Invalidity Contentions

Not later than 70 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing a claim of patent infringement, must serve on all parties its “Invalidity Contentions,” which must contain the following information: (a) The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious. Each prior art patent must be identified by its number, country of 6 origin, and date of issue. Each prior art publication must be identified by its title, date of publication, and where feasible, author and publisher. (1) (2) For cases governed by pre-AIA 35 U.S.C. § 102, the party opposing a claim of patent infringement must identify 35 U.S.C. §102(b) prior art 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 that made the use or that made and received the offer, or the person or entity that made the information known or to whom it was made known.

The party must identify 35 U.S.C. § 102(f) prior art by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived. The party must identify 35 U.S.C. § 102(g) prior art 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); For cases governed by post-AIA 35 U.S.C. § 102, the party opposing a claim of patent infringement must identify 35 U.S.C. §102(a)(1) prior art by specifying the item offered for sale, in public use, or otherwise available to the public, the date the offer or use took place or the claimed invention was made available, and the identity of the person or entity that made the use or that made or received the offer, or the person or entity that made the claimed invention available or to whom it was available. The party must identify 35 U.S.C. § 102(a)(2) prior art by its number, country of origin, and date of issue if it is a patent, or by its application number, country of origin, and filing date if it is a patent application. The party must identify 35 U.S.C. § 102(a)(2) prior art patents or applications by specifying the effective filing date to which the party believes such patents or applications are entitled; (b) 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; (c) (d) 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; A statement of any grounds of invalidity based on ineligibility under 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; and (e) If the parties disagree about the applicability of pre- or post-AIA law regarding 35 U.S.C. § 102, a detailed statement for each disputed patent explaining the party’s 7 contention. The parties must meet and confer beforehand to determine whether any such disagreement exists.