Non-Infringement Contentions in the United States

Counter-contentions: Non-Infringement Contentions in Patent Local Rules

Note: for information on patent local rules, please see here.

Georgia Northern

LPR 4: DISCLOSURE OF CONTENTIONS
LPR 4.2. Response To Infringement Contentions
(a) A party opposing a claim of infringement shall make the following Response to Infringement Contentions within the time period provided by these rules:

(1) The Response to Infringement Contentions shall include a chart responsive to the claims chart contained within the Disclosure of Infringement Contentions, and shall either acknowledge or deny whether each element of each asserted claim is found within each Accused Instrumentality;

(2) The Response to Infringement Contentions shall include a copy of source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation or composition of an Accused Instrumentality identified in the Disclosure of Infringement Contentions within the time period specified by these Rules.

LPR 4.4. Time For Disclosures
(c) A plaintiff seeking a declaratory judgment of patent invalidity or non-infringement, and responding to a counter-claim of patent infringement, shall produce its Response to Infringement Contentions within twenty (20) days after the defendant’s Disclosure of Infringement Contentions.

Illinois Northern

2. PATENT INITIAL DISCLOSURES
Comment

LPR 2.2 – 2.5 supplements the initial disclosures required by Federal Rule of Civil Procedure 26(a)(1). As stated in the comment to LPR 1.6, the purpose of these provisions is to require the parties to identify the likely issues in the case, to enable them to focus and narrow their discovery requests. To accomplish this purpose, the parties’ disclosures must be meaningful – as opposed to boilerplate – and non-evasive. These provisions should be construed accordingly when applied to particular cases.

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 identifies as to 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, the reason for such denial and the relevant distinctions.

Missouri Eastern

3. PATENT INITIAL DISCLOSURES
3-3. Preliminary Counter-Infringement Contentions.
Not later than 28 days after service upon it of the Disclosure of Asserted Claims and Preliminary Infringement Contentions, each Alleged Infringer shall serve on all parties its Preliminary Counter-Infringement Contentions, indicating which elements from each asserted patent claim that it admits are present in any Accused Instrumentality, and which it contends are absent. As to absent elements, the Alleged Infringer shall set forth in detail the basis for its contention that the element is absent.

North Carolina Eastern

Rule 303.3 PRELIMINARY INVALIDITY CONTENTIONS
Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Preliminary Non-Infringement [sic] Contentions.”

North Carolina Middle

LR 103.3. PRELIMINARY NON-INFRINGEMENT AND PATENT INVALIDITY CONTENTIONS
Not later than forty-five (45) days after service upon it of the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Preliminary Non-Infringement and Invalidity Contentions.”

(a) Non-Infringement Contentions shall contain a chart, responsive to the chart required by Local Patent Rule 103.1(c), that states as to each identified element in each asserted claim, 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.

New Jersey

3. PATENT DISCLOSURES
3.2A Non-Infringement Contentions and Responses.
Not later than 45 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing an assertion of patent infringement shall serve on all parties its “Non-infringement Contentions and Responses” to Infringement Contentions which shall include the following:

(a) The written basis for its Non-Infringement Contentions and responses;

(b) The party’s responses shall follow the order of the infringement claims chart that is required under L. Pat. R. 3.1(c), and shall set forth the party’s agreement or disagreement with each allegation therein, including any additional or different claims at issue;

(c) The production or the making available for inspection of any document or thing that it intends to rely on in defense against any such Infringement Contentions.

Nevada

LPR 1-8. INITIAL DISCLOSURE OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY CONTENTIONS
Within 45 days after service of the Initial Infringement Contentions, each party opposing a claim of patent infringement must serve on all other parties Non-Infringement, Invalidity, and Unenforceability Contentions that must include:

(a) A detailed description of the factual and legal grounds for contentions of non- infringement, if any, including a clear identification of each limitation of each asserted claim alleged not to be present in the Accused Instrumentality;

New York Northern

Rule 3 Patent Disclosures
3.3 Non-Infringement, Invalidity and Unenforceability
Not later than thirty (30) 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, patent invalidity or patent unenforceability shall serve on all parties its Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions which shall contain the following information:

(a) Non-Infringement contentions shall contain a chart, responsive to the chart required under Local Patent Rule 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, and a chart, responsive to the chart required under Local Patent Rule 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 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.

Ohio Northern

III. Patent Disclosures
3.3 Initial Noninfringement Contentions.
Not later than thirty (30) days after service upon it of the Infringement Contentions, each party opposing a claim of patent infringement, shall serve on all parties Noninfringement Contentions which shall contain the following information:

(a) A chart, responsive to the chart required by L. P. R. 3.1(c), that identifies as to each identified element in each asserted claim (1) 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, and (2) for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the corresponding structure and function, (if different from that identified in L. P. R. 3.1(c)), whether or not such structure and function are found in the Accused Instrumentality, and/or any basis for claiming that such limitation is invalid for indefiniteness; and

(b) A statement that the proper parties have been served or, if the proper parties have not been served, a statement identifying the proper parties to the extent they are known.

Pennsylvania Western

3. PATENT INITIAL DISCLOSURES
Not later than fourteen (14) days after the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Federal Rule of Civil Procedure. 26(a)(1) (“Initial Disclosures”) and shall exchange the documents specified below, subject to the terms of the Protective Order as set forth in LPR 2.2.
With the Initial Disclosures of the party asserting a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

All Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreement, and third party or joint development agreements) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell or other manner of transfer, the claimed invention prior to the date of application for the patent in suit. A party’s production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102;
All documents evidencing 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;
All documents evidencing communications to and from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based; and
All documents evidencing ownership of the patent rights by the party asserting patent infringement.

The producing party shall separately identify by production number which documents correspond to each category.
With the Initial Disclosures of the party opposing a claim of patent infringement, such party shall produce or make available for inspection and copying, among other items:

Source code, specifications, schematics, flow charts, artwork, formulas, drawings and/or other documentation, including sales literature, sufficient to show the operation of any aspects or elements of each accused apparatus, product, device, process, method or other accused instrumentality identified with specificity in the pleading of the party asserting patent infringement; and
A copy of each item of prior art, of which the opposing party is aware, that allegedly anticipates each asserted patent and its related claims or renders them obvious.

LPR 3.4 NON-INFRINGEMENT AND/OR INVALIDITY CONTENTIONS
(a) Timing
Not later than fourteen (14) calendar days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party asserting non- infringement and/or invalidity of a patent, shall serve upon all parties its “Non- Infringement and/or Invalidity Contentions.”
(b) Non-Infringement Contentions
Non-Infringement Contentions shall contain a chart, responsive to the chart required by LPR 3.2, that states as to each identified element in each asserted claim, whether such element is present literally or under the doctrine of equivalents in each Accused Instrumentality, and, if denied, the specific reasons for such denial.
(c) Invalidity Contentions
Invalidity Contentions must contain the following information:

(1) 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 must be identified by its title, date of publication, and where feasible, author and publisher.
(2) With respect to prior art that anticipates any asserted claim, the facts, documents, witnesses, entities and times that establish that an asserted claim was, before the applicable priority date, patented, described in a printed publication, known, on sale, in public use, otherwise available to the public, derived from another, or is otherwise invalid according to the applicable provisions of § 102.
(3) With respect to a combination of items of prior art that allegedly make a claim obvious, each such combination, and the reasons a person of ordinary skill in the art would combine such items.
(4) A chart identifying where specifically in each alleged item of prior art each element of each challenged claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6) [or 35 U.S.C. § 112(f) for patents having an effective date after March 16, 2013], 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.
(5) A detailed explanation of any grounds of invalidity of any of the asserted claims based on ineligible subject matter under 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112, or enablement or written description under 35 U.S.C. § 112.

Tennessee Western

III. PATENT DISCLOSURES
3.3 Initial Non-infringement Contentions.
Within 28 days after service of the Initial Infringement Contentions, each party opposing a claim of patent infringement shall serve on all parties Non-infringement Contentions, which shall contain the following information:

(a) A chart, responsive to the chart required by LPR 3.l(c), that identifies as to each identified element in each asserted claim (1) 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, and (2) for each limitation that such party contends is governed by 35 U.S.C. § 112, ¶6, the corresponding structure and function, (if different from that identified in LPR3.l(c)), whether or not such structure and function are found in the Accused Instrumentality, and/or any basis for claiming that such limitation is invalid for indefiniteness; and

(b) A statement that the proper parties have been served or, if the proper parties have not been served, a statement identifying the proper parties to the extent they are known.

Utah

LPR 2.4. 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” no later than 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 2.3(c), that identifies 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, the reason for such denial and the relevant distinctions.

LPR 3.2. FINAL NON-INFRINGEMENT CONTENTIONS
Each party asserting non-infringement of a patent claim shall serve on all other parties “Final Non-infringement Contentions” no later than twenty-eight (28) days after service of the Final Infringement Contentions, containing the information called for in LPR 2.4(a).

Washington Eastern

C. PATENT INITIAL DISCLOSURES
LPR 121 Non-Infringement and Invalidity Contentions
Not later than 30 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Non-Infringement and Invalidity Contentions” which shall contain the following information:

(a) For each Asserted Claim against that party, a chart stating whether the party admits that that element is present in the Accused Device or contends that it is absent from the Accused Device. If the party contends that an element is absent from the Accused Device, it shall set forth in detail the basis for that contention.

Washington Western

C. PATENT INITIAL DISCLOSURES
121 Non-Infringement and Invalidity Contentions.
Not later than 30 days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,” each party opposing a claim of patent infringement, shall serve on all parties its “Non-Infringement and Invalidity Contentions” which shall contain the following information:

(a) For each Asserted Claim against that party, a chart stating whether the party admits that that element is present in the Accused Device or contends that it is absent from the Accused Device. If the party contends that an element is absent from the Accused Device, it shall set forth in detail the basis for that contention.