Not later than twenty-eight (28) days after service upon it of the “Disclosure of Non-
Infringement and Invalidity Contentions”, each party defending the validity of the patent shall serve
on all parties its “Responses to Invalidity Contentions” which must include a response to each
Invalidity Contention set forth under Loc. Pat. R. 3.3 including the following:
(a) If asserted by the party asserting invalidity, a response to whether the first to file
provision of the AIA applies to each asserted claim;
(b) For each item of asserted prior art, the identification of each limitation of each asserted
claim that the party believes is absent from the prior art, except for design patents, where the party
shall supply an explanation why the prior art does not anticipate the claim;
(c) If obviousness is alleged, an explanation of why the prior art does not render the
asserted claim obvious;
(d) The party’s responses shall follow the order of the invalidity chart required under Loc.
Pat. R. 3.3(b)(4) and (c), and shall set forth the party’s agreement or disagreement with each allegation
therein and the written basis thereof; and
(e) A response to each ground of invalidity asserted under Loc. Pat. R. 3.3(b)(5).
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