Local Rule 3-2: Document Production Accompanying Disclosure of Asserted Claims and Preliminary Infringement Contentions

3-2. Document Production Accompanying Disclosure of Asserted Claims and Preliminary Infringement Contentions.

With the Disclosure of Asserted Claims and Preliminary Infringement Contentions, the Patent Claimant must produce to each Alleged Infringer or make available for inspection and copying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third party or joint development agreements) sufficient to evidence any disclosure, offer to sell, or sale of any item embodying, practicing, or resulting from the practice of the claimed invention before the date of application for the patent(s)-in-suit or any date identified pursuant to Local Patent R. 3-1(vi), whichever is earlier. A party's production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;

(b) With respect to patents that are not governed by the AIA, but instead are governed by the pre-AIA patent statute, documents evidencing the priority date identified pursuant to Local Patent R. 3-1(vi); and

(c) A copy of the file history for each patent-in-suit;

(d) All documents concerning ownership of the patent rights by the Patent Claimant, including documents sufficient to evidence the chain of title of the patent(s)-in-suit;

(e) Copies of any patent license or any other agreement purporting to transfer rights relating to the patent(s)-in-suit;

(f) If a Patent Claimant identifies instrumentalities under Local Patent R. 3-1(a)(vii), documents sufficient to show (i) the operation of any aspects or elements of each such instrumentality and (ii) the marking of such instrumentalities under 35 U.S.C. § 287(a); and

(g) All documents comprising or reflecting a F/RAND commitment or agreement with respect to the patent(s)-in-suit. The Patent Claimant shall separately identify by production number which documents correspond to each of the above categories. The Patent Claimant shall timely supplement document production under this Local Patent R. 3-2 as required by the Federal Rules of Civil Procedure; however, the act of supplementation does not of itself permit amendment of the Patent Claimant's Disclosure of Asserted Claims and Preliminary Infringement Contentions, which amendment shall instead be governed by Local Patent R. 3-1(b) and 3-6(a).