Not later than thirty (30) days after service upon it of the Disclosure of Asserted Claims
and Infringement Contentions, each party opposing a claim of patent infringement on the basis of
non-infringement, patent invalidity or patent unenforceability shall serve on all parties its
Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions which shall
contain the following information:
(a) Non-Infringement contentions shall contain a chart, responsive to the chart
required under Local Patent Rule 3.1(c)(i), that identifies as to each limitation in
each asserted claim disclosed in the patentee’s claim chart, to the extent then
known by the party alleging infringement, whether such element is present
literally or under the doctrine of equivalents in each Accused Instrumentality and,
if not, the reason for such denial and the relevant distinctions, and a chart,
responsive to the chart required under Local Patent Rule 3.1(c)(ii), that displays a
view from each angle of the accused design or variety of plant and of all
embodiments and stating whether the accused design or variety of plant is
substantially similar to the claimed design or variety of plant and, if not, the
reasons for such a denial.
(b) Invalidity Contentions must contain the following information to the extent then
known to the party asserting invalidity:
(1) The identity of each item of prior art that allegedly anticipates each
asserted claim or renders it obvious, including in the case of a design or
variety of plant patent a view from every available angle and all available
embodiments. 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(d) 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, the location
where the item was sold or publicly used, 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(d) 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(d) 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. If obviousness is alleged, an explanation of why the prior art
renders the asserted claim obvious, including an identification of any
combinations of prior art showing obviousness, the reason why one of
ordinary skill in the art would have combined the references at the time of
the invention in issue in the case, and identification of what the accused
considers to be the primary reference.
(3) A chart identifying where specifically in each alleged item of prior art
each limitation or view of each asserted claim is found, and for utility
patents, 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 each item of prior art that performs the claimed function; and
(4) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under
35 U.S.C. § 112 (b) or enablement or written description under 35 U.S.C.
§ 112(a) of any of the asserted claims.
(c) Subject to amendment in the event of later discovered facts, unenforceability
contentions shall contain, in detail, each ground then known upon which the
accused infringer will assert that any patent in suit is unenforceable. If the
accused infringer’s claim of unenforceability is based upon inequitable conduct,
the accused infringer shall describe each omission or misrepresentation made to
the Patent and Trademark Office (“PTO”) and shall state all grounds upon which
the accused infringer will argue at trial that those prosecuting the patent intended
to deceive the PTO, including the identification of any prior art references not
disclosed to the PTO during the prosecution of the patent in suit, any facts
suggesting that one or more persons substantially involved in the prosecution of
the patent in suit were aware of such prior art reference prior to the issuance of the
patent in suit, and any facts relevant to the element of intent to deceive.
