With the “Disclosure of Asserted Claims and Preliminary Infringement
Contentions,” the party claiming patent infringement must produce to each
opposing party or make available for inspection and copying:
(a) Documents (e.g., contracts, purchase orders, invoices, advertisements,
marketing materials, offer letters, beta site testing agreements, and third
party or joint development agreements) sufficient to evidence each
discussion with, disclosure to, or other manner of providing to a third
party, or sale of or offer to sell, the claimed invention prior to the date of
application for the patent in suit. A party's production of a document as
required herein shall not constitute an admission that such document
evidences or is prior art under 35 U.S.C. § 102;
(b) All documents evidencing the conception, reduction to practice, design,
and development of each claimed invention, which were created on or
before the date of application for the patent in suit or the priority date
identified pursuant to Local Patent Rule 303.1(e), whichever is earlier;
(c) A copy of the file history for each patent in suit; and
January 2019 Return to Table of Contents
Local Patent Rules – U.S. District Court for the Eastern District of North Carolina Page 8
(d) Documents evidencing a party’s standing (e.g., a written assignment) to
bring a claim or claims of alleged infringement of the patent or patents in
suit.
The producing party shall separately identify by production number which
documents correspond to each category.
