Not later than sixty (60) days after service upon it of the “Disclosure of Asserted Claims and Infringement
Contentions,” each party opposing a claim of patent infringement must serve on all parties its Invalidity
Contentions, which must contain the following information:
a. The identity of each item of prior art that allegedly anticipates each asserted claim or renders it
obvious. This includes information about any alleged knowledge or use of the invention in this
country prior to the date of invention of the patent. Each prior art patent must be identified by its
number, country of origin, and date of issue. Each prior art publication must be identified by its title,
date of publication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) must
be identified by specifying the item offered for sale or publicly used or known, the date the offer or
use took place or the information became known, and the identity of the person or entity that made
the use or that made and received the offer, or the person or entity that made the information known
or to whom it was made known. Prior art under 35 U.S.C. § 102(f) must be identified by providing
the name of the person(s) from whom and the circumstances under which the invention or any part of
it was derived. Prior art under 35 U.S.C. § 102(g) must be identified by providing the identities of the
person(s) or entities involved in and the circumstances surrounding the making of the invention
before the patent applicant(s);
b. Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is
alleged, an explanation of why the prior art renders the asserted claim obvious, including an
identification of any combinations of prior art showing obviousness;
c. A chart identifying where specifically in each alleged item of prior art each element of each asserted
claim is found, including for each element that such party contends is governed by 35 U.S.C. §
112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the
claimed function;
d. Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) of any of the asserted
claims;
e. Any grounds of invalidity based on lack of written description, lack of enabling disclosure, or failure
to describe the best mode under 35 U.S.C. § 112(1).
