(a) Each party opposing a claim of patent infringement, and each
party seeking a declaratory judgment of patent invalidity, shall serve on all
parties its Disclosure of Invalidity Contentions at the time specified in these
rules, which shall contain the following information:
(1) The identity of each item of prior art that allegedly
anticipates each asserted claim or renders it obvious.
(i) Prior art under 35 U.S.C. § 102(b) shall 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 which made the use or which made and received the
offer, or the person or entity which made the information
known or to whom it was made known.
(ii) Prior art under 35 U.S.C. § 102(f) shall be
identified by providing the name of the person(s) or entity(ies)
from whom and the circumstances under which the invention or
any part of it was derived.
(iii) Prior art under 35 U.S.C. § 102(g) shall be
identified by providing the identities of the person(s) or
entity(ies) involved in and the circumstances surrounding the
making of the invention before the patent applicant(s);
(2) For each item of prior art disclosed, whether each item of
prior art anticipates each asserted claim or renders it obvious. If the
PR-8
disclosing party contends that a combination of items of prior art
makes a claim obvious, each such combination, and the motivation to
combine such items, shall be identified.
(3) A chart identifying where specifically in each alleged
item of prior art each element of each asserted claim is found;
(4) Any grounds of invalidity based on any applicable
provision of 35 U.S.C. § 112.
(b) The Disclosure shall include a copy of each item of prior art
identified in the Disclosure comprising a printed publication if such item of
prior art does not appear in the file history of the patent(s) at issue. To the
extent any such item is not in English, an English translation of the
portion(s) relied upon shall be produced.
