My question is since Patent Rule 4-2 to Complete Discovery was due Jan 18th after a 2 day continuence (see below).. In theory, in order to comply, everything including prior art that is/was to be submitted for Discovery already has been.   Now Pubpat throws its 'prior art' patents, books, ect out there.. since these revelations came to light (in theory) after the Jan 18th deadline, will this 'prior art' be allowed to be submitted into this/our Discovery & be allowed in the Discovery Claim Construction Hearing Feb 23rd??  Thank you very much

Exerpt from Minnesota US District Court Form 4 Rule 26(f) Report (Patent Cases)…  I could not find one from E Tex, but I assume they would be the same for purpose here… Definition/summarization of Discovery Claim Construction Hearing.

http://www.law.umn.edu/uploads/images/2994/6225D-Minn.pdf

 

(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.

(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