Local Rule LPR 1-8: DISCLOSURE OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY CONTENTIONS

LPR 1-8. DISCLOSURE OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY CONTENTIONS

(a) Not later than 45 days after service upon it of the "Disclosure of Asserted Claims and Infringement Contentions," each party opposing a claim of patent infringement must serve on all parties its "Disclosure of Non-Infringement, Invalidity, and Unenforceability Contentions."

(b) The "Disclosure of Non-Infringement, Invalidity, and Unenforceability Contentions" must contain the following information:

(1) Separately for each asserted claim, a chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including any contention that a limitation is absent, or, if the opposing party contends that the claim is not infringed, an identification of each element that is not present in the Accused Instrumentality;

(2) Each item of prior art that allegedly anticipates each asserted claim or renders it obvious. Each prior art patent must be identified by its number, country of origin, and date of issue. Each prior art publication must be identified by its title, date of publication, and, where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) must 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 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(f) must 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) must 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);

(3) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified;

(4) A chart identifying where specifically in each item of prior art 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 the item of prior art that performs the claimed function; and

(5) Any grounds of invalidity based on 35 U.S.C. § 101, 112, or 251.