Local Rule 3-3: Preliminary Invalidity Contentions

3-3. Preliminary Invalidity Contentions.

Not later than 49 days after service upon it of the Disclosure of Asserted Claims and Preliminary Infringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Invalidity Contentions, which must contain the following information:

(a) The identity of each item of prior art, including patents, printed publications, prior public use, and prior on sale activity, that allegedly anticipate(s) each asserted claim or render(s) it obvious. Each prior art patent shall be identified by its number, country of origin, and date of issuance. Each prior art publication must be identified by its title, date of publication, and where feasible, author and publisher. Each alleged sale or public use 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 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. For pre-AIA claims, 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. For pre-AIA claims, prior art under 35 U.S.C. § 102(g) shall be identified by providing the identity of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);

(b) On a claim-by-claim basis, 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 basis for such allegation, must be identified;

(c) A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, 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 each item of prior art that performs the claimed function; and

(d) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(b) or enablement or written description under 35 U.S.C. § 112(a) of any of the asserted claims.