Local Rule L.P.R. 3-1: Preliminary Disclosures

N.D. Ind. L.P.R. 3-1 Preliminary Disclosures

(a) Preliminary Infringement Contentions. Within 28 days after the last answer is filed, a party claiming patent infringement must serve on all parties its preliminary infringement contentions.

(b) Content. The preliminary infringement contentions must include an infringement-claim chart for each accused product or process (the accused instrumentality). If two or more accused instrumentalities have the same relevant characteristics, they may be grouped together in the same chart. Each claim chart must contain the following contentions:

(1) Each claim of each patent in suit that is allegedly infringed by the accused instrumentality;

(2) A specific identification of where each limitation of the claim is found within each accused instrumentality, including for each limitation that the party contends is governed by 35 U.S.C. § 112(f), the identity of the structures, acts, or materials in the accused instrumentality that performs the claimed function; and

(3) Whether each limitation of each asserted claim is literally present in the accused instrumentality or present under the doctrine of equivalents.

(c) Document Production. The party asserting patent infringement must produce to each party (or make available for inspection and copying) the following documents with its preliminary infringement contentions and identify—by production number—which documents correspond to each category:

(1) Documents demonstrating each disclosure, sale (or offer to sell), or any public use, of the claimed invention before the application date for each patent in suit or the priority date (whichever is earlier);

(2) All documents that were created on or before the application date for each patent in suit or the priority date (whichever is earlier) that demonstrate each claimed invention's conception and earliest reduction to practice;

(3) A copy of the certified Patent Office-file history for each patent in suit; and

(4) All documents demonstrating ownership of the patent rights by the party asserting infringement.

(d) Safe Harbor. Producing documents under this rule is not an admission that the document is – or constitutes – prior art under 35 U.S.C. § 102.

(e) Preliminary Invalidity Contentions. Within 28 days after receiving the preliminary infringement contentions, each party opposing the patent-infringement claim must serve on all parties its preliminary invalidity contentions. These contentions must include a chart (or charts) identifying each allegedly invalid claim, and each item of prior art that anticipates or renders each claim obvious. Claim charts must contain the following contentions:

(1) How and under what statutory section the item qualifies as prior art,

(2) Whether the prior-art item anticipates or renders each allegedly invalid claim obvious,

(3) A specific identification of where in the prior-art item each limitation of each allegedly invalid claim is found, including for each limitation alleged to be governed by 35 U.S.C. § 112(f), where the corresponding structures, acts, or materials are found in the prior-art item that performs the claimed function, and

(4) Why, if obviousness is alleged, the prior art renders the allegedly invalid claims obvious, including why combining the identified items of prior art demonstrate obviousness, and explain why a person of skill in the art would find the allegedly invalid claims obvious in light of such combinations (e.g., reasons for combining references).

(5) A statement identifying with specificity any other asserted grounds of invalidity of any allegedly invalid claims, including contentions based on 35 U.S.C. §§ 101, 112, or 251.

(f) Document Production. The party opposing a patent-infringement claim must produce to all parties (or make available for inspection and copying) the following documents with its preliminary invalidity contentions. The producing party must separately identify by production number which documents correspond to which category.

(1) Documents sufficient to show the operation of any aspects or elements of an accused instrumentality identified by the patent claimant in its preliminary infringement contentions charts; and

(2) A copy or sample of the prior art identified under N.D. Ind. L.P.R. 3(e). If these items are not in English, an English translation of the portions relied upon must be produced.

(g) Declaratory-judgment Actions. The same disclosure process (including the same disclosure sequence) applies in declaratory-judgment actions in which the plaintiff is asserting non-infringement, invalidity, or unenforceability of the patent(s) in suit. For example, in such actions the defendant-patentee will assert preliminary infringement contentions under the schedule set out above. If infringement is not contested, the parties seeking a declaratory judgment must comply with N.D. Ind. L.P.R. 3-1(c) and 3-1(f) within 28 days after the last answer is filed.