The plaintiff and any defendant that files an answer or other response to the complaint shall exchange their Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1) (“Initial Disclosures”) within fourteen (14) days after the defendant files its answer or other response, provided, however, if defendant asserts a counterclaim for infringement of another patent, the Initial Disclosures shall be exchanged within fourteen (14) days after the plaintiff files its answer or other response to that counterclaim. As used in this Rule, the term “document” has the same meaning as in Federal Rule of Civil Procedure 34(a):

(a) A party asserting a claim of patent infringement shall produce or make the following available for inspection and copying along with its Initial Disclosures, to the extent they are in the party’s possession, custody or control.

(1) all documents concerning any disclosure, sale or transfer, or offer to sell or transfer, of any item embodying, practicing or resulting from the practice of the claimed invention prior to the date of application for the patent in suit. Production of a document pursuant to this Rule is not an admission that the document evidences or is prior art under 35 U.S.C. § 102;

(2) with respect to patents that are not governed by the America Invents Act (“AIA”) but instead are governed by the pre-AIA patent statute: all documents concerning 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 a priority date otherwise identified for the patent in suit, whichever is earlier;

(3) all  communications to and from the U.S. Patent and Trademark Office for each patent in suit and for each patent or patent applicationon which a claim for priority is based; and

(4) all documents concerning ownership of the patent rights by the party asserting patent infringement.

(b) A party opposing a claim of patent infringement shall produce or make the following available for inspection and copying, along with its Initial Disclosures:

(1) documents sufficient to show the operation and construction of all aspects or elements of each accused apparatus, product, device, component, process, method or other instrumentality identified with specificity in the pleading of the party asserting patent infringement; and

(2) a copy of each item of prior art of which the party is aware that allegedly anticipates each asserted patent and its related claims or renders them obvious or, if a copy is unavailable, a description sufficient to identify the prior art and its relevant details; and

 

(3) a statement of the gross sales revenue from the accused product(s) (a) for the six (6) year period preceding the filing of the complaint or, if shorter, (b) from the date of issuance of the patent that will enable the parties to estimate potential damages and engage in meaningful settlement negotiations.

With respect to LPR 2.1 (a) and (b), each producing party shall separately identify by production number which documents correspond to each category of the corresponding LPR.