With the Disclosure of Asserted Claims and Infringement Contentions, the party claiming
patent infringement shall 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, or any
public use of, 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 3.1(f), whichever is earlier;
(c) A copy of the file history for each patent in suit (or so much thereof as is in the
possession of the patentee);
(d) All documents evidencing ownership and maintenance of the patent rights by the
party asserting patent infringement; and
(e) If a party identifies instrumentalities pursuant to Local Patent Rule 3.1(g),
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 which documents
correspond to each category.
