pleaded by a party, where the evidence needed to support these claims
> or defenses is in whole or in part in the hands of another party.
>
> \(2\) Once a party has given the necessary discovery, the opposing
> party may seek leave of Court to add claims or defenses for which it
> alleges, consistent with Fed. R. Civ. P. 11, that it has support, and
> such support shall be explained in the motion seeking leave. Leave
> shall be liberally given where prima facie support is present,
> provided that the party seeks leave as soon as reasonably possible
> following the opposing party providing the necessary discovery.

\(d\) Fact Discovery

> The parties recommend that the Court establish the following fact
> discovery deadlines and limitations:
>
> \(1\) All pre-discovery disclosures required by Fed. R. Civ. P.
> 26(a)(1) shall be completed on or before \_\_\_\_\_\_\_\_\_\_\_\_.

\(2\) Fact discovery shall be commenced in time to be completed by
\_\_\_\_\_\_\_\_\_\_\_\_.

> \(3\) The parties agree and recommend that the Court limit the use and
> numbers of discovery procedures as follows:

\(A\) \_\_\_\_\_\_\_\_\_\_\_\_ interrogatories;

\(B\) \_\_\_\_\_\_\_\_\_\_\_\_ document requests;

\(C\) \_\_\_\_\_\_\_\_\_\_\_\_ factual depositions;

\(D\) \_\_\_\_\_\_\_\_\_\_\_\_ requests for admissions;

\(E\) \_\_\_\_\_\_\_\_\_\_\_\_ other.

\(e\) Expert Discovery

The parties anticipate that they will/will not require expert witnesses
at time of trial.

\(1\) The plaintiff anticipates calling \_\_\_\_\_\_\_\_\_\_\_\_ experts
in the fields of:

\(2\) The defendant anticipates calling \_\_\_\_\_\_\_\_\_\_\_\_ experts
in the fields of:

> \(3\) By the close of fact discovery, the parties shall identify to
> the opposing party the experts who will provide a report that deals
> with the issues on which that party has the burden of persuasion.

Alternate recommended date: \_\_\_\_\_\_\_\_\_\_\_\_

> \(4\) Within 30 days after the close of fact discovery the parties
> shall exchange initial expert reports, which reports shall be in
> accordance with Fed. R. Civ. P. 26(a)(2)(B) (\"Initial Expert
> Reports\"). The Initial Expert Reports from each party shall deal with
> the issues on which that party has the burden of persuasion.

Alternate recommended date: \_\_\_\_\_\_\_\_\_\_\_\_

> \(5\) Within 30 days after the Initial Expert Reports are exchanged
> Rebuttal Expert Reports shall be exchanged. Rebuttal Expert Reports
> shall also be in accordance with Fed. R. Civ. P. 26(a)(2)(B).

Alternate recommended date: \_\_\_\_\_\_\_\_\_\_\_\_

> \(6\) Anything shown or told to a testifying expert relating to the
> issues on which he/she opines, or to the basis or grounds in support
> of or countering the opinion, is subject to discovery by the opposing
> party.
>
> \(7\) The parties shall agree that: (A) drafts of expert reports
> \[will/will not\] be retained and produced; and (B) inquiry \[is/is
> not\] permitted into whom, if anyone, other than the expert
> participated in the drafting of his/her report. The Court will not
> entertain motions on these two issues. In the absence of such an
> agreement, drafts of expert reports need not be produced, but inquiry
> into who participated in the drafting and what their respective
> contributions were is permitted.

\(8\) All expert discovery shall be completed by
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_.

\(f\) Discovery Relating to Claim Construction Hearing

\(1\) Deadline For Plaintiff\'s Claim Chart: \_\_\_\_\_\_\_\_\_\_\_\_.

> Plaintiff\'s Claim Chart shall identify: (1) which claim(s) of its
> patent(s) it alleges are being infringed; (2) which specific products
> or methods of defendant\'s it alleges literally infringe each claim;
> and (3) where each element of each claim listed in (1) is found in
> each product or method listed in (2), including the basis for each
> contention that the element is present. If there is a contention by
> Plaintiff that there is infringement of any claims under the doctrine
> of equivalents, Plaintiff shall separately indicate this on its Claim
> Chart and, in addition to the information required for literal
> infringement, Plaintiff shall also explain each function, way, and
> result that it contends are equivalent, and why it contends that any
> differences are not substantial.

\(2\) Deadline For Defendant\'s Claim Chart: \_\_\_\_\_\_\_\_\_\_\_\_.

> Defendant\'s Claim Chart shall indicate with specificity which
> elements on Plaintiff\'s Claim Chart it admits are present in its
> accused device or process, and which it contends are absent. In the
> latter regard, Defendant will set forth in detail the basis for its
> contention that the element is absent. As to the doctrine of
> equivalents, Defendant shall indicate on its chart its contentions
> concerning any differences in function, way, and result, and why any
> differences are substantial.
>
> \(3\) On or before \_\_\_\_\_\_\_\_\_\_\_\_, the parties shall
> simultaneously exchange a list of claim terms, phrases, or clause that
> each party contends should be construed by the Court. On or before
> \_\_\_\_\_\_\_\_\_\_, the parties shall meet and confer for the
> purpose of finalizing a list, narrowing or resolving differences, and
> facilitating the ultimate preparation of a joint claim construction
> statement. During the meet and confer process, the parties shall
> exchange their preliminary proposed construction of each claim term,
> phrase or clause which the parties collectively have identified for
> claim construction purposes.
>
> At the same time the parties exchange their respective \"preliminary
> claim construction\" they shall also provide a preliminary
> identification of extrinsic evidence, including without limitation,
> dictionary definitions, citations to learned treatises and prior art,
> and testimony of percipient and expert witnesses that they contend
> support their respective claim constructions. The parties shall
> identify each such items of extrinsic evidence by production number or
> produce a copy of any such item not previously produced. With respect
> to any such witness, percipient or expert, the parties shall also
> provide a brief description of the substance of that witness\'
> proposed testimony.
>
> \(4\) Following the parties\' meet and confer described above, and no
> later than \_\_\_\_\_\_\_\_\_\_\_\_, the parties shall notify the
> Court as to whether they request that the Court schedule a Claim
> Construction hearing to determine claim interpretation. If any party
> believes there is no reason for a Claim Construction hearing, the
> party shall provide the reason to the Court.
>
> At the same time, the parties shall also complete and file with the
> Court a joint claim construction statement that shall contain the
> following information:
>
> \(A\) The construction of those claim terms, phrases, or clauses on
> which the parties agree;
>
> \(B\) Each party\'s proposed construction of each disputed claim term,
> phrase, or clause together with an identification of all references
> from the specification of prosecution history that support that
> construction, and an identification of any extrinsic evidence known to
> the party on which it intends to rely either in support of its
> proposed construction of the claim or to oppose any other party\'s
> proposed construction of the claim, including, but not limited, as
> permitted by law, dictionary definitions, citation to learned
> treatises and prior art, and testimony of percipient and expert
> witnesses;
>
> \(C\) 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.
>
> \(5\) If the Court schedules a Claim Construction hearing, prior to
> the date of the Claim Construction hearing, the Court shall issue an
> Order discussing:
>
> \(A\) Whether it will receive extrinsic evidence, and if so, the
> particular evidence it will receive;
>
> \(B\) Whether the extrinsic evidence in the form of testimony shall be
> the affidavits already filed, or in the form of live testimony from
> the affiants; and

\(C\) A briefing schedule.

\(g\) Discovery Relating to Validity/Prior Art

> \(1\) Within \_\_\_\_\_\_\_\_\_\_\_\_ days of its receipt of
> Plaintiff\'s Claim Chart pursuant to Discovery Plan paragraph (1)
> Defendant shall serve on Plaintiff a list of all of the prior art on
> which it relies, and a complete and detailed explanation of what it
> alleges the prior art shows and how that prior art invalidates the
> claim(s) asserted by Plaintiff (\"Defendant\'s Prior Art Statement\").
>
> \(2\) Within \_\_\_\_\_\_\_\_\_\_\_\_ days of its receipt of
> Defendant\'s Prior Art Statement Plaintiff shall serve on Defendant
> \"Plaintiff\'s Prior Art Statement\", in which it will state in detail
> its position on what the prior art relied upon by Defendant shows, if
> its interpretation differs from Defendant\'s, and its position on why
> the prior art does not invalidate the asserted patent claims.
>
> \(3\) Plaintiff\'s and Defendant\'s \"Prior Art Statements\" can be,
> but need not be, in the form of expert reports.

\(4\) Defendant can add prior art to its original Statement only by
leave of the Court.

\(h\) Other Discovery Issues

> \(1\) Defendant may postpone the waiver of any applicable
> attorney-client privilege on topics relevant to claims of willful
> infringement, if any, until \_\_\_\_\_\_\_\_\_\_\_\_, provided that
> all relevant privileged documents are produced no later than
> \_\_\_\_\_\_\_\_\_\_\_\_. All additional discovery regarding the
> waiver will take place after \_\_\_\_\_\_\_\_\_\_\_\_ and shall be
> completed by \_\_\_\_\_\_\_\_\_\_\_\_.
>
> \(2\) The parties have met and discussed whether any discovery should
> be conducted in phases to reduce expenses or make discovery more
> effective and present the following joint or individual proposals:
>
> \(3\) The parties have discussed the entry of a Protective Order. If
> either party believes a Protective Order is necessary, the parties
> shall jointly submit with this report a proposed Protective Order. The
> parties are encouraged, though not required, to use Form 5 as a
> template for the proposed Protective Order. If the parties disagree as
> to any terms to be included in the Protective Order, they shall
> present with this report any issues of disagreement, including but not
> limited to any issues relating to persons who are entitled to have
> access to documents subject to protective treatment. The Court shall
> endeavor to resolve any issues relating to the Protective Order in
> connection with the pretrial conference.

\(i\) Discovery Definitions

> In responding to discovery requests, each party shall construe broadly
> terms of art used in the patent field (e.g., \"prior art\", \"best
> mode\", \"on sale\"), and read them as requesting discovery relating
> to the issue as opposed to a particular definition of the term used.
> Compliance with this provision is not satisfied by the respondent
> including a specific definition of the term of art in its response,
> and limiting its response to that definition.

\(j\) Motion Schedule

> \(1\) The parties recommend that all non-dispositive motions be filed
> and served on or before the following dates:
>
> \(A\) All motions that seek to amend the pleadings or add parties must
> be served by \_\_\_\_\_\_\_\_\_\_\_\_.
>
> \(B\) All other non-dispositive motions and supporting documents,
> including those which relate to discovery, shall be served and filed
> by the discovery deadline date \_\_\_\_\_\_\_\_\_\_\_\_.
>
> \(C\) All non-dispositive motions shall be scheduled, filed and served
> in compliance with the Local Rules.
>
> \(2\) The parties recommend that all dispositive motions be filed and
> served so they can be heard by the following dates:
>
> \(A\) All dispositive motions shall be served and filed by the parties
> by \_\_\_\_\_\_\_\_\_\_\_\_.
>
> \(B\) All dispositive motions shall be scheduled, filed and served in
> compliance with the Local Rules.

\(k\) Trial-Ready Date

> \(1\) The parties agree that the case will be ready for trial on or
> after \_\_\_\_\_\_\_\_\_\_\_\_.

\(2\) A final pretrial conference should be held on or before
\_\_\_\_\_\_\_\_\_\_\_\_.

\(l\) Settlement

> \(1\) The parties will discuss settlement before
> \_\_\_\_\_\_\_\_\_\_\_\_, the date of the initial pretrial conference,
> by Plaintiff making a written demand for settlement and each Defendant
> making a written response/offer to Plaintiff\'s demand.
>
> \(2\) The parties believe that a settlement conference is appropriate
> and should be scheduled by the Court before \_\_\_\_\_\_\_\_\_\_\_\_.
>
> \(3\) The parties have discussed whether alternative dispute
> resolution will be helpful to the resolution of this case and
> recommend the following to the Court:

\(m\) Trial by Magistrate Judge

> The parties have/have not agreed to consent to jurisdiction by the
> Magistrate Judge pursuant to Title 28, United States Code, Section
> 636(c). (If the parties agree, the consent should be filed with the
> Fed. R. Civ. P. 26(f) Report.)

\(n\) Tutorial Describing the Technology and Matters in Issue

> If the parties believe that a tutorial for the Court would be helpful
> for the Court, the parties shall simultaneously submit a letter to the
> Court, asking whether the Court wishes to schedule a tutorial and
> proposing the timing and format of the tutorial.

\(o\) Patent Procedure Tutorial

> The parties \[agree/do not agree\] the video \"An Introduction to the
> Patent System\", distributed by the Federal Judicial Center, should be
> shown to the jurors in connection with its preliminary jury
> instructions.

DATE: \_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

> Plaintiff\'s Counsel
>
> License \#
>
> Address
>
> Phone \#
>
> Email

DATE: \_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

> Defendant\'s Counsel
>
> License \#
>
> Address
>
> Phone \#
>
> Email