volume xiii no. 3 fall 2006 report - abtlabtl.org/report/sd/abtl-report-fall-2006.pdf · volume...

ASSOCIATION OF BUSINESS TRIAL LAWYERSSAN DIEGO

REPORTVolume XIII No. 3 Fall 2006

Everything You Wantedto Know About Wageand Hour Class ActionLawsuits But WereAfraid to AskBy Samantha D. Hardy, Esq., and Paul Nunez, Esq., Sheppard,

Mullin, Richter & Hampton LLP

Wage and hour classaction lawsuits have been increasing in number,type, and amount at stake forseveral years, and the growthcontinues. In Californiaalone, the number of poten-tial wage and hour classaction suits filed since theyear 2000 exceeds 3,000.Wage and hour class actionshave been filed against everyindustry, from retail to hightech companies to financialinstitutions. It is thereforecritical that all businessesunderstand what a wage and hour class action

VIEW FROM THE BENCH

Ten Practical Tips forState Court LitigatorsBy Alan M. Mansfield, Editor, ABTL Report

ABTL Past PresidentCharles Berwanger arranged a 2-for-1 lunch spe-cial this past month, when both Judge Jeffrey

Barton and Judge JoanLewis of the San DiegoSuperior Court participatedin the ABTL brown bag lunchseries. Both shared theirinsights from their perspec-tive as San Diego SuperiorCourt Civil IndependentCalendar judges about whatthey would have liked tohave known as lawyers prac-ticing before the Court. Theyprovided numerous practicaltips to our members to helpthem be more effective withthe limited time judges haveavailable.

1. Tailor Your Briefs ToBe Concise and Relevant.

To place this tip (and sev-eral others below) in per-spective, it is important tounderstand the currentIndependent Calendarjudge case load and

resources. Each I/C judge has about 500 activecases, and are assigned an additional 60 caseseach month. Each judge has a law and motionresearch attorney who helps prepare tentative

InsidePresident’s Column Maureen F. Hallahan p. 2

Southern District Rolls Out New Patent Local RulesFred Berretta and Joe Reisman p. 3

Congratulations to Vince Bartolotta, 2006 Recipient of theBroderick Award Robert Steiner p. 4

Who Should Resolve Your Case – The Trial Judge, TheSettlement Judge or Your Client?

Colin W. Wied p. 5Articles of Interest from Current ABTL Newsletters p. 18

(See “Wage and Hour” on page 10)

(See “Ten Practical Tips” on page 6)

Judge Joan Lewis

Judge Jeffrey B. Barton

Samantha D. Hardy

In my last President’sColumn, I promised you great fall programs andI am happy to report that ABTL delivered!September was active, informative and enter-taining.

The ABTL all-day semi-nar on September 9, 2006,“Masters of the Art: Buildingto the Close,” was wellattended, educational and alot of fun. In this combina-tion seminar and mock trial,attendees observed some ofthe best trial lawyers in SanDiego demonstrate all phas-es of a trial. We all learnedvaluable techniques and les-

sons including what to do when an expert wit-ness does not testify on direct examination asexpected. You can never predict everything thatwill happen in litigation and certainly not attrial. The panelists were presented with interest-ing and unplanned situations that requiredquick action and damage control. It does not getany more real than that! As part of the program,a jury of law students from a local law schoolused real time technology to record their ongoingreactions to the persuasiveness of opening state-ments or closing arguments, and the believabili-ty of testifying witnesses. At the close of the trialthe jury determined that the plaintiff prevailedon the issue of liability. Interestingly, when thisprogram was presented to the ABTL statewidemembership at the Annual Seminar in Tucsonlast year based on the same evidence, the jurydetermined that the defendant prevailed on theissue of liability!

A thank you to Judge Haden who was theforce behind this program, to Frank Tobin andKaty Bacal for their work in coordinating theprogram, to August Larson and AJL Video fortheir invaluable assistance in the presentation ofthe evidence and exhibits and to MSI for the juryreal time technology. A special thank you to allthe judges and lawyers who participated as well

2

Maureen F. Hallahan

President’s ColumnBy Maureen F. Hallahan

as to Dan Lawton, who stepped in at the lastminute to give a winning closing argument.

Just one week later, on September 18, 2006,ABTL presented one of the best and most wellattended programs in its history. John Hueston,the United States Attorney who prosecutedKenneth Lay and Jeffrey Skilling, was anextraordinary speaker providing a first handaccount of the approach to the successful prose-cution as well as the problems and issuesencountered along the march to the guilty ver-dict. I want to give special recognition to ourABTL Program Chair, Tom Egler, for his role inpersuading this wonderful speaker to participatein an ABTL Dinner program.

ABTL is presenting one more dinner programin 2006 featuring Clay Jenkinson asMeriweather Lewis. So mark your calendars forDecember 4, 2006 for what promises to be a veryentertaining holiday program. Although I havenot personally seen him perform, by all accountshe is not to be missed! This is also a programthat is well suited for the whole family. Don’tmiss this opportunity to have our families meetour colleagues at an entertaining dinner pro-gram.

You will be receiving this issue of the ABTLReport as many of us head off to Maui for theABTL Annual Seminar, where we will join a soldout crowd to learn what to do “when things gowrong.” This program features some of ABTL’smost talented judges and litigators offeringadvice and war stories on the real life drama ofthe courtroom and the unpredictable situationsthat can arise. As you know, one can alwaysexpect the unexpected in trial. The trick is to beprepared to handle whatever comes your way. Inthis seminar the panelists will share their tech-niques and strategies to handle difficult situa-tions and explain how they keep their cool underpressure.

My thanks to all of you for your support ofABTL. I look forward to seeing you and meetingyour families at our holiday program onDecember 4, 2006. ▲

3

The District Court forthe Southern District of California recently adopt-ed a set of Patent Local Rules governing certainprocedures unique to patent cases. The new rulesare similar to patent local rules previously adopt-ed in other courts, for example, the NorthernDistrict of California and the Eastern District ofTexas, and apply to all patent cases filed afterApril 3, 2006. This article discusses these newrules and some of the procedural issues they raisein the context of prosecuting or defending a patentcase in the Southern District of California.

The new Patent Local Rules are divided intofour main sections: (1) Scope of Rules, (2) GeneralProvisions, (3) Patent Disclosures, and (4) ClaimConstruction Proceed-ings. They generally governthe required disclosures and exchanges leading upto the Claim Construction Hearing. One expressgoal of the new rules is to conduct the ClaimConstruction Hearing, a critical and often case dis-positive event, within about nine months of thedefendant’s first appearance in the case. ThePatent Local Rules do not specifically addressother case scheduling matters, such as expertreport due dates, and discovery and motion cutoffdates. Such matters will presumably be set usingthe Court’s normal case scheduling procedures.

A. Scope of RulesThe Patent Local Rules apply to any case

involving allegations of infringement, invalidityor unenforceability of a utility patent. Thus, inaddition to the normal patent infringement com-plaint brought by the patent owner or the declara-tory judgment action brought by the allegedinfringer, the new rules may also apply to actionsalleging breach of a license agreement if infringe-ment of the underlying patent is alleged. The newrules are limited to utility patents, and thuswould not apply to actions involving designpatents (for which a Claim Construction Hearingis generally not necessary).

Rule 1.3 provides that any motion filed prior to

Southern District Rolls Out New Patent Local RulesBy Fred Berretta and Joe Reisman of Knobbe, Martens, Olson & Bear, LLP

the Claim Construction Hearing that raises claimconstruction issues may be deferred until afterthe claim construction ruling. Virtually every sub-stantive or case dispositivemotion in a patent casedepends in some way on thelegal construction of theasserted claims. Thus, par-ties (and particularly defen-dants considering an earlysummary judgment motionof non-infringement) may bewell advised to “hold theirfire” until after the claim con-struction ruling. On the otherhand, the Court may consid-er, prior to the ClaimConstruction Hearing, amotion to establish a defensebased on the existence of anexpress or implied license.Presumably, the Court wouldmake an exception for amotion for preliminaryinjunction where thereappears to be a real danger ofirreparable harm to thepatent owner, and make apreliminary ruling on claim construction thatmay be revisited later.

B. General ProvisionsAs most Southern District practitioners are

aware, in a normal case the Early NeutralEvaluation (“ENE”) Conference is scheduled rela-tively soon after the defendant appears. If the casedoes not settle at the ENE, the Court provides thedates for the Fed.R.Civ.P Rule 26 meeting of coun-sel and initial disclosures. The Patent Local Rulesmodify this normal procedure by moving the ENEConference back to within 60 days from the defen-dant’s appearance, but require that the Rule 26(f)meeting of counsel occur no later than 21 days

(See “Southern District” on page 13)

Fred Berretta

Joe Reisman

4

(See “Vince Bartolotta” on page 18)

Congratulations to Vince Bartolotta,2006 Recipient of the Broderick AwardBy Robert Steiner, Esq., Luce Forward Hamilton & Scripps LLP

The Broderick Award, named in honor ofattorney Daniel Broderick, was established in1990 to annually recognize a leading civil triallawyer who exemplified the qualities of civility,professionalism and integrity. A review of therecipients over the past 17 years demonstrates abalance of plaintiff and defense lawyers. By tra-dition, those not eligible for the award includejudges, retired judges, and lawyers employed bygovernmental agencies.

The selection committee is composed of onerepresentative from the four founding organiza-tions: Association of Business Trial Lawyers,ABOTA, Consumer Attorneys of San Diego andSan Diego Defense Layers. ABTL is proud to be asponsor and participant in the selection of worthycandidates in cooperation with the other three

Vince Bartolotta hashad a remarkable legal career. In addition to being

a competent jury trial lawyer,he has been active in a num-ber of important legal organi-zations. He has served as adirector of the San DiegoChapter of the Association ofBusiness Trial Lawyers, aspast president of the SanDiego Chapter of theAmerican Board of TrialAdvocates, and also as pastpresident of ConsumerAttorneys of San Diego. Each

of these organizations submitted his name in nomi-nation in 2006 for the prestigious Broderick Award.

Robert Steiner

5

(See “Or Your Client” on page 6)

trial, telling each party to set-tle rather than risk eitherlosing or getting less thandesired. Thus, about thesame level of happinessresults from settlement con-ferences as from trials. Ineither case, it is pretty muchan up or down result.

Mediation beats the othertwo alternatives handsdown. Mediators are trainedto spot emotional blocking issues and get themout of the way before tackling the money issues.For example, in probate cases, long-term siblingconflicts tend to bubble up. I call it the Tommy

Who Should Resolve Your Case – The Trial Judge,The Settlement Judge or Your Client?By Colin W. Wied, Esq.

What is the best wayto resolve disputes? The good old-fashioned way isto try the case. But that means risk, it is expen-sive in both dollars and lost time, and it is stress-ful. Moreover, after the judge or jury has spoken,at least one party is unhappy, and often both par-ties feel short-changed.

Recognizing that there are insufficientresources to try all the cases, traditionally courtshave required parties and counsel to attend set-tlement conferences. These settlement confer-ences, conducted usually by a judge other than thetrial judge, are effective. It may reasonably beasked, however, just how pleased the parties andcounsel are with the settlements. After all, thestrongest settlement tool the settlement judge hasis to opine on what will happen if the case goes to

Colin Wied

6

Or Your ClientContinued from page 5

Smothers syndrome: “Mom always liked youbest.” Underneath these resentments there usu-ally co-exist repressed feelings of mutualregard. The same is true in most business con-flicts. In a mediation, relationships can berestored as a part of the settlement. That likelydoesn’t happen in court.

Mediators are also alert to the possibilities offinding solutions that satisfy both sides - solutionsthat would be unavailable in court. A good exam-ple is a patent infringement case where the stakesare high. Rather than betting the farm at trial,parties come to realize that a license agreement ofsome sort needs to be worked out between them.

For example, in my style of mediation I try toavoid talking about money early in the mediation.The “let’s cut to the chase” approach usually cre-ates a spread between demand and offer that isdifficult to surmount. Instead, usually in caucus-es, I probe the strengths and weaknesses of eachside until I sense where each side may be willingto settle. At that point I can begin urging the par-ties to settle within a reasonable range, knowingthey are ready to do so.

With San Diego’s system of case managementconferences, counsel and the parties often go tomediation because the trial judge told them todo so. That has an advantage in that neithercounsel needs to suggest a weakness by beingthe first to suggest mediation. In my experienceas a mediator, I have been very impressed withthe competence of counsel during the mediationsessions, especially with the recognition bycounsel of the desirability of settling the case. Ifind it rare that a lawyer wants to run up thefees rather than settle.

And how about the clients? The wonder is thatclients stop talking to each other when litigationbegins. They are under the mistaken impressionthat it is improper for them to communicate, andin some cases, their lawyers tell them not to talkto each other. Yet clients who have businesses torun learn early on that litigation is not a profit-making venture. Given a choice, most clientswould go for an early, fair settlement without theexpense and risk of litigation. I am reminded of aSan Diego law firm that was engaged in full-timelitigation for one client when, quite by happen-stance, the presidents of the two litigants talked

to each other, settling the case out from under thelawyers. The San Diego firm collapsed.

The moral of that story is to remember thatcases belong to the clients — not the lawyers, andnot the courts. At trial and at judicial settlementconferences the client may not be in control of theprocess. In mediation, the client controls theentire process. When a case is settled in media-tion, both sides and their lawyers are typicallysatisfied. All sense of risk and anxiety is gone,supplanted by a feeling of satisfaction and relief.That typically doesn’t happen in either the settle-ment conference or trial court.

Cases will continue to settle one way or anoth-er, as they always have. Yet, the trend today istoward more than delay reduction. Now the driveis to reduce the direct and indirect costs of tradi-tional dispute resolution. Far and away the bestway to do that is to hand the case back to theclients in a mediation. ▲

Ten Practical TipsContinued from page 1

rulings on law and motion matters, but does nothelp on motions in limine, trial issues, or post-trial motions. Trials are scheduled for 9:00 a.m.to 4:30 p.m. Monday through Thursday. Ex parteapplications are heard at 8:30 each morning,with the court reviewing the papers after thetrial day is completed.

Typically there are 15 motions on calendareach week, at least eight of which are “heavy”(motions for summary judgment or adjudication,injunction requests, etc.). So while the judgesread and consider all the submitted papers,these papers are being considered after the judgehas put in a full trial day and read several exparte applications. Thus, realistically they canonly read a few motions each evening. Attorneysalso recall more about the case in term of priorprocedural history and rulings, and can properlypresume the court will not recall every singledetail about the 500-plus cases on their docketwhen reviewing the papers.

In light of these facts, how can attorneys maketheir motions more effective? First, Judge Bartonsuggested that at the beginning of the motion


7

counsel describe all the relevant background factsnecessary to resolve the motion (not simply a his-tory of the case) and say what their client wants(or what should not be ordered) through thismotion. A clear, concise Statement of the Case is agood way to do this. If there is another documentthat describes the procedural history in detail, itmay be better to simply incorporate it by refer-ence unless necessary to the motion, if trying tocreate or preserve an appellate record.

Second, if there is a key fact, identify it clearlyand where it can be readily located in the submit-ted materials. If there is a key case, cite that caselaw correctly and honestly, and explain why itresolves the issue (Judge Lewis noted that thejudges rely heavily on case law being cited accu-rately). If the opposing side relies on a key decision,explain why it does not apply rather than ignore it.

Third, Judge Barton observed the judgesknow the standards for demurrers or summary



judgment based on the number of motions theyreview. Thus, spending a page quoting the stan-dard is not very helpful. Counsel should includea discussion of such standards where a particu-lar aspect of that standard is relevant to resolu-tion of the motion.

Finally, if in good faith counsel believe the otherside is asking the court to make an order the courtdoes not have a legal basis for, or would have seri-ous potential consequences that may not be read-ily apparent, counsel should explain why theybelieve that is the case. Judge Lewis commentedthat she takes particular notice if counsel raisessuch a concern.

2. The Rule 335 Statement and SeparateStatement of Facts Are Very ImportantWhile Judge Barton commented that as a

lawyer he felt these supporting documents were oflimited value, as a judge he says they are essen-tial. He can look at one document to get to the coreof the dispute, while he can view the supporting

8 (See “Ten Practical Tips” on page 9)


brief to summarize the applicable law. The prob-lem he sees is that Rule 335 statements typicallyinclude overly broad requests or every possibleobjection, rather than a focused request or one ortwo objections that are most persuasive.

The other reason why these documents may beseen as cumbersome is more due to the nature ofthe dispute. Both Judge Barton and Judge Lewissaid they prefer counsel to come to the court witha discovery dispute before filing a motion, sincemany times the matter can be either narrowed orresolved with a face-to-face discussion – alongwith a reminder that under the California Code ofCivil Procedure, unless a party shows they actedwith substantial justification the court “shall”impose a monetary sanction on the losing party. Ameeting with the court can reduce the issues thattruly need to be addressed, and as a result the sizeof the Rule 335 Statement. Both judges makethemselves available during ex-parte hours todeal with such issues.

Similarly, Judge Lewis commented that sepa-rate statements of undisputed fact prepared inaccordance with Cal. Rule of Court 342 (which shenoted many are not) help the court focus on pre-cisely what evidence within what are sometimesseveral banker’s boxes of documents support aparticular point. These statements also can beeffectively used to focus the court on what is thecrux of the dispute. If these documents are conciseand tailored to focus on what is needed and why,these statements may be the primary documentthe judge reviews when considering such motions.

3. Think Before You Send That E-mail In ADiscovery Dispute.

Judge Lewis observed that many times a dis-covery dispute appears to be less about a substan-tive issue and more about attorneys’ emotions.While helpful to outline what is in dispute, letterexchanges typically do not accomplish much inthe meet and confer process in terms of actuallyresolving the dispute to be brought before thecourt. In these days of instant e-mail communica-tion where a written response can be sent in a fitof pique, those e-mails are frequently submittedas evidence of the unreasonableness of the posi-tion taken by a particular side. These e-mails do

not go unread. While counsel may not have thebenefit of leaving a particular issue alone for a fewdays, they would be well-served to heed JudgeLewis’ litigation tip — before pushing the “send”button, read the e-mail and ask “what would thejudge or jury think if they read this?”

Judge Barton similarly observed and expressedconcern about what he perceived was an increas-ing lack of civility between counsel – more so thanhe had experienced in family law, where the par-ties are involved in much more emotional issues.

4. Don’t Discount The Importance of OralArgument On Law And Motion Matters.Both Judge Barton and Judge Lewis said they

do not view oral argument as perfunctory; in fact,both routinely take matters under submissionand change their tentative ruling about 20% ofthe time. Judge Barton stated that if a matter istaken under submission, he personally reviewsthe papers again to address issues raised in oralargument, since sometimes the tentative rulinghas been revised significantly from the initial pro-posed draft and is presented to get the parties’reaction to the court’s initial thoughts.

Again, it is important to keep in mind the con-straints set forth above. If there are two or threecases or evidentiary cites that form the basis fororal argument, or if counsel believe there is somelegal impediment for the court doing what hasbeen requested in the motion or suggested in thetentative ruling, make that point at the beginningof the argument, rather than use a shotgunapproach that loses focus on the key points coun-sel desire to make.

5. Delaying Discovery Until You Are CloseTo Trial Can Be Hazardous.

It is not uncommon for a trial date to be set bythe court and, after the matter does not resolveafter mediation, for both sides to agree that addi-tional discovery needs to be completed and thusthe trial date should be continued or vacated. Theproblem with this stipulation is the request maydeviate from the trial court’s case disposition timestandards promulgated as a result of the TrialCourt Delay Reduction Act, (see Cal. R. of Ct. App,§ 2.1). While cases that meet the definition of a“complex case” may be exempted from these stan-dards, few cases truly fall into this category.

Judge Barton admonished that parties shouldnot anticipate simply because they agree the trial

9


date should be continued such a request will begranted, if doing so would result in the case beingtried beyond these disposition time standards.Considering when discovery can commence underthe Code of Civil Procedure and when it must becompleted (particularly if a party contemplates asummary judgment motion), counsel should notexpect that they can defer discovery until closer totrial and, if the case does not settle at mediation,the court will continue the trial.

6. Provide A Realistic Trial Estimate At TheCase Management Conference.

Judge Barton noted that in his experience hehas had one trial that concluded early. In contrast,most cases are at risk for going over the estimateand require judicial involvement. Once represen-tations are made to a jury regarding the length ofa trial, both Judges consider it an obligation of theCourt to insure the case finishes close to the esti-mated time. If one side or the other appears to betaking too long at trial, the court may impose


strict time limits on counsel during the course oftrial. Therefore, when providing a trial estimateat the Case Management Conference, and partic-ularly at the start of trial, it is better to err on theside of caution. The court and the jury will not beupset if counsel finish early.

7. Prepare For Trial Pursuant to theAdvanced Trial Review Orders.

Both Judge Lewis and Judge Barton comment-ed on how many counsel come to the trial call notready for trial – exhibits have not been pre-marked or identified as being potentially objec-tionable on a joint list, or deposition transcriptshave not been designated. The purpose of theTrial Readiness Conference is to address theseissues and prepare the way for a smooth trial. Insome courts, if exhibits are not on the trial exhib-it list and potential objections not included, theymay be deemed waived.

If counsel plan on using deposition transcriptsat trial, so that the court can rule on objections tocertain testimony counsel should lodge the tran-scripts with the court and have a copy for the

10


judge and a copy for the witness ready to showduring trial. Counsel should also be prepared withpage and line number references ready to readinto the record or for impeachment purposes.

Along these lines, Judge Barton noted thatwhile no one wants to waive an objection to evi-dence, it is important to focus on what evidenceis necessary to prove your case, or what evi-dence you may want to exclude that may hurtyour case. A laundry list of objections to virtual-ly everything are the least likely to be effectivefor either law and motion matters or for trial.Focused objections to key evidence are the mostlikely to be successful.

8. Request The Judge Ask Sensitive VoirDire Questions And For Their Procedures.

While questions that are designed more for pre-conditioning the jury will not be asked (and objec-tions to such questions may be raised during thevoir dire process), both Judge Lewis and JudgeBarton said that judges understand cases some-times raise issues that are best addressed fromthe judge rather than be attributed to a particularside. Both said that if there are particularly sensi-tive issues raised by a case, they are willing to askquestions directed at such issues if requested todo so by counsel. Voir dire practices vary consider-ably by judge (even Judge Barton and JudgeLewis use different methods). Counsel shouldinquire in advance if the court has any writtenprocedures, or ask the judge about voir dire proce-dures during the Trial Readiness Conference.

9. Practice Your A/V Skills Before Trial.Attorneys who effectively use audio-visual

equipment at trial have an advantage overthose who do not as juries appear to be morefocused on such evidence, according to JudgeBarton. However, this statement comes with asignificant caveat – it is the rare case where theequipment works as intended for the entirecase. And if counsel is not familiar with theequipment or it fails during trial, this couldresult in significant disruption or, even worse,delay in presenting the case to the jury. The keytip here is the effective use of such equipment.That comes with practice and test running thepresentation to be used before trial.

On the other hand, A/V equipment is rarely

helpful for law and motion matters. In additionto the time constraints noted above, use of suchequipment may raise a number of collateralmatters (e.g., does the material constitute addi-tional briefing and must be shown to the otherparty, or clearing use of the equipment with thecourt) that raise more headaches than justifythe use of such equipment.

10. Look At The Jury To See If The Trial IsTaking Too Long.

Finally, both Judge Lewis and Judge Bartonemphasized the need to focus on the jury and itsdemeanor during trial. Many times they see attor-neys focusing on issues not germane to the keypoint of the case, or spending an inordinateamount of time addressing issues that result inthe jury sitting outside in the hallway, withoutdue consideration of the impact that may have onthe jury. If the trial is taking too long or a pointhas already been made, the jurors’ reactions willlet counsel know that in subtle (and sometimesnot so subtle) ways. Judge Barton said he willoccasionally ask counsel during trial to look at thejurors. Their reaction may be the best evidence ofthe pace of the trial. ▲

Wage and HourContinued from page 1

lawsuit is, how to avoid becoming the target ofsuch a suit, and what to do if faced with one.

1. THE BASICSA wage and hour class action lawsuit is, gen-

erally speaking, a suit brought by an individualor small group of individuals on behalf of them-selves and other employees in the same or simi-lar job classifications, alleging failure to payminimum wage or overtime or failure to complywith other requirements relating to the properpayment of employees.

Wage and hour class actions can be based oneither federal or state law. Those based on federallaw are brought under the Fair Labor StandardsAct (“FLSA”). The FLSA, among other things,requires covered employers (1) to pay theiremployees at least the federal minimum wageand (2) to pay their employees overtime at a rateof one-and-one-half times their regular hourlywage for hours over 40 in a week, unless those


11


employees qualify for one of several specific“exemptions” from one or both of these require-ments. The FLSA requires class action lawsuitsbrought under federal law (technically called “col-lective actions”) to proceed on an “opt-in” basis,meaning only those employees who actively agreeto participate in the lawsuit may be included.

In addition to the FLSA, states are free toestablish laws of their own setting forth mini-mum wage, overtime and other requirements foremployers that are more favorable to employeesthan those included in the FLSA. Some states(such as California) have enacted sophisticatedwage and hour laws with numerous require-ments not found in federal law, while other statessimply incorporate federal law or do not have anytype of wage and hour laws on the books. In addi-tion, some state laws allow wage and hour classactions to proceed on an “opt-out” basis, meaningall employees in the purported class would beincluded unless they actively chose not to partic-ipate. California both has more restrictiverequirements than the FLSA and allows wageand hour class action suits to proceed on an “optout” basis, and as a result has been a hotbed ofwage and hour litigation activity.

A. Common allegationsEmployers can unintentionally stumble into

violations of federal and state wage and hour lawsin myriad ways. California’s wage and hour lawsare lengthy and complex, and go far beyond therequirements set forth by the FLSA. The mostcommon allegations in wage and hour classactions are as summarized below:

1. Misclassification: The FLSA and somestate wage and hour laws, including California’sstatutory scheme, exempt certain classes ofemployees from the application of minimum wageand/or overtime provisions. Some of the morecommonly used exemptions are exemptions thatapply to executive, professional, and administra-tive employees; exemptions that apply to inside oroutside salespeople; and exemptions that apply tocertain employees who drive as part of their job.Each of these exemptions has specific require-ments. An employer may either intentionally orinadvertently misclassify a group of employees asqualifying for one of these exemptions.As a result,


the employer may fail to pay the employees theminimum wages or overtime wages they wouldotherwise be due had they been properly classi-fied as non-exempt employees.

2. Off-the-clock work: Employees sometimesperform work before clocking in or after clockingout, either at the urging of their supervisor, oftheir own volition in an attempt to appear moreefficient, or for other reasons. As a result, thoseemployees are not paid any wages for that work.This can create a violation of minimum wagerequirements, overtime requirements (if theunrecorded hours would have been overtimehours), and other wage and hour requirementssuch as record-keeping requirements.

3. Miscalculation of overtime: Determininghow much overtime an employee is due is not nec-essarily a matter of simple arithmetic. The propercomputation of overtime depends on the nature ofan employee’s compensation (e.g., hourly wages, asalary, commissions, bonuses, differing wage ratesfor different tasks, etc.). While the calculation ofovertime on some types of compensation is rela-tively straightforward, that calculation can beextremely complicated, especially for bonuses orcommissions earned over more than one pay peri-od. In addition, the proper computation of over-time on any particular type of compensation mayvary from state to state. For example, computa-tion of overtime on a salary can be different underCalifornia law than under federal law.

4. Unlawful commission policies:Commission policies, particularly those involvingadvances, raise complicated issues. These issuesinclude the proper computation of overtime andcompliance with certain state laws, such as aCalifornia law prohibiting the taking back ofwages once earned.

5. Unlawful vacation policies: Some stateshave complicated rules regulating vacation poli-cies. California prohibits employers from imple-menting “use-it-or-lose-it” vacation policies, whereemployees forfeit vacation they have accrued butnot used at year end, at termination, or at anyother time.

6. Meal period and rest break violations:California law requires employers provide certainemployees with unpaid 30 minute meal periodsduring any work periods that exceed five hours,and with paid 10 minute rest breaks during anywork periods of at least three and one-half hours.

12


7. Reimbursement and expense-relatedallegations: Wage and hour class actions havebeen filed alleging failure to properly reimbursefor mileage or other expenses; failure to providenecessary tools, equipment, or uniforms; unlawfulcharges for cash shortages or lost or damagedproperty; and other issues relating to the properallocation of responsibility for certain expensesbetween employers and employees.

8. Record-keeping and pay stub viola-tions: In many instances where an employer hasviolated one of the rules described above, it hasalso committed a record-keeping or pay stub vio-lation. Consider for example the requirement thatan employer track hours worked by overtime-eli-gible employees and include that information onemployees’ pay stubs. An employer who has mis-classified a group of employees as exempt andpaid them accordingly likely has not tracked thehours and therefore cannot include them on thepay stubs, as is required by California law.

B. Sky high damagesThe unpaid wages claimed in a wage and hour

class action can add up fast. In California,California Business and Professions Code Section17200 et seq. allows some class actions to proceedon the basis of a four-year limitations period.Federal law allows some collective actions to pro-ceed on the basis of a three-year limitations peri-od. Just the unpaid wages to an entire classifica-tion of employees over this period can be millionsof dollars. However, the damages alleged in awage and hour class action are rarely limited tounpaid wages. Under certain circumstances, theFLSA provides for liquidated damages in anamount equal to the unpaid wages. Some statelaws likewise provide for liquidated damages, or,like California, provide penalties for violation ofcertain state laws. When interest and attorneys’fees are added, the amount owed by an employerthat has violated the wage and hour laws can bemind-boggling. That is why it is critical foremployers to recognize their risk areas and avoidbecoming the target of such a suit.

II. MEETING THE CHALLENGE

A. Avoiding wage and hour class actions The best way to avoid becoming the target of


a wage and hour class action lawsuit soundssimple: be familiar with the law, identify areasin which your company may not comply, and cor-rect any mistakes. However, as noted above, thelaws themselves are complicated, and vary fromstate to state. This means a nationwide employ-er must not only familiarize itself with federallaw and the laws of every state in which it doesbusiness, but also must make sure this informa-tion gets to the field – to the managers, payrollpersonnel, and other employees who are makingand implementing compensation decisions. Thefollowing are some suggestions for tackling thismonumental task.

1. Employee classification reviews: Beginwith a review of the categories of employees whoare classified as exempt. Remember that inorder to be exempt from minimum wage and/orovertime requirements, an employee must qual-ify for both a federal exemption and a stateexemption, if applicable. In some instances, astate may enact a “parallel” exemption that issimilar but not identical to a federal exemption.Employers should therefore confirm anyemployee classified as exempt meets everyrequirement of the exemption under both sets oflaws. Exemptions are “all or nothing” – if any ofthe criteria are not met under either federal orstate law, the employee is not exempt.

2. Payroll practice audits: Track your time-keeping and payroll system from start to finish –in other words, from the time an employee per-forms the work to the time he or she receives pay-ment for it – and make sure all applicable lawsare being followed. Is all work recorded? Is over-time calculated in accordance with the relevantlaws? Do all applicable records accurately reflectthe hours and compensation calculation?

3. Time card certifications: Many employersrequire employees to sign their time cards to ver-ify accuracy. Some employers have begun to addcertifications above the signature line. Such certi-fications may state, for example, that the employ-ee recorded all hours worked, or may referencespecific state requirements (such as California’smeal period and rest break requirements) andconfirm those requirements have been met.

B. Defending wage and hour class actionsThe cheapest way to rectify wage and hour vio-

lations is to do so before a suit is filed. If, however,

13

Southern DistrictContinued from page 3

before the ENE. Thus, discovery will open beforethe ENE Conference, and the Rule 26(a)(1) initialdisclosures would also be due before the ENE(normally within 14 days after the Rule 26(f) con-ference). Parties who believe there is a chance forsettlement at the ENE may want to stipulate(with Court approval) to move the Rule 26(a)(1)initial disclosures until sometime after the ENEConference, as such disclosures can be volumi-nous in a patent case.

The Patent Local Rules contemplate that if thecase does not settle at the ENE, the MagistrateJudge assigned to the case will proceed with anInitial Case Management Conference (“CMC”) todiscuss normal case scheduling and cutoff dates.The timeline provided with the Patent LocalRules indicates that the CMC would immediatelyfollow the ENE, but it is conceivable that theCMC would be scheduled on a later date. The par-ties’ Rule 26(f) report to the Court, due seven daysbefore the ENE Conference, must address thenormal scheduling matters, as well as four issuesspecific to patent cases: (1) any proposed modifica-tion of the deadlines provided in the Patent LocalRules, (2) whether the Court will hear live testi-mony at the Claim Construction Hearing, (3) dis-covery related specifically to claim construction,and (4) the order of presentation at the ClaimConstruction Hearing.

Although discovery will open earlier thanusual, the Patent Local Rules set specific dates forclaim construction positions and related disclo-sures from both parties. Thus, a party may objectto premature discovery requests seeking thissame information. Counsel should carefully con-sider the interplay of the Federal Rules of CivilProcedure and the Patent Local Rules and all therequired disclosures, and discuss these matterswith opposing counsel during the Rule 26(f) con-ference so that the parties can agree on a work-able discovery plan, subject to Court approval.Rule 2.3 requires counsel of record sign all therequired statements, disclosures and charts,thereby certifying that, to the best of counsel’sknowledge after reasonable inquiry, they are com-plete and correct as of the time they are made.Thus, it would appear that Fed.R.Civ.P Rule 11may be invoked to police compliance with thePatent Local Rules.


C. Patent DisclosuresRule 3.1 provides that, no later than 14 days

after the Initial CMC, the party claiming patentinfringement must serve a “Disclosure ofAsserted Claims and Preliminary InfringementContentions” that identifies the asserted claimsand each “Accused Instrumentality” alleged toinfringe. The disclosure must include a chartthat reads each asserted claim onto eachAccused Instrumentality and does so on an ele-ment-by-element basis. The disclosure must alsostate whether a particular claim element is in“means plus function” format, thus governed by35 U.S.C. § 112(6), and whether each claim ele-ment is infringed literally and/or under the doc-trine of equivalents. The priority date for eachasserted claim must also be provided.

Because of the timing of this disclosure, it willlikely occur prior to production by the accusedinfringer of complete information about theAccused Instrumentality.Thus, unless the AccusedInstrumentality is readily available, this disclo-sure may be “preliminary” and reflect little more


a company does become a target, there are sever-al options. Which path a company chooses willdepend on the specifics and strength of the claims.Many such cases settle quickly, particularlywhere the employer investigates the allegationsand concludes it has in fact violated the relevantlaws. Other suits are challenged on the groundsthey cannot proceed on a class basis – in otherwords, that the situation was different withregard to each employee and the issues thereforecannot be decided as to the entire group ofemployees in one suit. Still other companies areconfident their practices are lawful and chose tofight the issues on the merits.

New and creative wage and hour class actionsare filed every day, against different industriesand alleging different violations. Employers maynot be able to avoid being the target of such suitsaltogether. However, being aware of the issuesand the risks is the first critical step. ▲

14


than the pre-filing diligence required to bring theaction. On the other hand, if the AccusedInstrumentality is readily available, this disclo-sure should be more complete. In all cases, PatentLocal Rule 2.3 requires as complete a disclosure aspossible “formed after an inquiry that is reason-able under the circumstances.” Needless to say,contentious patent litigants often don’t see eye toeye on the requisite level of disclosure under theparticular circumstances, and disputes no doubtwill arise. Patent plaintiffs anxious to keep theircase moving forward are well advised to makeextra efforts to serve a disclosure as “complete andcorrect” as possible under the circumstances.

Rule 3.1 also provides that the party claimingpatent infringement must identify any of itsown products or processes that incorporate oruse a particular asserted claim if that party“asserts” that such product or process “practicesthe claimed invention.” This particular provi-sion appears to be optional in the sense that theparty claiming patent infringement may choosenot to assert that any of its products or process-es practice the claimed invention, and so numer-ous strategic considerations are raised that arebeyond the scope of this article. In certain cases,the patent owner may assert that it sells or usesthe patented product or process for purposes ofshowing non-obviousness through commercialsuccess, establishing the right to lost profitsdamages, or showing constructive notice of thepatent through marking.

Rule 3.2 provides that the party claimingpatent infringement must provide, along with thePreliminary Infringement Contentions, certaincategories of documents such as offers to sell theclaimed invention before the application date forthe patent in suit, documents evidencing concep-tion, reduction to practice, design and develop-ment of the claimed invention created on or beforethe application date or priority date, and prosecu-tion histories for each patent in suit or applicationto which a claim to priority is made. This require-ment would appear to mandate providing copiesof provisional applications if relied upon to estab-lish an early priority date for an asserted claim.

One interesting aspect of Rule 3.2, not foundin the Northern District’s Patent Local Rules, isthe requirement that the producing party use


“best efforts” to obtain all the required docu-ments even if they are not in that party’s posses-sion, custody or control. This rule could come intoplay if, for example, the plaintiff acquired thepatent by assignment, or there are third-partyinventors. While this production requirementmay seem somewhat unusual, in most cases itwould be prudent for the plaintiff to obtain andreview these documents before filing the lawsuitanyway, as part of its pre-filing diligence. Thiswill help avoid any unpleasant surprises laterwhen your opponent subpoenas these third par-ties. Again, a plaintiff anxious to keep its case ontrack may be well advised to do a thorough “bestefforts” job disclosing the required documents ina timely fashion so the accused infringer has noexcuse to delay its disclosures.

Rules 3.3 and 3.4 address the accusedinfringer’s “Preliminary Invalidity Contentions”,which are due 60 days after service of the“Disclosure of Asserted Claims and PreliminaryInfringement Contentions.” Rule 3.3(a) requiresthe identification of all prior art that allegedlyanticipates each asserted claim or renders it obvi-ous. The rule elaborates on the identification ofprior art under 35 U.S.C. § 102(b), (f), and (g), butthe first sentence is clearly not limited to thesethree subsections of § 102.Thus, any “prior art” orevidence thereof under any of the subsections of §102 should be disclosed.

Rule 3.3(b) requires that, for combinations ofprior art alleged to render a claim obvious, themotivation to combine the prior art must also beidentified. This is consistent with Federal Circuitprecedent (but note that the U.S. Supreme Courtrecently granted certiorari in Teleflex, Inc. v. KSRInternational Co., 119 Fed. Appx. 282 (Fed. Cir.2005). on the question of whether obviousnessunder 35 U.S.C. § 103(a) should require proof of ateaching, suggestion, or motivation that wouldhave led a person of ordinary skill in the art tocombine the relevant prior art teachings in themanner claimed). Showing a “motivation to com-bine” may not be necessary if the Supreme Courtanswers this question in the negative, but theremay be no downside in doing so if there is evi-dence of such teaching or motivation in the record.

Rule 3.3(c) requires the charting of the priorart against the asserted claims. Presumably,this would have to be done for each item ofanticipatory prior art and each combination of


prior art used to show obviousness. Dependingon how many prior art references have beenidentified, this can amount to many hours ofwork putting together many charts, becausethere is an understandable concern that the fail-ure to chart a particular prior art reference mayresult in a waiver of the right to later use thatreference. There is also uncertainty at this stageabout the claim construction that the Court willultimately adopt. One approach may be toassume a broader claim construction for yourinvalidity contentions, and rely on a non-infringement defense if the Court interprets theclaims more narrowly. Accused infringers cantake some comfort, however, because revisedinvalidity contentions may be served after theCourt’s Claim Construction Ruling.

Rule 3.3(d) and (e) require disclosure of allegeddefenses under the first and second paragraphs of35 U.S.C. § 112. Again, this must be done beforethe Court rules on claim construction, so it mustbe appreciated that the claim scope is still fluidand may later take an unexpected turn. Accusedinfringers should therefore avoid becoming toowedded to any particular defense at this stageand remain as flexible as possible, at least untilthe Court finally rules on claim construction. Notealso that certain defenses, such as “failure to dis-close the best mode” under 35 U.S.C. § 112(1),generally rely heavily on discovery and disclo-sures from the party asserting infringement andthe inventors. For such defenses, it is important toinsist on complete disclosures from the plaintiffunder Rules 3.1 and 3.2, and depose at least thenamed inventors on the asserted patents in atimely fashion.

The defense of inequitable conduct in procur-ing the patent is not specifically dealt with bythe Patent Local Rules. Inequitable conduct willresult in unenforceability of the entire patent.Such a defense is akin to a charge of “fraud” onthe Patent Office, and so the Federal Circuit hasheld that the more strict pleading requirementsof Fed.R.Civ.P Rule 9 apply to allegations ofinequitable conduct. Typically such defenses donot come to light until after some discovery anddepositions have been completed, and so thenormal practice is to seek a stipulation from the


opposing party or leave of Court to amend thepleadings as soon as there is a good faith beliefthat the defense has merit and can be pled withthe requisite particularity.

Assuming such particularized allegations ofinequitable conduct are already pled or pre-pared, there seems little downside to includingthem in the accused infringer’s Rule 3.3Preliminary Invalidity Contentions. However, itis unclear whether such a disclosure under thePatent Local Rules alone would suffice to bringthe charge of inequitable conduct to trial. Thus,the safer practice for the accused infringer is toamend the pleadings as soon as possible.

Rule 3.4 covers the scope of the document pro-duction that must accompany the PreliminaryInvalidity Contentions. Rule 3.4(a) calls for theproduction of documentation “sufficient to show”the operation of any Accused Instrumentalityidentified by the patent claimant in its Rule 3.1infringement chart. By the time Rule 3.4 disclo-sures are required, documents regarding theproducts or devices accused of infringement mayhave already been produced as part of the accusedinfringer’s Rule 26 initial disclosures or inresponse to normal discovery requests from thepatent claimant.

In addition to complying with Rule 3.4, themain concern for the accused infringer is not towithhold documents “sufficient to show” thatthere is no infringement. Based on the applica-tion of similar rules by other courts, there maybe a risk that any exculpatory evidence with-held at this point may be excluded if producedlater. Also, the lack of a Court issued ProtectiveOrder is no excuse to delay this document pro-duction. As provided in Rule 2.2, any confiden-tial documents must be marked and treatedaccordingly by the parties.

Rule 3.4(b) calls for the production of eachitem of prior art identified and not listed in thepatent, including translations of any foreign doc-uments. This would appear to require any type of“prior art” identified, not just patents or publica-tions, and would include documentation relatingto public use or on sale bars and the invention byanother (“derivation”) or evidence of prior inven-tion. As the production of all such evidence isalso required as part of the accused infringer’sRule 26 initial disclosures since it may be used tosupport an invalidity defense, the accused

15

16



infringer should take great care to produce allsuch exculpatory evidence in its possession atleast by this stage in the proceedings, or riskexclusion later. One approach may be to produceall prior art references known at the time, eventhose for which a chart was not prepared underRule 3.3(c), so that if the claim constructiontakes an unexpected turn and the referencebecomes more relevant an invalidity chart forthat reference can be provided with the FinalInvalidity Contentions.

Rules 3.6 and 3.7 allow for the modification ofthe parties’ preliminary contentions under certaincircumstances. Under Rule 3.6(a), the patentclaimant’s Preliminary Infringement Contentionsmay be amended only if the patent claimantbelieves in good faith that the amendments arerequired in view of the Court’s claim constructionruling or the documents produced by the accusedinfringer regarding the Accused Instrumentality.Thus, if the Court’s claim construction ruling doesnot address a particular claim limitation, and nonew information is produced about the correspon-ding element in the Accused Instrumentality, itseems that any amendment to the patentclaimant’s Preliminary Infringement Contentionsas to that claim limitation may precluded. Anyamended infringement contentions are due 30days after the Court serves its claim constructionruling, and become the patent claimant’s FinalInfringement Contentions. If no amendments aremade, the patent claimant’s PreliminaryInfringement Contentions are deemed its FinalInfringement Contentions.

Under Rule 3.6(b) the accused infringer’sPreliminary Invalidity Contentions may beamended only if the patent claimant serves FinalInfringement Contentions or the accusedinfringer believes in good faith that the Court’sclaim construction ruling so requires. Thus, if theCourt’s Claim Construction Ruling does notaddress a particular claim limitation, and thepatent claimant’s Preliminary InfringementContentions are not changed as to that particu-lar claim limitation, it seems that any amend-ment to the accused infringer’s PreliminaryInvalidity Contentions as to that claim limita-tion would normally be precluded.

Although it is not entirely clear, presumablyany permissible amendments to the PreliminaryInvalidity Contentions based on a change in thepatent claimant’s Preliminary InfringementContentions would be limited to the particularclaim limitations affected by the changes madeby the patent claimant (as opposed to a whole-sale amendment of the accused infringer’sPreliminary Invalidity Contentions). Anyamended invalidity contentions are due 50 daysafter the Court serves its claim construction rul-ing, and become the patent claimant’s FinalInfringement Contentions. If no amendmentsare made, the accused infringer’s PreliminaryInvalidity Contentions are deemed its FinalInvalidity Contentions.

Rule 3.7 provides that, except as set forth inRule 3.6, no amendments or modifications to theparties’ preliminary or final contentions may bemade except those allowed by the Court basedupon a showing of good cause. It remains to beseen how strictly the Court will interpret theserules and what circumstances may qualify as“good cause” to make an otherwise untimelyamendment to a party’s contentions. Presumably,newly discovered prior art would qualify if theparty can demonstrate diligence in searching andthe inability to reasonably discover the prior artsooner. Amendments to the parties’ contentionsbased upon late production or disclosures by theopposing party (for example, late produced docu-ments relating to the design or operation of theAccused Instrumentality) would also seem to beappropriate if the information could not otherwisebe obtained with reasonable diligence. There aremany possible scenarios that might justify an oth-erwise untimely amendment to the parties’ con-tentions. The rules give the Court substantial dis-cretion to decide these matters on a case-by-casebasis. Published decisions from the SouthernDistrict interpreting the new Patent Local Rulesshould provide more guidance as new patent caseswork their way through the Court. In the mean-time, practitioners should consult decisions fromdistrict courts with similar patent local rules.

Rule 3.8 concerns the timing and scope ofrequired disclosure in connection with any opin-ions of counsel to be relied upon as a defense to acharge of willful infringement. Rule 3.8 providesthat a privilege log must be served listing any doc-uments relating to the subject matter of an opin-

17


ion that are to be withheld on grounds of privi-lege, except those documents authored by counselacting solely as trial counsel. Failure to complywith the requirements of this rule will precludereliance on an opinion of counsel as a defense to acharge of willful infringement. The extent of thewaiver when an opinion is produced is a complexarea of the law beyond the scope of this article.

Additionally, soon after the Patent Local Ruleswere adopted by the Southern District, theFederal Circuit handed down In re EchostarCommunications Corp., et al. 448 F.3d 1294 (Fed.Cir. 2006) on a petition for writ of mandamus fromthe Eastern District of Texas. The Federal Circuitclarified the scope of the waiver and resolved sev-eral conflicts between the leading district courtdecisions. In Echostar, the court made clear thatthe scope of the waiver in a patent case is a mat-ter of Federal Circuit law, as opposed to regionalcircuit law. Accordingly, defense counsel shouldcarefully consider the Echostar decision on thisissue in the context of the Patent Local Rules.

Claim Construction ProceedingsThis section of the Patent Local Rules governs

the required exchanges and briefing leading up tothe Claim Construction (or “Markman”) Hearing.Rule 4.1 provides that the parties simultaneouslyexchange preliminary proposed constructions ofeach claim term, phrase, or clause that the partybelieves requires construction or interpretation bythe Court. At the same time, the parties must alsoprovide each other preliminary identification ofany extrinsic evidence (i.e., evidence outside thepatent and file history) supporting its proposedclaim constructions. This includes identification ofany percipient or expert testimony contemplatedto support a party’s claim construction. Fourteendays later, the parties must simultaneouslyexchange papers, this time of their responsiveclaim constructions and supporting extrinsic evi-dence. After these two exchanges, the partiesmust meet and confer for purposes of reachingagreement on claim constructions and narrowingthe disputed claim construction issues to thegreatest extent possible.

Rule 4.1 focuses on the identification ofextrinsic (as opposed to intrinsic) evidence. This


is curious and most likely a reflection of the factthat these Patent Local Rules have their genesisin similar rules from other district courts adopt-ed well before the 2005 en banc decision inPhillips v. AWH Corp., et al. 415 F.3d 1303 (Fed.Cir. 2005), wherein the Federal Circuit reestab-lished that the intrinsic record is paramount inclaim construction. Thus, although not requiredas part of the Rule 4.1 exchanges, in this post-Phillips era a party attempting to convince theopposing party of the merits of its proposedclaim construction may be well advised toinclude supporting citations to the intrinsicrecord, as well as the extrinsic evidence. This isrequired in the joint submissions to the Courtunder Rule 4.2 in any event, so it would seemprudent for a party to have identified intrinsicsupport for its proposed claim constructions wellbefore it starts this phase of the process.

Rule 4.2 governs three required submissions tothe Court after the parties have met and con-ferred: the Joint Claim Construction Chart, JointClaim Construction Worksheet, and JointHearing Statement. The Joint ClaimConstruction Chart provides a summary of thedisputed claim terms, each party’s proposed con-struction and each party’s supporting intrinsicand extrinsic evidence. The Joint ClaimConstruction Worksheet is for the Court’s benefitand simply provides the competing proposals foreach disputed claim term and a blank column forthe Court to enter its construction after the hear-ing. The Joint Hearing Statement provides theanticipated length of the Claim ConstructionHearing and a listing of any proposed percipientor expert witnesses on claim construction. For anyproposed expert testimony a summary of the opin-ions to be offered must be provided for discoverypurposes. Needless to say, this entire process maybe accomplished most easily and efficiently ifcounsel can maintain a cordial and professionalworking relationship.

Rule 4.3 provides that the parties must com-plete all discovery related to claim constructionwithin 28 days after filing the Rule 4.2 joint sub-missions discussed above. Rule 4.3 also statesthat Fed.R.Civ.P Rule 30 will apply to any depo-sitions except those of experts. Thus, the deposi-tion of any percipient witness (such as an inven-tor) would normally be limited to one day of sevenhours absent prior agreement of the parties or

18


relief from the Court. Rule 4.2 apparently con-templates that expert witnesses used in the claimconstruction process may be deposed as part ofthe claim construction discovery and laterdeposed on any substantive factual issues suchas infringement and validity after the service ofRule 26 expert reports. Although not directlyaddressed by the Patent Local Rules, asking theCourt to schedule the due dates for the Rule 26exchange of expert reports to a reasonable timeafter the Court issues its Claim ConstructionRuling may reduce expenses and improve effi-ciency. By doing so, the expert witnesses canapply the claim constructions decided by theCourt in their substantive factual opinions andavoid having to assume certain constructionsbeforehand and later amend their reports.

Rule 4.4 governs the claim construction brief-ing, and provides for the simultaneous exchangeof opening and responsive briefs and supportingevidence. Given all the prior exchanges, thereshould be little surprise by the time the briefs areserved. To reduce expenses and improve efficien-cy, the parties may choose to agree on submissionof a joint appendix containing at least the patentfile histories and cited references, as these docu-ments are often voluminous. The Court may alsoprefer to receive these materials in electronicform for ease of handling and review.

Finally, Rule 4.5 provides that the Court mayconduct a Claim Construction Hearing if theCourt believes a hearing is necessary on any par-ticular issues. Presumably the Court may alsodecide whether it wants to hear live testimonyfrom any of the proposed witnesses, or just argu-ment of counsel. The Court may also request atutorial on the underlying technology that mayoccur before, or on the date of, the hearing.

Although the Patent Local Rules add someprocedural complexity to already complexpatent cases, there is little doubt that having aspeedy and efficient process leading to the criti-cal claim construction ruling should result infaster and better resolution of patent cases inthe long run. ▲

organizations. The San Diego County BarAssociation is a non-voting advisory adjunct tothe committee’s deliberations.

The annual venue for the Broderick Awardpresentation is the Red Boudreau Dinner, withthe financial beneficiary being the St. Vincent dePaul Village established by Father Joe Carroll.Vince has served as Chairman of St. Vincent dePaul’s Board of Directors (1995-2001) and cur-rently is serving as co-chair of its capital cam-paign (2001 to present). ▲

Vince BartolottaContinued from page 3

Articles of Interest from RecentABTL Newsletters

Northern California

Increasing The Likelihood of Success onSummary Judgment Motions by the Hon.Beth L. Freeman

Using An Employer’s Email: Attorney-Client Privilege Issues by Tyler G. Newby

Los Angeles

What Lawyers Must Do To Block TheSplit by Thomas J. McDermott, Jr.

Is Anything Left of Abuse of Process AfterRusheen v. Cohen? by Eve M. Coddon

“Settlement Is An Exercise In Doubt”:Strategic Settlement Advocacy by RobertA. Steinberg

Keep It Simple: How Really SmartLitigators Get Bogged Down and OffMessage In The Courtroom And What ToDo About It by Natalie N. Adams andHeather R. Barber

Employers Beware Of The Squeaky Wheelby Michelle Lee Flores

The Iron Curtain: Protection FromPersonal Liability? By Elsa Horowitz

19

A Business and Real Estate Litigation Boutique RepresentingClients In, Among Other Matters, Controversies

Involving Governmental Entities

MAZZARELLA CALDARELLI LLP550 WEST “C” STREET, SUITE 700

PH 619-238-4900 San Diego, CA 92101 FAX 619-238-4959

WHO SAYS YOU CAN’TFIGHT CITY HALL?

WHO SAYS YOU CAN’TFIGHT CITY HALL?

OFFICERSMaureen F. Hallahan, President • Hon. Jan M. Adler, Vice President • Robin A. Wofford, Treasurer

Ed Gergosian, Secretary • Thomas E. Egler, Program Chair • Susan W. Christison, Executive DirectorPAST PRESIDENTS

Mark C. Mazzarella 1992-1994 • Michael Duckor 1994-1996 • Peter H. Benzian 1997 • Hon. Ronald L. Styn 1998Claudette G. Wilson 1999 • Meryl L. Young 2000 • Alan Schulman 2001 • Howard E. Susman 2002 • Hon. J.

Richard Haden 2003 • Frederick W. Kosmo, Jr. 2004 • Charles V. Berwanger 2005BOARD OF GOVERNORS

Hon. Jan M. Adler • Katherine A. Bacal • Brian L. Behmer • Fred Berretta • Charles V. BerwangerTheresa M. Brehl • John T. Brooks • William J. Caldarelli • Mary C. Dollarhide • Thomas E. Egler

Hon. John S. Einhorn • Hon. Irma Gonzalez • Maureen F. Hallahan • Patricia P. Hollenbeck • Hon. Joan K. IrionMarisa Janine-Page • Charles G. LaBella • Dan Lamb • Craig R. McClellan • Hon. William McCurine, Jr.

Monty A. McIntyre • Hon. M. Margaret McKeown • Hon. Thomas Nugent • Jeffrey R. Patterson • Anna RoppoHon. Dana M. Sabraw • Hon. Janis Sammartino • Daniel S. Silverman • Dennis Stewart • J. William VanDeWeghe, Jr.

Edward D. Vogel • Kent Walker • Hon. Howard Wiener (Ret.) • Kristine L. Wilkes • Mark C. ZebrowskiEMERITUS BOARD MEMBERS

William S. Boggs • Hon. Peter W. Bowie • Luke R. Corbett • Charles H. Dick • Hon. Irma E. GonzalezHon. Judith L. Haller • Hon. William J. Howatt, Jr. • Hon. J. Lawrence Irving (Ret.) • Hon. Ronald L. Johnson (Ret.)

Hon. Arthur W. Jones (Ret.) • Michael L. Kirby • Michael L. Lipman • Hon. Jeffrey T. Miller • Abby B. SilvermanRobert G. Steiner • William F. Sullivan • Reg A. Vitek • Michael J. Weaver • Shirli F. Weiss

PRSRT STDU.S. Postage

PAIDPermit #51

San Diego, CA

The views and opinions expressed in this newsletter aresolely those of the authors. While these materials areintended to provide accurate and authoritative informationin regard to the subject matter covered, they are designedfor educational and informational purposes only. Nothingcontained herein is to be construed as the rendering oflegal advice for specific cases, and readers are responsi-ble for obtaining such advice from their own legal counsel.Use of these materials does not create an attorney-clientrelationship between the user and the author.

Editor: Alan M. Mansfield (858) 348-1005Editorial Board:

Erik Bliss, John T. Brooks, Robert Gralewski,and Shannon Petersen.

©2006 Association of Business Trial Lawyers-San Diego.All rights reserved.

P.O. Box 16946San Diego, CA 92176-6946

volume xiii no. 3 fall 2006 report - abtlabtl.org/report/sd/abtl-report-fall-2006.pdf · volume...

Documents