Local Rule 3-5: Disclosure Requirement in Patent Cases for Declaratory Judgment

3-5. Disclosure Requirement in Patent Cases for Declaratory Judgment.

(a) Invalidity Contentions If No Claim of Infringement. In all cases in which a party files a complaint or other pleading seeking a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable, Local Patent R. 3-1 and 3-2 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant in such a declaratory judgment lawsuit does not assert a claim for patent infringement in responding to the complaint, no later than 14 days after the defendant serves its answer, or 14 days after the initial Rule 16 Scheduling Conference, whichever is later, the party seeking a declaratory judgment of invalidity (on that basis alone or among other bases) must serve upon each opposing party its Preliminary Invalidity Contentions that conform to Local Patent R. 3-3 and produce or make available for inspection and copying the documents described in Local Patent R. 3-4. The parties shall meet and confer within 14 days of service of the Preliminary Invalidity Contentions for the purpose of determining the date on which the plaintiff will file its Final Invalidity Contentions, which shall be no later than 49 days after filing by the Court of its Claim Construction Ruling.

(b) Inapplicability of Rule. This Local Patent R. 3-5 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed, is invalid, or is unenforceable is filed in response to a claim alleging infringement of the same patent.