Not later than forty 45 days after service upon it of the “Disclosure of Asserted
Claims and Preliminary Infringement Contentions,” each party opposing a claim of
patent infringement, shall serve on all parties its “Preliminary Invalidity
Contentions.”
(a) Invalidity Contentions must contain the following information:
(1) An identification of each statutory section and subsection, where
applicable, relied upon for any assertion of invalidity;
(2) The identity of each item of prior art that allegedly anticipates each
asserted claim or renders it obvious. Each prior art patent shall 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 with
respect to an item offered for sale or publicly used or known shall
specify the date and nation in which 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. In claims alleging infringement of patents
governed by the provisions of law prior to the America Invents Act,
prior art under 35 U.S.C. § 102(f) shall 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; and prior art under
35 U.S.C. § 102(g) shall 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);
(3) Whether each item of prior art anticipates each asserted claim or
renders it obvious. If a combination of items of prior art makes a
claim obvious, each such combination must be identified;
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Local Patent Rules – U.S. District Court for the Eastern District of North Carolina Page 9
(4) 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
subparagraph (6) or (f) as applicable, the identity of the structure(s),
act(s), or material(s) in each item of prior art that performs the
claimed function; and
(5) Each grounds of invalidity of any of the asserted claims based 35
U.S.C. § 101, or on indefiniteness or lack of enablement or written
description under 35 U.S.C. § 112, citing the applicable statutory
section(s) and subsection(s) thereof.
