Non-Infringement and Invalidity

Not later than fifty-six (56) 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 or patent invalidity shall serve on all parties its “Disclosure of Non-Infringement and Invalidity Contentions” which shall contain the following information: (a) (i) Except for design or variety of plant patent claim(s) Non-Infringement Contentions shall contain a chart, responsive to the chart required under Loc. Pat. R. 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; (ii) For each design patent or variety of plant patent claim that is alleged, a chart, responsive to the chart required under Loc. Pat.

R. 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 -5- 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. Invalidity Contentions must contain the following information to the extent then (b) known to the party asserting invalidity:1 (1) Whether the first inventor to file provision of the Leahy-Smith America Invents Act (“AIA”) applies to each asserted claim. (2) 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(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, 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(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); (3) 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; (4) 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 ¶ 6, the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and 1 Consistent with the Leahy-Smith America Invents Act, references to 35 U.S.C. §§ 102, 103, and 112 in these Local Patent Rules refer to patents in dispute that were filed, or claim priority to a date, prior to March 16, 2013. To the extent a patent or patents in dispute were filed, or claim priority to a date, on or after March 16, 2013, any references to §§ 102, 103, and 112 should be interpreted under the applicable language and nomenclature provided in the Leahy-Smith America Invents Act. -6- (5) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112 ¶ 2 or enablement or written description under 35 U.S.C. § 112 ¶ 1 of any of the asserted claims. To comply with Loc. Pat.

R. 3.3, a party opposing a claim of patent infringement may (c) use a chart following the format provided in Appendix D.