Disclosure Requirement in Patent Cases for Declaratory Judgment of Non-Infringement
U.S. District Court for the Western District of New York
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and Invalidity (a) Non-Infringement and 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 or is invalid, Loc. Pat. 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 does not assert a claim for patent infringement in its answer to the complaint, not later than forty-two (42) days after the defendant serves its answer or forty-two (42) days after the CMC, whichever is later, the party seeking a declaratory judgment of non-infringement or invalidity shall serve upon each opposing party its “Disclosure of Non-Infringement and Invalidity Contentions” that conforms to Loc. Pat. R. 3.3 and produce or make available for inspection and copying the documents described in Loc. Pat.
R. 3.4.
(b) Inapplicability of Rule. Loc. Pat. R. 3.6 shall not apply to cases in which a request for a declaratory judgment that a patent is not infringed or invalid is filed in response to a complaint for infringement of the same patent, in which case the provisions of Loc.
Pat.