LPR 2.3 Initial Non-Infringement, Unenforceability and Invalidity Contentions
Each
party opposing a claim of patent infringement or asserting invalidity or
unenforceability shall serve upon all parties its “Initial Non-Infringement,
Unenforceability and Invalidity Contentions” within fourteen (14) days after
service of the Initial Infringement Contentions. Such Initial Contentions shall
be as follows:
(a) Non-Infringement Contentions shall contain a chart, responsive to
the chart required by LPR 2.2(c), that separately indicates, for each identified element
in each asserted claim, to the extent then known by the party opposing
infringement, whether such element is present literally or under the doctrine
of equivalents in each Accused Instrumentality and, if not, each reason for such
denial and the relevant distinctions. Conclusory denials are not permitted.
(b) Invalidity Contentions must contain the following information to the
extent then known to the party asserting invalidity:
(1) an identification, with particularity,
of up to twenty five (25) items of prior art per asserted patent that allegedly anticipates each asserted claim. Each prior art patent shall be identified by its number,
country of origin, and date of issue. Each prior art publication must be
identified by its title, date of publication, and where feasible, author and
publisher. Prior art in the form of sales, offers for sale, or uses 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. For a patent governed by the pre-AIA amendments to the patent statute, any 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, and prior art under 35 U.S.C.
§ 102(g) (pre-AIA) 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);
(2) for each item of prior art, a detailed statement of whether it allegedly anticipates
or renders obvious each asserted claim. If a combination of items of prior
art allegedly makes a claim obvious, the Invalidity Contentions must identifyeach such combination, and the reasons to
combine such items;
(3) a chart identifying where specifically in each alleged item of prior
art each element of each asserted claim is found, including for each element
that such party contends is governed by 35 U.S.C.
§ 112(6)/112(f), a description of the claimed function of that element and the
identity of the structure(s), act(s), or material(s) in each item of prior art
that performs the claimed function;
(4) a detailed statement of any grounds of invalidity based on
indefiniteness under 35 U.S.C. § 112(2)/112(b), enablement or written description
under 35
U.S.C. § 112(1)/112(a), or any other basis; and.
(5) a detailed statement of any grounds for contentions that a claim is invalid as non-statutory/patent ineligible under 35 U.S.C. §101.
(c) Unenforceability contentions shall
identify the acts allegedly supporting and all bases for the assertion of
unenforceability.
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