Not later than fourteen (14) days after the initial Rule 16 Conference, a party claiming
patent infringement shall serve on all parties a Disclosure of Asserted Claims and Infringement
Contentions. Separately for each opposing party, the Disclosure of Asserted Claims and
Infringement Contentions shall contain the following information:
(a) Each claim of each patent in suit that is allegedly infringed by each opposing
party, including for each claim the applicable statutory subsections of 35 U.S.C. §
271 asserted;
(b) Separately for each asserted claim, each accused apparatus, product, device,
process, method, act, design, variety of plant or other instrumentality (“Accused
Instrumentality”) of each opposing party of which the party is aware. This
identification shall be as specific as possible. Each product, device, design,
variety of plant and apparatus shall be identified by name or model number, if
known. Each method or process shall be identified by name, if known, or by any
product, device, or apparatus which, when used, allegedly results in the practice
of the claimed method or process;
(c) (1) Except for design or variety of plant patent claim(s), a chart identifying
specifically where each limitation of each asserted claim is found within
each Accused Instrumentality, including for each limitation that such party
contends is governed by 35 U.S.C. § 112(f), the identity of the
structure(s), act(s), or material(s) in the Accused Instrumentality that
performs the claimed function;
(2) For each design patent or variety of plant patent claim that is alleged, a
chart displaying each view of the design or variety of plant patent
drawings and a view of the accused design or variety of plant from every
available angle for all embodiments.
(d) For each claim that is alleged to have been indirectly infringed, an identification
of any direct infringement and a description of the acts of the alleged indirect
infringer that contribute to or are inducing that direct infringement. Insofar as any
alleged direct infringement is based on joint acts of multiple parties, the role of
each such party in the direct infringement must be described;
(e) Except for design or variety of plant patent claims(s), whether each limitation of
each asserted claim is alleged to be literally present or present under the doctrine
of equivalents in the Accused Instrumentality;
(f) For any patent that claims priority to an earlier application, the priority date to
which each asserted claim allegedly is entitled;
(g) If a party claiming patent infringement wishes to preserve the right to rely, for any
purpose, on the assertion that its own apparatus, product, device, process, method,
act, or other instrumentality practices the claimed invention, the party shall
identify, separately for each asserted claim, each such apparatus, product, device,
process, method, act, or other instrumentality that incorporates or reflects that
particular claim; and
(h) If a party claiming patent infringement alleges willful infringement, all known
bases for such allegation. A party claiming willful infringement shall be
permitted to supplement its response to this subsection at or prior to the close of
fact discovery, if necessary, to add facts developed through pretrial discovery.
