Disclosures

Cases Involving Claims of Infringement c) Initial Disclosure of Invalidity Contentions in Defense of Infringement Claims Fifty-six (56) days from the date of the Scheduling Order, each party opposing a claim of patent infringement shall serve on all parties its Invalidity Contentions, which shall contain the following information: i. The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious. 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(b) 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.

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. Prior art under 35 U.S.C. § 102(g) 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); ii. 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; iii.

A chart identifying where specifically in each alleged item of prior art each limitation of each asserted claim is found, including for each limitation that such party contends is governed by pre-AIA 35 U.S.C. § 112(6) or post- AIA 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; iv. Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under pre-AIA 35 U.S.C. § 112(2) or post-AIA 35 U.S.C. § 112(b), or enablement or written description under pre-AIA 35 U.S.C. § 112(1) or post-AIA 35 U.S.C. § 112(a) of any of the asserted claims. This identification must be as specific as possible. For example, each party asserting an enablement defense must set forth with particularity what is lacking in the specification to enable one skilled in the art to make or use the invention, specifically citing information or materials obtained in discovery to the extent feasible.

Each party asserting an enablement defense must set forth with U.S. District Court of Maryland Local Rules (December 1, 2025) 91