United States District Court, Western District of Tennessee
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Local Patent Rules - Western District of Tennessee
A party may not object to discovery on the ground that it conflicts with or is premature
under these Local Patent Rules, except to the following categories of requests and disclosures:
(a) Requests for a party’s claim construction position;
(b) Requests for the same information required to be disclosed under Local Patent
Rules 3.1-3.7; and
(c) Requests that an accused infringer identify whether it intends to rely upon the
opinion(s) of counsel as a defense against an allegation of willful infringement.
Federal Rule of Civil Procedure 26(e)’s requirements concerning the supplementation of
disclosure and discovery responses apply to all disclosures required under these Local Patent
Rules.
Parties may use stipulations provided for in Rule 29, if otherwise compliant with that Rule,
to modify time periods or formats for service of contentions, production of documents, or
other exchanges or information prescribed in these Local Patent Rules or a Scheduling Order
entered pursuant hereto, and are not items required to be filed with the Court, provided that
such modifications do not interfere with deadlines for Court filings or dates for Court
proceedings such as the Claim Construction Hearing. Such stipulations need not be filed in
the action, but no stipulation will be enforced by the Court unless memorialized between
counsel.
III. PATENT DISCLOSURES
3.1. Initial Infringement Contentions
Within 21 days after the Initial Response is filed, and after consultation with each
opposing party to identify and narrow the issues presented, a party claiming patent infringement
shall serve on all parties Initial Infringement Contentions, which shall contain at least 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 subsection(s) of 35 U.S.C.
§ 271 (“Infringement of Patent”) asserted;
(b) Separately for each asserted claim, each Accused Instrumentality that each party
claiming infringement contends infringes, including the name or model number if
known;
(c) A chart identifying specifically where each limitation of each asserted claim is
found within each Accused Instrumentality, including for each limitation that
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such party contends is governed by 35 U.S.C. § 112, ¶ 6, the identity of the
corresponding structure and function and where such structure and function is
found in the Accused Instrumentality;
(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(s) that contribute to or that are inducing direct infringement, including a
description of the role of each relevant party if direct infringement is based on the
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Local Patent Rules - Western District of Tennessee
joint acts of multiple parties;
(e) 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; and
(g) If a party claiming patent infringement alleges willful infringement, the basis for
such allegation.
3.2. Document Production Accompanying Initial Infringement Contentions
With the Initial Infringement Contentions, the party claiming patent infringement shall
produce to each opposing party or make available for inspection and copying:
(a) All documents concerning any disclosure, sale or transfer, or offer to sell or
transfer of the claimed invention prior to the bar date under 35 U.S.C. § 102(b)
and/or the date of invention for the patent in suit;
(b) All documents evidencing the conception and first reduction to practice of each
claimed invention created on or before the date of application for the patent in suit
or the priority date identified pursuant to LPR 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) and any patent(s) or application(s) to which each
patent in suit claims priority; and
(d) All documents evidencing ownership of the patent rights by the party asserting
patent infringement.
Nothing in these required disclosures shall be considered an admission that such
disclosures are prior art or evidence of prior art under 35 U.S.C. §§ 102 or 103.
3.3. Initial Non-infringement Contentions
Within 28 days after service of the Initial Infringement Contentions, each party opposing
a claim of patent infringement shall serve on all parties Non-infringement Contentions, which
shall contain the following information:
(a) A chart, responsive to the chart required by LPR 3.1(c), that identifies as to each
identified element in each asserted claim (1) whether such element is present
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Local Patent Rules - Western District of Tennessee
literally or under the doctrine of equivalents in each Accused Instrumentality and,
if not, the reason for such denial and the relevant distinctions, and (2) for each
limitation that such party contends is governed by 35 U.S.C. § 112, ¶6, the
corresponding structure and function, (if different from that identified in LPR
3.1(c)), whether or not such structure and function are found in the Accused
Instrumentality, and/or any basis for claiming that such limitation is invalid for
indefiniteness; and
(b) A statement that the proper parties have been served or, if the proper parties have
not been served, a statement identifying the proper parties to the extent they are
known.
3.4. Document Production Accompanying Initial Non-infringement Contentions
With its Non-infringement Contentions, the party opposing a claim of patent
infringement shall produce or make available for inspection and copying:
(a) Documents sufficient to support the statement(s) made in the chart required by
LPR 3.3(a);
(b) Documents sufficient to evidence the actual parties that make and sell the
Accused Instrumentality or any other documents sufficient to support the
statement(s) made in response to LPR 3.3(b); and
(c) Documents sufficient to describe the structure, composition, and/or operation of
the Accused Instrumentality.
3.5. Invalidity and Unenforceability Contentions
Within 90 days after the Initial Response is filed, and after consultation with each
opposing party to identify and narrow the issues presented, each party asserting that a claim of a
patent is invalid or unenforceable shall serve on all parties its Invalidity and Unenforceability
Contentions, which shall contain at least the following information:
(a) 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 that made the
use or that made and received the offer, or the person or entity that made the
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Local Patent Rules - Western District of Tennessee
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);
(b) Whether each item of prior art anticipates each asserted claim or renders it
obvious under 35 U.S.C. §§ 102 or 103. 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;
(c) For each alleged item of prior art, a chart identifying specifically where 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;
(d) Any grounds of invalidity based on 35 U.S.C. §§ 102 or 103, including invalidity
contentions based on written description, enablement, indefiniteness, and/or best
mode; and
(e) The grounds for any charge that any of the asserted claims are unenforceable for
inequitable conduct, including the identification of any information alleged to
have been withheld, misstated, or otherwise misrepresented to the United States
Patent Office; the basis for claiming such information was material to
patentability; and the basis for claiming that the patentee withheld, misstated, or
misrepresented such information with the requisite intent.
3.6. Document Production Accompanying Invalidity and Unenforceability Contentions
With its Invalidity and Unenforceability Contentions, any party opposing a claim of
patent infringement shall produce or make available for inspection and copying:
(a) A copy or sample of the prior art identified pursuant to LPR 3.5(a). 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 which documents correspond to each invalidity category; and
(b) All documents supporting any statement(s) made in response to LPR 3.5(e).
