Local Rule 3-1: Disclosure of Asserted Claims and Preliminary Infringement Contentions

3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions.

(a) Not later than 21 days after the initial Rule 16 Scheduling Conference, a Patent Claimant must serve on all parties a Disclosure of Asserted Claims and Preliminary Infringement Contentions. Separately for each Alleged Infringer, the Disclosure of Asserted Claims and Preliminary Infringement Contentions shall contain the following information:

(i) Each claim of each patent-in-suit that is allegedly infringed by each Alleged Infringer;

(ii) Separately for each asserted claim, a specific identification of each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each Alleged Infringer of which the party is aware. Each product, device, and apparatus must be identified by name or model number, if known. Each method or process must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;

(iii) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element 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 the Accused Instrumentality that performs the claimed function;

(iv) Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality. For any claim under the doctrine of equivalents, the Patent Claimant must provide a preliminary identification of each function, way, and result that is allegedly equivalent and why any differences are not substantial;

(v) For each claim that is alleged to be indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. If the alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described;

(vi) Whether the asserted patent(s) is subject to the America Invents Act ("AIA") or the pre-AIA patent statute. For any patent subject to the AIA, Patent Claimant must identify the earliest effective filing date to which each asserted claim is allegedly entitled and the basis for this date. For any patent subject to the pre-AIA patent statute, the Patent Claimant must identify the priority date to which each asserted claim allegedly is entitled and the basis for this date;

(vii) If a Patent Claimant wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, it must identify and produce documents sufficient to show, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim; and

(viii) In patent cases arising under 21 U.S.C. § 355, at or before the initial Rule 16 Scheduling Conference, the Alleged Infringer shall produce to the Patent Claimant the entire Abbreviated New Drug Application or New Drug Application that is the basis of the case. The Court recognizes that, in cases brought under 21 U.S.C. § 355, scheduling and sequencing provisions distinct from those set forth in these Local Patent Rules may be appropriate.

(b) Not later than 28 days after service upon it of documents accompanying the Preliminary Invalidity Contentions pursuant to Rule 3-4 below, a Patent Claimant may amend its Disclosure of Asserted Claims and Preliminary Infringement Contentions if the Patent Claimant believes in good faith that the documents produced by the Alleged Infringer necessitate such an amendment. The Patent Claimant shall serve on the Alleged Infringer a Notice of Amended Preliminary Infringement Contentions, including a statement of reasons why the Patent Claimant believes such amendment is warranted under this subsection.