(a) Preliminary Infringement Contentions. Not later than forty-five (45) days after
filing of the last answer, a party claiming patent infringement shall serve on all parties its
“Preliminary Infringement Contentions.” The “Preliminary Infringement Contentions”
shall include an infringement claim chart for each accused product or process (“Accused
Instrumentality”). However, if certain Accused Instrumentalities have the same relevant
characteristics, they can be grouped together in the same chart.
(1) Each claim chart shall contain the following contentions:
(A) Each claim of each patent in suit that is allegedly infringed by such
Accused Instrumentality;
(B) For each claim, an identification of the subsection(s) of 35 U.S.C. §
271 that are asserted;
(C) A specific identification of where each limitation of the claim is
found within each Accused Instrumentality, including for each limitation
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 the Accused Instrumentality that
performs the claimed function; and
(D) Whether each limitation of each asserted claim is alleged to be
literally present or present under the doctrine of equivalents in the
Accused Instrumentality.
(2) In addition to the claim chart(s), the “Preliminary Infringement Contentions”
shall also include the following contentions:
(A) For each claim which is alleged to have been indirectly infringed, an
identification of any direct infringement, the identity of the known direct
infringer(s), and a description of the acts of the alleged indirect infringer
that contribute to or are inducing that direct infringement;
(B) To the extent that the alleged direct infringement is based on joint acts
of multiple parties, the identity of each such party and the role of each
such party in the direct infringement;
(C) For any patent that claims priority to an earlier application, the
priority date to which each asserted claim allegedly is entitled; and
(D) If a party claiming patent infringement wishes to preserve the right to
rely, for any purpose, on the assertion that it practices (or practiced) the
claimed invention, the party shall identify, separately for each asserted
claim, each such apparatus, product, device, process, method, act, or other
instrumentality that practices (or practiced) that particular claim, and the
date(s) that the party began and (if completed) ended such practicing of
the claimed invention.
(b) Document Production Accompanying Preliminary Infringement
Contentions.
With the Preliminary Infringement Contentions, the party asserting patent infringement
shall produce to each opposing party or make available for inspection and copying:
(1) 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, or any public use of, the claimed invention prior to the date of application for
each 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;
(2) 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 each patent in suit or the priority date identified pursuant to SPR
5.1(a), whichever is earlier;
(3) A copy of the file history for each patent in suit;
(4) All documents evidencing ownership of the patent rights by the party
asserting patent infringement; and
(5) If a party identifies its own practicing instrumentalities pursuant to SPR
5.1(a), documents sufficient to show the operation of any aspects or elements of
such instrumentalities the patent claimant relies upon as embodying any asserted
claims.
The producing party shall separately identify by production number(s) which documents
correspond to each category.
(c) Preliminary Invalidity Contentions. Not later than forty-five (45) days after
service of the Preliminary Infringement Contentions, each party opposing a claim of
patent infringement shall serve on all parties its “Preliminary Invalidity Contentions,”
which shall contain the following contentions:
(1) 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 shall be
identified by its title, date of publication, and where feasible, author and
publisher. 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. 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. 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);
(2) Whether each item of prior art anticipates each asserted claim or renders it
obvious and, if obviousness is alleged, an explanation of why the prior art renders
the asserted claim obvious, including an identification of combinations of prior art
showing obviousness, and an explanation of why a person of skill in the art would
find obvious the asserted claim(s) in light of such combinations (e.g., reasons for
combining references);
(3) A chart (or charts) identifying where specifically in each alleged item of prior
art each limitation of each asserted claim is found, including for each limitation
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; and
(4) Any other asserted grounds of invalidity of any asserted claim(s), including
contentions based on 35 U.S.C. § 101 or 35 U.S.C. § 112.
(d) Document Production Accompanying Preliminary Invalidity Contentions.
With the Preliminary Invalidity Contentions, the party opposing a claim of patent
infringement shall produce or make available for inspection and copying:
(1) Documents sufficient to show the operation of any aspects or elements of an
Accused Instrumentality identified by the patent claimant in its SPR 5.1(a)
chart(s); and
(2) A copy or sample of the prior art identified pursuant to SPR 5.1(c) which
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.
The producing party shall separately identify by production number(s) which documents
correspond to each category.
(§ (a) amended 12/1/21)
