Local Rule Rule 3 (Patent): Patent Disclosures — N.D.N.Y.

Rule 3 Patent Disclosures 3.1 Disclosure of Asserted Claims and Infringement Contentions Not later than fourteen (14) days after the initial Rule 16 Conference, a party claiming patent infringement shall serve on all parties a Disclosure of Asserted Claims and Infringement Contentions. Separately for each opposing party, the Disclosure of Asserted Claims and Infringement Contentions shall contain the following information:

(a) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted;

(b) Separately for each asserted claim, each accused apparatus, product, device, process, method, act, design, variety of plant or other instrumentality ("Accused Instrumentality") of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, design, variety of plant and apparatus shall be identified by name or model number, if known. Each method or process shall 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;

(c) (i) Except for design or variety of plant patent claim(s), a chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation 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;

(ii) For each design patent or variety of plant patent claim that is alleged, a chart displaying each view of the design or variety of plant patent drawings and a view of the accused design or variety of plant from every available angle for all embodiments.

(d) For each claim that is alleged to have been 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. Insofar as any alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described;

(e) Except for design or variety of plant patent claims(s), whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;

(f) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled;

(g) If a party claiming patent infringement 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, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim; and

(h) If a party claiming patent infringement alleges willful infringement, all known bases for such allegation. A party claiming willful infringement shall be permitted to supplement its response to this subsection at or prior to the close of fact discovery, if necessary, to add facts developed through pretrial discovery.

3.2 Document Production Accompanying Infringement Disclosure With the Disclosure of Asserted Claims and Infringement Contentions, the party claiming patent infringement shall produce to each opposing party 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 each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, or any public use of, the claimed invention prior to the date of application for the patent in suit. 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) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to Local Patent Rule 3.1(f), whichever is earlier;

(d) All documents evidencing ownership and maintenance of the patent rights by the party asserting patent infringement; and

(e) If a party identifies instrumentalities pursuant to Local Patent Rule 3.1(g), documents sufficient to show the operation of any aspects or elements of such instrumentalities the patent claimant relies upon as embodying any asserted claims.

The producing party shall separately identify by production number which documents correspond to each category.

3.3 Non-Infringement, Invalidity and Unenforceability Not later than thirty (30) days after service upon it of the Disclosure of Asserted Claims and Infringement Contentions, each party opposing a claim of patent infringement on the basis of non-infringement, patent invalidity or patent unenforceability shall serve on all parties its Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions which shall contain the following information:

(a) Non-Infringement contentions shall contain a chart, responsive to the chart required under Local Patent Rule 3.1(c)(i), that identifies as to each limitation in each asserted claim disclosed in the patentee's claim chart, to the extent then known by the party alleging infringement, whether such element is present literally or under the doctrine of equivalents in each Accused Instrumentality and, if not, the reason for such denial and the relevant distinctions, and a chart, responsive to the chart required under Local Patent Rule 3.1(c)(ii), that displays a view from each angle of the accused design or variety of plant and of all embodiments and stating whether the accused design or variety of plant is substantially similar to the claimed design or variety of plant and, if not, the reasons for such a denial.

(b) Invalidity Contentions must contain the following information to the extent then known to the party asserting invalidity:

(1) The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious, including in the case of a design or variety of plant patent a view from every available angle and all available embodiments. Each prior art patent shall be identified by its number, country of origin, and date of issue. Each prior art publication shall be identified by its title, date of publication and, where feasible, author and publisher. Prior art under 35 U.S.C. § 102(d) 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, the location where the item was sold or publicly used, 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. Prior art under 35 U.S.C. § 102(d) 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. Prior art under 35 U.S.C. § 102(d) shall be identified by providing the identities of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s);

(2) Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness, the reason why one of ordinary skill in the art would have combined the references at the time of the invention in issue in the case, and identification of what the accused considers to be the primary reference.

(3) A chart identifying where specifically in each alleged item of prior art each limitation or view of each asserted claim is found, and for utility patents, including for each limitation 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

(4) 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.

(c) Subject to amendment in the event of later discovered facts, unenforceability contentions shall contain, in detail, each ground then known upon which the accused infringer will assert that any patent in suit is unenforceable. If the accused infringer's claim of unenforceability is based upon inequitable conduct, the accused infringer shall describe each omission or misrepresentation made to the Patent and Trademark Office ("PTO") and shall state all grounds upon which the accused infringer will argue at trial that those prosecuting the patent intended to deceive the PTO, including the identification of any prior art references not disclosed to the PTO during the prosecution of the patent in suit, any facts suggesting that one or more persons substantially involved in the prosecution of the patent in suit were aware of such prior art reference prior to the issuance of the patent in suit, and any facts relevant to the element of intent to deceive.

3.4 Document Production Accompanying Non-Infringement, Invalidity and Unenforceability Disclosure With the Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying, if not previously disclosed pursuant to Fed. R. Civ. P. 26(a)(1), the following:

(a) Source code, specifications, schematics, flow charts, artwork, drawings, photographs, video or other images from every available view or other documentation sufficient to show the operation, composition, design, variety of plant or structure of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Local Patent Rule 3.1(c) chart; and

(b) A copy or sample of the prior art identified pursuant to Local Patent Rule 3.3(b) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation shall be produced. In addition, a complete translation of the document relied upon, if in the possession of the producing party, shall also be produced.

3.5 Disclosure Requirement in Patent Cases for Declaratory Judgment of Non-Infringement, Invalidity and Unenforceability

(a) Non-Infringement, Invalidity and Unenforceability 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 Rules 3.1 and 3.2 shall not apply unless and until a claim for patent infringement is made by a party. If the defendant does not assert a claim for patent infringement in its answer to the complaint, no later than fourteen (14) days after the defendant serves its answer or fourteen (14) days after the Initial Rule 16 Conference, whichever is later, the party seeking a declaratory judgment of non-infringement, invalidity or unenforceability shall serve upon each opposing party its Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions that conforms to Local Patent Rule 3.3, and produce or make available for inspection and copying the documents described in Local Patent Rule 3.4.

(b) Inapplicability of Rule. Local Patent Rule 3.5 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed, invalid or unenforceable is filed in response to a complaint for infringement of the same patent, in which case the provisions of Local Patent Rule 3.3 shall govern.

3.6 Amendment to Contentions

(a) Amendment of the Disclosure of Asserted Claims and Infringement Contentions or the Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions may be made by order of the Court, upon a timely application and showing of good cause, following the procedures required under Local Rule 7.1(b)(2) for applying to an assigned magistrate judge for non-dispositive relief. The application shall disclose whether the adverse party consents or objects. Non-exhaustive examples of circumstances that may, absent undue prejudice to the adverse party, support a finding of good cause include:

(1) a claim construction by the Court different from that proposed by the party seeking amendment;

(2) recent discovery of material prior art not previously discovered despite an earlier diligent search; and

(3) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention.

(b) The duty to supplement discovery responses under Fed. R. Civ. P. 26(e) does not excuse the need to obtain leave of Court to amend contentions.

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