PATENT RULES

APPENDIX J

RULES OF THE UNITED STATES

COURT OF FEDERAL CLAIMS 

As amended through July 31, 2023
i

APPENDIX J

PATENT RULES OF THE UNITED STATES COURT

OF FEDERAL CLAIMS

TABLE OF CONTENTS

TITLE I. SCOPE OF RULES..................................................................................................... 183

Rule 1. Scope of Rules............................................................................................................. 183

TITLE II. PRELIMINARY PROCEEDINGS ............................................................................. 183

Rule 2. Early Meeting of Counsel............................................................................................ 183

Rule 3. Joint Preliminary Status Report................................................................................... 183

TITLE III. PATENT DISCLOSURES.......................................................................................... 183

Rule 4. Preliminary Disclosure of Infringement Contentions.................................................. 183

Rule 5. Document Production Accompanying Preliminary Disclosure................................... 183

Rule 6. Preliminary Disclosure of Invalidity Contentions....................................................... 184

Rule 7. Document Production Accompanying Preliminary Disclosure of 

Invalidity Contentions ................................................................................................. 184

Rule 8. Response to Preliminary Disclosure of Invalidity Contentions................................... 184

TITLE IV. CLAIM CONSTRUCTION ........................................................................................ 184

Rule 9. List of Proposed Claim Terms for Construction.......................................................... 184

Rule 10. Exchange of Proposed Claim Terms for Construction................................................ 185

Rule 11. Joint Claim Construction Chart ................................................................................... 185

Rule 12. Joint Claim Construction Appendix and Prehearing Statement .................................. 185

Rule 13. Completion of Claim Construction Discover.............................................................. 185

Rule 14. Claim Construction Status Conference........................................................................ 185

Rule 15. Claim Construction Briefs........................................................................................... 185

TITLE V. SETTLEMENT ........................................................................................................... 185

Rule 16. Mandatory Settlement Discussions.............................................................................. 185

Rule 17. Joint Statement of Compliance With Mandatory Settlement Discussions.................. 186

TITLE VI. OTHER........................................................................................................................ 186

Rule 18. Stay of Proceedings..................................................................................................... 186

Rule 19. Confidentiality............................................................................................................. 186

Rule 20. Good Faith Participation.............................................................................................. 186

Rule 21. Certification of Disclosures......................................................................................... 186

Rule 22. Admissibility of Disclosures ....................................................................................... 186

Rule 23. Supplementation Requirements................................................................................... 186

Rule 24. Amendments................................................................................................................ 186
183 

APPENDIX J 

PATENT RULES OF THE UNITED STATES

COURT OF FEDERAL CLAIMS

TITLE I. S C O P E O F R U L E S 

Rule 1. Scope of Rules

(a) In General. These rules, cited as PRCFC,

supplement the Rules of the United States

Court of Federal Claims for civil actions

instituted in the United States Court of

Federal Claims under 28 U.S.C. § 1498(a)

respecting patent claims.

(b) Modification. The court may modify the

requirements or deadlines set forth in these

rules based on:

(1) the complexity of the case; or

(2) for good cause shown.

TITLE II. PRELIMINARY PROCEEDINGS

Rule 2. Early Meeting of Counsel

When the parties confer pursuant to RCFC 

Appendix A, ¶ 3, in addition to the matters

required to be addressed under that paragraph, the 

parties also should discuss the following topics 

for inclusion in the Joint Preliminary Status 

Report filed pursuant to RCFC Appendix A, ¶ 4: 

(a) proposed modification of the obligations or

deadlines set forth in these rules to ensure that 

they are suitable for the circumstances of the

case;

(b) the scope and timing of any claim

construction discovery;

(c) the format of the claim construction hearing;

(d) how the parties intend to educate the court on

the technology at issue;

(e) whether each patent at issue has been, or is

likely to be, subject to re-examination

proceedings; and

(f) whether other litigation or inter partes

proceedings are ongoing or anticipated and

whether any parties will seek a stay,

consolidation, coordination, or transfer.

Rule 3. Joint Preliminary Status Report

For purposes of these rules, the Joint Preliminary 

Status Report required pursuant to RCFC 

Appendix A, ¶ 4, must be filed within 49 days

after the filing of the answer or within 98 days 

after the filing of the answer in the event the 

United States has filed a motion pursuant to 

RCFC 14 to notify interested parties and the court 

has granted the motion. 

TITLE III. PATENT DISCLOSURES

Rule 4. Preliminary Disclosure of 

Infringement Contentions

Within 56 days after the filing of the answer, the 

plaintiff must serve on the defendant and any 

defendant-intervenors a Preliminary Disclosure 

of Infringement Contentions that includes the 

following information: 

(a) the claim in each product, process, or method

of each patent at issue that is allegedly

infringed by each opposing party;

(b) for each asserted claim, each product,

process, or method that allegedly infringes

the identified claim. This identification must

include the name and model number, if

known, of the accused product, process, or

method;

(c) a chart identifying where each element of

each asserted claim is found within each

accused product, process, or method,

including the name and model number, if

known;

(d) whether each element of each identified

claim is alleged to be literally present or

present under the doctrine of equivalents in

the accused product, process, or method; and

(e) for each patent that claims priority to an

earlier application, the priority date to which

each asserted claim allegedly is entitled and

whether the patentee is relying on the filing

date or an earlier conception date as the

priority date.

Rule 5. Document Production Accompanying

Preliminary Disclosure

Together with the Preliminary Disclosure of 

Infringement Contentions, the plaintiff must 

produce to each opposing party or make available 

for inspection and copying:

(a) all documents that evidence any disclosure,

sale, transfer, or offer to disclose, sell, or

Appendix J
184 

transfer the claimed invention prior to the 

date of application for each patent at issue; 

(b) all documents that evidence the conception

and first reduction to practice of each claimed

invention that was created on or before the

date of application for each patent at issue or

the priority date identified in PRCFC 4(e);

(c) the file history with the United States Patent

and Trademark Office for each patent at

issue; and

(d) all documents that evidence ownership of the

patent rights by the plaintiff.

Nothing in this disclosure may be considered an 

admission as to prior art or evidence of prior art 

pursuant to 35 U.S.C. §§ 102, 103. 

Rule 6. Preliminary Disclosure of Invalidity 

Contentions

Within 56 days after the filing of the Preliminary

Disclosure of Infringement Contentions, or as 

otherwise ordered by the court, the defendant and 

any defendant-intervenors must serve on all 

parties a Preliminary Disclosure of Invalidity 

Contentions containing the following 

information:

(a) the identity of each item or combination of

items of prior art that allegedly anticipates

each asserted claim or renders that claim

obvious;

(1) each prior art reference must be

identified by number, country of origin,

and date of issue;

(2) each prior art publication must be

identified by title, date of publication,

and, where feasible, author and

publisher;

(3) prior art that evidences public use or sale

must also specify the item publicly used

or offered for sale, the date the use or

offer took place, and the identity of the

persons or entities that made the use or

sale, or offer, and/or received an offer;

and

(4) the prior art reference must include a

description of where, in each alleged

item of prior art, each element of each

asserted claim is found;

(b) an explanation of how each item of prior art,

or combination thereof, anticipates each

asserted claim and/or renders it obvious; and

(c) the identity and explanation of any other

basis for invalidity, or unenforceability of

any of the asserted claims.

Rule 7. Document Production Accompanying 

Preliminary Disclosure of Invalidity 

Contentions

Together with the Preliminary Disclosure of 

Invalidity Contentions, the defendant and any 

defendant-intervenors must produce to each 

opposing party, or make available for inspection 

or copying: 

(a) documents that evidence the operation of any

aspects or elements of the accused product,

process, or method identified by the plaintiff

as allegedly infringing; and

(b) a copy of any additional items of prior art

identified that do not appear in the file history

of each patent at issue.

Rule 8. Response to Preliminary Disclosure 

of Invalidity Contentions 

Within 28 days after the filing of the Preliminary 

Disclosure of Invalidity Contentions, the plaintiff 

may file and serve on the defendant and any 

defendant-intervenors a response. Thereafter, 

unless the defendant and any defendantintervenors request otherwise, the court promptly 

will proceed to adjudicate invalidity contentions 

before claim construction.

TITLE IV. CLAIM CONSTRUCTION

Rule 9. List of Proposed Claim Terms for 

Construction

(a) In General. Within 42 days after the filing of

any response to the Preliminary Disclosure of

Invalidity Contentions, each party must serve

on all other parties a List of Claim Terms for

Construction by the court and identify any

claim terms that the party contends should be

governed by 35 U.S.C. § 112(f).

(b) Number of Terms. Unless a showing of

good cause is made and granted by the court,

no more than 15 terms per patent may be

requested for construction.

(c) Designation. For each claim term to be

construed, the parties must indicate whether

it may be case or claim dispositive.

Appendix J cont.
185 

Rule 10. Exchange of Proposed Claim Terms 

for Construction

(a) In General. Within 28 days after receipt of

the List of Proposed Claim Terms for

Construction, each party must serve on all

other parties a proposed construction for each

claim term to be construed. Each party’s

proposed construction must identify all

intrinsic and extrinsic evidence that supports

the proposed construction.

(b) Narrowing the Number of Terms. Within 7

days after the exchange of proposed claim

terms, all parties must meet and confer in an

attempt to further narrow the number of claim

terms.

Rule 11. Joint Claim Construction Chart

Within 35 days after the exchange of proposed 

claim terms, the parties must file a Joint Claim 

Construction Chart that includes:

(a) the claim terms and construction on which

the parties agree; and

(b) each party’s proposed construction of each

disputed claim term, together with

identification of intrinsic and extrinsic

evidence on which the proposing party

intends to rely.

Rule 12. Joint Claim Construction Appendix 

and Prehearing Statement

At the time the Joint Claim Construction Chart is 

filed, the parties must also file:

(a) a Joint Claim Construction Appendix and

Prehearing Statement listing each patent at

issue and the prosecution history for each;

(1) the prosecution history must be

paginated and cited as the Joint Appendix

(“JA”) when referenced; and

(2) any party may also file a separate

appendix containing other supporting

material;

(b) each party’s proposed definition of a Person

of Ordinary Skill in the Art, or if the parties

agree, a joint definition of a Person of

Ordinary Skill in the Art;

(c) a proposed schedule for the Claim

Construction Hearing;

(d) whether any party proposes to call one or

more witnesses, including experts, at the

Claim Construction Hearing, together with

the identity of each witness and a short 

summary of the anticipated testimony; and

(e) whether any party intends to request a

hearing on invalidity or indefiniteness.

Rule 13. Completion of Claim Construction 

Discovery

Within 28 days after the filing of the Joint Claim 

Construction Appendix and Prehearing 

Statement, the parties must complete all 

discovery relating to claim construction, 

including any depositions with respect to claim 

construction of any witnesses, including experts, 

identified in the Joint Claim Construction 

Appendix and Prehearing Statement. 

Rule 14. Claim Construction Status 

Conference

Within 7 days after the filing of the Joint Claim 

Construction Appendix and Prehearing 

Statement, the court will schedule a status 

conference, to be held within 90 days thereafter, 

to set the date for the Claim Construction Hearing 

and discuss any other relevant matters with the 

parties.

Rule 15. Claim Construction Briefs

(a) Claim Construction Briefs are optional and

any party may elect instead to rely on the

Joint Claim Construction Chart.

(b) Any Claim Construction Briefs must be filed

according to the following schedule:

(1) within 56 days after the filing of the Joint

Claim Construction Chart, the plaintiff

may file a Claim Construction Brief;

(2) within 28 days after the filing of the

Claim Construction Brief, each opposing

party may file a Responsive Claim

Construction Brief; and

(3) within 14 days after the filing of the

Responsive Claim Construction Brief(s),

the plaintiff may file a Reply Claim

Construction Brief.

TITLE V. SETTLEMENT

Rule 16. Mandatory Settlement Discussions

The parties must meet and confer, in person or by 

telephone: 

(a) within 7 days after entry of the court’s Claim

Construction Opinion and Order;

Appendix J cont.
186 

(b) within 7 days after entry of the court’s

Validity or Indefiniteness Opinion and Order,

if the case is not dismissed; and

(c) within 7 days after the conclusion of trial.

Rule 17. Joint Statement of Compliance With 

Mandatory Settlement Discussions

Within 7 days after each settlement discussion, 

the parties must file with the court:

(a) a joint statement of compliance with PRCFC

16, indicating that settlement discussions

were conducted and apprising the court of the

outcome; or

(b) a motion requesting that the case be

dismissed.

TITLE VI. OTHER

Rule 18. Stay of Proceedings 

(a) In General. On motion, the court may stay

the case pending a proceeding before the

United States Patent and Trademark Office

that concerns each patent at issue, e.g., reexamination, inter partes review, or any

other post-grant review proceeding.

(b) Grounds for a Stay. Whether the court stays

the case depends on the circumstances of the

case, including:

(1) the stage of the litigation;

(2) whether a stay will simplify the issues;

and

(3) whether a stay unduly will prejudice or

present a clear tactical disadvantage to

the nonmoving party.

Rule 19. Confidentiality

(a) In General. Absent court order, discovery

may not be withheld on the basis of

confidentiality.

(b) Protective Order. The court may issue a

protective order at its discretion. A sample

protective order for patent cases is found at

Appendix of Forms, Form 8A.

Rule 20. Good Faith Participation 

Failure to make a good faith effort to comply with 

these rules may subject counsel to sanctions.

Rule 21. Certification of Disclosures

All disclosures made pursuant to these rules must 

be dated and signed by counsel of record (or by 

the party if not represented by counsel) and are 

subject to the requirements of RCFC 26(g).

Rule 22. Admissibility of Disclosures 

Statements, disclosures, or charts are admissible 

to the extent permitted by the Federal Rules of 

Evidence.

Rule 23. Supplementation Requirements

The requirements to supplement disclosure and 

discovery responses under RCFC 26 apply to all 

disclosures required by these rules. 

Rule 24. Amendments

The duty to amend or supplement does not excuse 

the requirement to obtain leave of the court. A 

party may amend the Preliminary Disclosure of 

Infringement Contentions or the Preliminary 

Disclosure of Invalidity Contentions only by 

court order upon a showing of good cause. 

Rules Committee Note

2018 Adoption

The United States Court of Federal Claims 

Patent Rules, under 28 U.S.C. § 1498(a), 

supplement the court’s existing rules by 

providing a structure to facilitate the fair and 

expeditious resolution of patent cases. The 

complexity of an individual case may require the

assigned judge to make adjustments to these rules 

in the interest of justice.

Appendix J cont.