Amending Contentions in the United States

Counter-contentions: Amending/Final Contentions in Patent Local Rules

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

California Northern

3-6. Amendment to Contentions
Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include:

(a) A claim construction by the Court different from that proposed by the party seeking amendment;

(b) Recent discovery of material, prior art despite earlier diligent search; and

(c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.

The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

California Southern

3. PATENT DISCLOSURES
3.6 Amended and Final Contentions.
a. As a matter of right, a party asserting infringement may serve Amended Infringement Contentions no later than the filing of the parties’ Joint Claim Construction Chart. Thereafter, absent undue prejudice to the opposing party, a party asserting infringement may only amend its infringement contentions:

1. if, not later than thirty (30) days after service of the court’s Claim Construction Ruling, the party asserting infringement believes in good faith that amendment is necessitated by a claim construction that differs from that proposed by such party; or

2. upon a timely motion showing good cause.

b. As a matter of right, a party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” no later than the completion of claim construction discovery. Thereafter, absent undue prejudice to the opposing party, a party opposing infringement may only amend its validity contentions:

1. if a party claiming patent infringement has served “Amended Infringement Contentions,” and the party opposing a claim of patent infringement believes in good faith that the Amended Infringement Contentions so require;

2. if, not later than fifty (50) days after service of the court’s Claim Construction Ruling; or

3. upon a timely motion showing good cause.

This rule does not relieve any party from its obligations under Fed.R.Civ.P 26 to timely supplement disclosures and discovery responses.

Georgia Northern

LPR 4: DISCLOSURE OF CONTENTIONS
LPR 4.5. Supplementing Or Amending Contentions.
(a) Disclosures and Responses shall have such binding effect on a party as a response to an interrogatory under Rule 33 of the Federal Rules of Civil Procedure.

(b) Each party’s Disclosures or Response shall be supplemented or amended pursuant to the rules for supplementation and amendment of discovery responses generally provided for under the Federal Rules of Civil Procedure.

(c) In addition, any amendment or modification of the Disclosures or Responses which a party believes are required in light of a either a claim construction ruling by the Court or a modification of an opposing party’s Disclosure or Response shall be made within thirty (30) days of service of such ruling, Disclosure or Response.

Idaho

3. PATENT DISCLOSURES
3.7. Amendment to Contentions.
Amendments to the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely application and showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the nonmoving party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material, prior art despite earlier diligent search; (c) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions; and (d) disclosure of an asserted claim and infringement contention by a Hatch-Waxman Act plaintiff under Dist. Idaho Loc. Patent R. 3.6(f) that requires response by defendant because it was not previously presented or reasonably anticipated. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

Illinois Northern

3. FINAL CONTENTIONS
LPR 3.1. Final Infringement, Unenforceability and Invalidity Contentions
A party claiming patent infringement must serve on all parties “Final Infringement Contentions” containing the information required by LPR 2.2 (a)–(h) within twenty-one (21) weeks after the due date for service of Initial Infringement Contentions. Each party asserting invalidity or unenforceability of a patent claim shall serve on all other parties, no later than the same time that the Final Infringement Contentions are due, “Final Unenforceability and Invalidity Contentions” containing the information required by LPR 2.3 (b) and (c). Final Invalidity Contentions may rely on more than twenty-five (25) prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.

LPR 3.2. Final Non-infringement, Enforceability and Validity Contentions
Each party asserting non-infringement of a patent claim shall serve on all other parties “Final Non-infringement Contentions” within twenty-eight (28) days after service of the Final Infringement Contentions, containing the information called for in LPR 2.3(a). Each party asserting patent infringement shall serve, at the same time the “Final Non-Infringement Contentions” are due, Final Contentions in Response to any “Final Unenforceability and Invalidity Contentions.”

LPR 3.4. Amendment of Final Contentions
A party may amend its Final Infringement Contentions or; Final Non-infringement, Unenforceability and Invalidity Contentions; or Final Contentions in Response to any Unenforceability and Invalidity Contentions only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties, made promptly upon discovery of the basis for the amendment. An example of a circumstance that may support a finding of good cause, absent undue prejudice to the non-moving party, includes a claim construction by the Court different from that proposed by the party seeking amendment. A motion to amend final contentions due to a claim construction ruling shall be filed, with proposed amendment(s), within fourteen (14) days of the entry of such ruling.

Indiana Northern

N.D. Ind. L.P.R. 5-1 Final Patent Disclosures
(a) Final Infringement Contentions.
(a) Final Infringement Contentions.

(1) Due Date. Within 28 days after the court’s claim-construction order is entered, any party asserting infringement must serve on all parties its final infringement contentions.

(2) Contents. Parties may not assert at trial any infringement contentions not set out in its final infringement contentions.

(3) Amendments. Final infringement contentions may not identify additional accused products or processes not contained in the preliminary infringement contentions without good cause (e.g., discovery of previously undiscovered information or an unanticipated claim construction ruling). The party asserting infringement must include a separate statement outlining the specific grounds that it claims constitute good cause for the amendment.

(4) Exclusion. Accused infringers may seek to exclude amendments on grounds that good cause does not exist.

(5) Due Date. Motions to exclude must be filed within 14 days after receiving the final infringement contentions.

(6) Failure to Object. Unopposed amendments are deemed effective.

(b) Final Invalidity Contentions.
(1) Due Date. Within 21 days after receiving the final infringement contentions, each accused infringer must serve on all parties its final invalidity contentions.

(2) Contents. Final invalidity contentions must include that party’s final statement of all contentions. The party may not assert at trial any invalidity contentions not contained in its final invalidity contentions.

(3) Amendments. If the final invalidity contentions identify additional prior art, the amendment must be supported by good cause (e.g., discovery of previously undiscovered information or an unanticipated claim construction ruling) and the accused infringer must include a separate statement providing the specific grounds establishing good cause for the amendment.

(4) Exclusion. The party asserting infringement may seek to exclude the amendment on grounds that good cause does not exist.

(5) Due Date. Motions to exclude must be filed within 14 days after receiving the final invalidity contentions.

(6) Failure to Object. Unopposed amendments are deemed effective.

Maryland

RULE 804. DISCLOSURES
6. Amendment to Contentions
A party may amend Contentions described in L.R. 804.1 through 804.5 upon written consent of all parties or, for good cause shown, upon leave of the Court.

RULE 805. CLAIM CONSTRUCTION
1. Cases Involving Claims of Infringement
Unless otherwise ordered by the Court, in all cases, other than those arising under the Hatch-Waxman Act (21 U.S.C. § 355), in which a party has asserted a claim of patent infringement:

a. Sixty (60) days from the date of the Scheduling Order, the party asserting infringement shall serve on each alleged infringing party a Claim Chart containing the following information:

i. Each claim of any patent in suit which the party alleges was infringed;

ii. Separately for each allegedly infringed claim, the identity of each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each allegedly infringing party;

iii. Whether such infringement is claimed to be literal or under the doctrine of equivalents;

iv. Where each element of each infringed claim is found within each Accused Instrumentality; and

v. If the party alleging infringement wishes to preserve the right to rely on that party’s own apparatus, product, device, process, method, act, or other instrumentality as evidence of commercial success, the party must identify, separately for each claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.

c. Ninety (90) days from the date of the Scheduling Order, the alleged infringing parties shall serve upon the party claiming infringement a Responsive Claim Chart containing the following:

i. 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 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, 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);

ii. Whether the prior art anticipates the claim or renders it obvious. If a combination of prior art references makes a claim obvious, that combination must be identified;

iii. Where, specifically, within each item of prior art each element of the claim is found;

iv. All grounds of invalidity other than anticipation or obviousness of any of the claims listed in the Claim Chart. This identification must be as specific as possible. For example, each party asserting an enablement defense must set forth with particularity what is lacking in the specification to enable one skilled in the art to make or use the invention, specifically citing information or materials obtained in discovery to the extent feasible. Each party asserting an enablement defense must set forth with particularity what is lacking in the specification to enable one skilled in the art to make or use the invention; and

v. If the claimant has alleged willful infringement, the date and a document reference number for each opinion of counsel upon which the party relies to support a defense to the willfulness allegation, including, but not limited to, issues of validity, and infringement of any patent in suit.

e. Amendment of a Claims Chart or a Responsive Claims Chart may be made only on stipulation of all parties or by Order of the Court, which shall be entered only upon a showing of excusable subsequent discovery of new information or extraordinary good cause.

Missouri Eastern

3. PATENT INITIAL DISCLOSURES
3-1. Disclosure of Asserted Claims and Preliminary Infringement Contentions.
3-7. Final Contentions.
The Disclosure of Asserted Claims and Preliminary Infringement Contentions and Preliminary Invalidity Contentions shall be deemed to be that party’s final contentions, except as set forth below.

(a) If a Patent Claimant believes in good faith that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position, that party may serve Final Infringement Contentions without leave of Court that amend its Disclosure of Asserted Claims and Preliminary Infringement Contentions with respect to the information required by Local Patent R. 3-1(a)(iii), (iv) and (v). The Patent Claimant may seek leave of Court, for good cause shown, to assert infringement with respect to an Accused Instrumentality not disclosed in the Disclosure of Asserted Claims and Preliminary Infringement Contentions. Any Final Infringement Contentions must be served no later than 28 days after the Court files its Claim Construction Ruling. Any Alleged Infringer may serve Final Counter-Infringement Contentions without leave of Court that amend its Preliminary Counter-Infringement Contentions served previously pursuant to Local Patent. R. 3-3 not later than (i) 21 days after service upon it of any Final Infringement Contentions pursuant to this Local Patent R. 3-7(a), or (ii) in the absence of Final Infringement Contentions, and upon a good faith belief that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position, not later than 49 days after the Court files its Claim Construction Ruling.

(b) Not later than 49 days after the Court files its Claim Construction Ruling, each Alleged Infringer may serve Final Invalidity Contentions without leave of Court that amend its Preliminary Invalidity Contentions with respect to the information required by Local Patent R. 3-4 if: (i) a Patent Claimant has served Final Infringement Contentions pursuant to Local Patent R. 3-7(a), or (ii) the Alleged Infringer believes in good faith that the Court’s Claim Construction Ruling necessitates a modification of its preliminary position. Leave of Court upon good cause shown is required to the extent the Alleged Infringer seeks to rely on prior art not disclosed in the Preliminary Invalidity Contentions.

(c) Not later than 77 days after the Court files its Claim Construction Ruling, each Patent Claimant must serve on all parties its Counter-Invalidity Contentions, which must state in detail its position on: (i) whether the purported prior art relied upon by an Alleged Infringer does indeed constitute statutory prior art, (ii) whether and how its interpretation of the prior art differs from that of the party opposing a claim of patent infringement, and (iii) its position on why the prior art does not invalidate any of the claims at issue. Notwithstanding the requirements of this Local Patent R. 3-7(c), a Patent Claimant may include the contentions that are otherwise required by this Rule in a Written Report that complies with Fed. R. Civ. P. 26(a)(2)(B) by the deadline set forth in the Case Management Order for service of rebuttal expert reports.

3-8. Amendment to Contentions.
Amendment or modification of (i) the Disclosure of Asserted Claims and Preliminary Infringement Contentions, Preliminary Counter-Infringement Contentions, or the Preliminary Invalidity Contentions (other than as expressly permitted by Local Patent R. 3-1(b) or 3-7, above), or (ii) the Final Infringement Contentions, Final Counter-Infringement Contentions, or the Final Invalidity Contentions, may only be made by order of the Court, upon a showing of good cause. The application for amendment shall disclose whether the adverse party consents or objects.

North Carolina Eastern

Rule 303.6 FINAL CONTENTIONS
Each party’s “Preliminary Infringement Contentions” and “Preliminary Invalidity Contentions” shall be deemed to be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement believes in good faith that (1) the court’s Claim Construction Ruling or (2) the documents produced pursuant to Local Civil Rule 303.4 so requires, not later than thirty (30) days after service by the court of its Claim Construction Ruling, that party may serve “Final Infringement Contentions” without leave of court that amend its “Preliminary Infringement Contentions” with respect to the information required by Local Civil Rule 303.1(c) and (d).

(b) Not later than 50 days after service by the court of its Claim Construction Ruling, each party opposing a claim of patent infringement may serve “Final Invalidity Contentions” without leave of court that amend its “Preliminary Invalidity Contentions” with respect to the information required by Local Civil Rule 303.3 if:

(1) a party claiming patent infringement has served “Final Infringement Contentions” pursuant to Local Civil Rule 303.6(a), or

(2) the party opposing a claim of patent infringement believes in good faith that the court’s Claim Construction Ruling so requires.

Rule 303.7 AMENDMENT TO CONTENTIONS
Amendment or modification of the Preliminary or Final Infringement Contentions or the Preliminary or Final Invalidity Contentions, other than as expressly permitted in Local Civil Rule 303.6, may be made only as expressly permitted by Local Civil Rule 303.6, or within 30 days of the discovery of new information relevant to the issues of infringement, or invalidity. Otherwise, amendment or modification shall be made only by order of the court, which shall be entered only upon a showing of good cause.

North Carolina Middle

LR 103.6. FINAL CONTENTIONS
Each party’s “Preliminary Infringement Contentions” and “Preliminary Non-Infringement and Invalidity Contentions” shall be deemed to be that party’s final contentions, except as set forth below.
(a) If a party claiming patent infringement believes in good faith that (1) the Court’s Claim Construction Ruling or (2) the documents produced pursuant to LR 103.4 so requires, not later than thirty (30) days after service by the Court of its Claim Construction Ruling, that party may serve “Final Infringement Contentions” without leave of court that amend its “Preliminary Infringement Contentions” with respect to the information required by Local Civil Rule 103.1(c) and (d).
(b) Discovery has revealed information requiring modification of the contentions.
(c) Not later than fifty (50) days after service by the Court of its Claim Construction Ruling, each party opposing a claim of patent infringement may serve “Final Non-Infringement and Invalidity Contentions” without leave of court that amend its “Preliminary Non-Infringement and Invalidity Contentions” with respect to the information required by LR 103.3 if:

(1) a party claiming patent infringement has served “Final Infringement Contentions” pursuant to LR 103.6(a), or
(2) the party opposing a claim of patent infringement believes in good faith that the Court’s Claim Construction Ruling so requires the amendment.

LR 103.7. AMENDMENT TO CONTENTIONS
Amendment or modification of the Preliminary or Final Infringement Contentions or the Preliminary or Final Non-Infringement and Invalidity Contentions, may be made only as expressly permitted by Local Civil Rule 103.6, or within thirty (30) days of the discovery of new information relevant to the issues of infringement, noninfringement, or invalidity. Otherwise, amendment or modification shall be made only by order of the Court, which shall be entered only upon a showing of good cause.

North Carolina Western

P.R. 3.6 AMENDING AND SUPPLEMENTING CONTENTIONS.
(A) Leave Not Required. Each party’s “Infringement Contentions” and “Invalidity Contentions” shall be deemed to be that party’s final contentions, except as set forth below:

(1) If the parties stipulate to serving Amended or Supplemental Infringement Contentions and Invalidity Contentions;

(2) If a party claiming patent infringement believes in good faith that the Court’s Claim Construction Order so requires, not later than thirty (30) days after entry of the Court’s Claim Construction Order, that party may serve “Amended Infringement Contentions” without leave of Court that amend or supplement its “Infringement Contentions” with respect to the information required by P.R. 3.1(C) and (D); or

(3) Not later than sixty (60) days after entry of the Court’s Claim Construction Order, each party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” without leave of Court that amend or supplement its “Invalidity Contentions” with respect to the information required by P.R. 3.3 if:

(a) a party claiming patent infringement has served “Amended Infringement Contentions” pursuant to P.R. 3.6(A); or

(b) the party opposing a claim of patent infringement believes in good faith that the Court’s Claim Construction Order so requires.

(B) Leave Required. Amendment or supplementation of any Infringement Contentions or Invalidity Contentions, other than as expressly permitted in P.R. 3.6(A), may be made only by order of the Court, which shall be entered if application is made in a timely fashion, for good cause, and without purpose of delay or undue prejudice to another party. Non-exhaustive examples of circumstances supporting a finding of good cause can include at least the following: information newly discovered or confirmed, through due diligence, regarding an accused product or prior art; information discovered, confirmed, or provided by a party’s consultant or expert after a party’s contentions have been served; new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; and information learned from or positions taken by another party during the exchange of contentions process set forth in P.R. 3.1 to 3.5.

These Patent Rules attempt to fairly and reasonably schedule the exchange of contentions in order to provide early disclosure. The Rule allowing amendments and supplementation to infringement and invalidity contentions is intended to allow enough flexibility for legitimate changes that will not cause undue prejudice while, at the same time, prohibiting gamesmanship, bad faith, or dilatory motives. Accordingly, these Patent Rules encourage the parties to devote sufficient time and attention to their initial contentions and deter parties from deferring the disclosure, development, or investigation of theories or contentions. Examples of what may constitute “good cause” are provided for the Court and the parties in order to avoid undue motions practice and other inefficiencies when leave is warranted.

New Hampshire

7.1 FINAL PATENT DISCLOSURES
(a) Final Infringement Contentions.

(1) Not later than twenty-one (21) days after service of the court’s claim construction order, any party asserting infringement must serve on all parties its “Final Infringement Contentions,” which shall include the party’s final statement of all contentions required by SPR 5.1(a). A party may not assert at trial any infringement contentions not set out in its Final Infringement Contentions;

(2) To the extent the Final Infringement Contentions identify additional accused products or processes not set out in the Preliminary Infringement Contentions, such amendment must be supported by good cause (e.g., discovery of previously unavailable information) and the party asserting infringement must include a separate statement providing the specific grounds establishing such good cause. The accused infringer may move to exclude such amendment on the ground that good cause does not exist. Such motion must be filed within fourteen (14) days after service of the Final Infringement Contentions. If such motion is filed (or if filed not granted), the amendment will be effective.

(b) Final Invalidity Contentions.

(1) Not later than twenty-one (21) days after service of the Final Infringement Contentions, each accused infringer must serve on all parties its “Final Invalidity Contentions,” which must include that party’s final statement of all contentions required by SPR 5.1(c). The party may not assert at trial any invalidity contentions not set out in its Final Invalidity Contentions;

(2) To the extent the Final Invalidity Contentions identify additional prior art, such amendment must be supported by good cause (e.g., discovery of previously unavailable information) and the accused infringer must include a separate statement providing the specific grounds establishing such good cause. The party asserting infringement may move to exclude such amendment on the ground that good cause does not exist. Such motion must be filed within fourteen (14) days after service of the Final Invalidity Contentions. If such motion is not filed (or if filed not granted), the amendment will be effective.

New Jersey

3. PATENT DISCLOSURES
3.7 Amendments.
Amendment of any contentions, disclosures, or other documents required to be filed or exchanged pursuant to these Local Patent Rules may be made only by order of the Court upon a timely application and showing of good cause. The application shall disclose whether parties consent or object. Non-exhaustive examples of circumstances that may, absent undue prejudice to the adverse party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; (c) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention; (d) disclosure of an infringement contention by a Hatch- Waxman Act party asserting infringement under L. Pat. R. 3.6(g) that requires response by the adverse party because it was not previously presented or reasonably anticipated; and (e) consent by the parties in interest to the amendment and a showing that it will not lead to an enlargement of time or impact other scheduled deadlines. The duty to supplement discovery responses under Fed. R. Civ. P. 26(e) does not excuse the need to obtain leave of Court to amend contentions, disclosures, or other documents required to be filed or exchanged pursuant to these Local Patent Rules.

Nevada

LPR 1-12. AMENDMENT TO DISCLOSURES
Amendment of initial disclosures required by these rules may be made for good cause without leave of the court anytime before the discovery cut-off date. Thereafter, the disclosures are final and amendment of the disclosures may be made only by court order upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the nonmoving party, support a finding of good cause include: (a) a claim construction by the court different from that proposed by the party seeking amendment; recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Instrumentality despite earlier diligent search. The duty to supplement discovery responses does not excuse the need to obtain leave of the court to amend contentions.

New York Eastern

Local Patent Rule 9. Duty to Supplement Contentions
The duty to supplement in Fed. R. Civ. P. 26(e) shall apply to the Infringement Contentions and the Invalidity Contentions required by Local Patent Rules 6 and 7.

New York Northern

Rule 3 Patent Disclosures
3.6 Amendment to Contentions
(a) Amendment of the Disclosure of Asserted Claims and Infringement Contentions or the Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions may be made by order of the Court, upon a timely application and showing of good cause, following the procedures required under Local Rule 7.1(b)(2) for applying to an assigned magistrate judge for non-dispositive relief. The application shall disclose whether the adverse party consents or objects. Non-exhaustive examples of circumstances that may, absent undue prejudice to the adverse party, support a finding of good cause include:

(1) a claim construction by the Court different from that proposed by the party seeking amendment;

(2) recent discovery of material prior art not previously discovered despite an earlier diligent search; and

(3) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention.

(b) The duty to supplement discovery responses under Fed. R. Civ. P. 26(e) does not excuse the need to obtain leave of Court to amend contentions.

New York Southern

Local Patent Rule 9. Duty to Supplement Contentions
The duty to supplement in Fed. R. Civ. P. 26(e) shall apply to the Infringement Contentions and the Invalidity Contentions required by Local Patent Rules 6 and 7.

Ohio Northern

III. Patent Disclosures
3.10 Amending and Supplementing Contentions; Final Contentions.
(a) Unless otherwise ordered by the Court, the parties’ contentions and responses shall have the same binding effect on a party as a response to an interrogatory made under Rule 33 of the Federal Rules of Civil Procedure. The parties’ disclosures and responses may be amended or supplemented without leave of court until the Final Contentions are due under L. P. R. 3.10(b)-(d); provided, however, that after submission of the exchange of claim terms under L. P. R. 4.1(c), additional claims in the patent(s) in suit may not be asserted without obtaining leave from the Court for good cause shown.

(b) Each party claiming patent infringement must serve on all parties “Final Infringement Contentions” containing the information required L. P. Rule 3.1 within fifteen (15) days of the Court’s claim construction ruling.

(c) Each party asserting non-infringement, invalidity or unenforceability of a patent claim shall serve on all other parties “Final Noninfringement Contentions” and “Final Invalidity and Unenforceability Contentions” containing the information required by L. P. R. 3.3 and 3.5 within thirty (30) calendar days of the Court’s claim construction ruling. With the Final Invalidity Contentions, the party asserting invalidity of any patent claim shall produce or make available for inspection and copying: a copy or sample of all prior art identified pursuant to L. P. R. 3.6, to the extent not previously produced. If any such item is not in English, an English translation of the portion(s) relied upon shall be produced. The producing party shall separately identify by production number which documents correspond to each category.

(d) Each party claiming patent infringement must serve on all parties “Final Validity and Enforceability Contentions” containing the information required by L. P. R. 3.7 within forty-five (45) days of the Court’s claim construction ruling.

(e) A party may amend the final contentions required under L. P. R. 3.9(b)-(d) only by order of the Court upon a showing of good cause and absence of unfair prejudice, made in timely fashion following discovery of the basis for such amendment. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

Ohio Southern

103.7 Amendment to Contentions.
Amendment of the Infringement Contentions or the Invalidity Contentions are permissible only with leave of Court. A party may obtain leave of Court only where there is no undue prejudice to the parties and the party seeking amendment acts in good faith. Non-exhaustive examples of circumstances supporting amendment include: information discovered or confirmed during fact discovery; information discovered, confirmed, or provided by a party’s consultant or expert after the party’s contentions have been served; new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; information learned from or positions taken by another party during the exchange-of-contentions process set forth in S. D. Ohio Pat. R. 103; information learned from or positions taken by another party during the claim construction process set forth in S. D. Ohio Pat. R. 105; and rulings made by the Court, such as the Court’s Claim Construction Order.

Pennsylvania Western

LPR 3.8 AMENDMENT TO CONTENTIONS
(a) Leave Not Required
Not later than twenty-one (21) days after entry of a Claim Construction Order, a party claiming patent infringement may amend, modify or supplement its Infringement Contentions without leave of Court if the Court adopts a claim construction different from that proposed by the party claiming patent infringement and that party believes, in good faith, that the claim construction necessitates the proposed amendment, modification or supplement. Not later than thirty-five (35) days after entry of a Claim Construction Order, a party opposing a claim of patent infringement may amend, modify or supplement its Invalidity and/or Non-Infringement Contentions without leave of Court if (1) a party claiming patent infringement amends, modifies or supplements its Infringement Contentions pursuant to this Rule or (2) the Court adopts a claim construction different from that proposed by the party opposing patent infringement and that party believes, in good faith, that the claim construction necessitates the proposed amendment, modification, or supplement.
(b) Leave Required
Except otherwise provided in LPR 3.8(a), any amendment, modification, or supplement of any Infringement or Non-Infringement and/or Invalidity Contentions may be made only by order of the Court or Court-approved stipulation of the parties. Leave may be granted if the motion is made in a timely fashion, for good cause, and without purpose of delay or undue prejudice to the non-moving party. Non-exhaustive examples of circumstances that may support a finding of good cause can include: information newly discovered, through due diligence, regarding an accused product or prior art; information discovered or provided by a party’s consultant or expert after a party’s contentions have been served; a new product launches; amendments to the complaint or counterclaim adding or removing one or more asserted patents; and information learned from or positions taken in the claim construction proceedings or in the exchange of contentions pursuant to LPR 3.2-3.7.

Tennessee Western

3.8 Final Contentions
(a) Final Infringement Contentions. Within 14 days after the Court’s Claim Construction Ruling is issued, each party claiming patent infringement shall serve on all parties Final Infringement Contentions, containing the information required by LPR 3.1.

(b) Final Non-infringement Contentions. Final Invalidity and Unenforceability Contentions. Within 14 days after the Court’s Claim Construction Ruling is issued, each party asserting non-infringement, invalidity, or unenforceability of a patent claim shall serve on all other parties Final Non-infringement Contentions and Final Invalidity and Unenforceability Contentions, containing the information required by LPR 3.3 and 3.5. With the Final Invalidity and Unenforceability Contentions, the party asserting invalidity of any patent claim shall produce or make available for inspection and copying a copy or sample of all prior art identified pursuant to LPR 3.6, to the extent not previously produced. If any such item is not in English, an English translation of the portion(s) relied upon shall be produced. The producing party shall separately identify by production number which documents correspond to each category.

(c) Final Validity and Enforceability Contentions. Within 45 days after the Court’s Claim Construction Ruling is issued, each party claiming patent infringement must serve on all parties Final Validity and Enforceability Contentions containing the information required by LPR 3.7.

(d) Amendments to Final Contentions. A party may amend the Final Contentions required under LPR 3.8(a)-(c) only by order of the Court upon a showing of good cause and absence of unfair prejudice, made in timely fashion, following discovery of the basis for such amendment. The duty to supplement discovery responses does not excuse the need to obtain leave of Court to amend contentions.

3.11 Amending and Supplementing Contentions.
Unless otherwise ordered by the Court, the parties’ contentions and responses shall have the same binding effect on a party as a response to an interrogatory made under Rule 33 of the Federal Rules of Civil Procedure. The parties’ disclosures and responses may be amended or supplemented without leave of Court until the Final Contentions are due under LPR 3.8(a)-(c); provided, however, that after submission of the exchange of claim terms under LPR 4.l(c), additional claims in the patent(s) in suit may not be asserted without obtaining leave from the Court for good cause shown.

Texas Eastern

3. PATENT INITIAL DISCLOSURES
3-6. Amending Contentions.
(a) Leave not required. Each party’s “Infringement Contentions” and “Invalidity Contentions” shall be deemed to be that party’s final contentions, except as set forth below.

(1) If a party claiming patent infringement believes in good faith that the Court’s Claim Construction Ruling so requires, not later than 30 days after service by the Court of its Claim Construction Ruling, that party may serve “Amended Infringement Contentions” without leave of court that amend its “Infringement Contentions” with respect to the information required by Patent R. 3-1(c) and (d).

(2) Not later than 50 days after service by the Court of its Claim Construction Ruling, each party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” without leave of court that amend its “Invalidity Contentions” with respect to the information required by P. R. 3-3 if:

(A) a party claiming patent infringement has served “Infringement Contentions” pursuant to P. R. 3-6(a), or

(B) the party opposing a claim of patent infringement believes in good faith that the Court’s Claim Construction Ruling so requires.

(b) Leave required. Amendment or supplementation any Infringement Contentions or Invalidity Contentions, other than as expressly permitted in P. R. 3-6(a), may be made only by order of the Court, which shall be entered only upon a showing of good cause.

Texas Northern (Dallas Div.)

3. PATENT INITIAL DISCLOSURES
3-6. Final Contentions.
Each party’s preliminary infringement contentions and preliminary invalidity contentions will be deemed to be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement believes in good faith that the presiding judge’s claim construction ruling so requires, that party may serve final infringement contentions without leave of court that amend the party’s preliminary infringement contentions with respect to the information required by paragraph 3-1(a)(3) and (4) within 30 days from the date the presiding judge’s claim construction ruling is filed.

(b) Within 50 days from the date the presiding judge’s claim construction ruling is filed, each party opposing a claim of patent infringement may serve its final invalidity contentions without leave of court that amend its preliminary invalidity contentions with respect to the information required by paragraph 3-3 if:

(1) a party claiming patent infringement has served its final infringement contentions under paragraph 3-6(a), or

(2) the party opposing a claim of patent infringement believes in good faith that the presiding judge’s claim construction ruling so requires.

3-7. Amendment to Contentions.
Amendment of the preliminary or final infringement contentions or the preliminary or final invalidity contentions, other than as expressly permitted in paragraph 3-6, may be made only by order of the presiding judge upon a showing of good cause. Good cause for the purposes of this paragraph may include newly discovered accused instrumentalities, newly discovered bases for claiming infringement, or newly discovered prior art references. A party seeking amendment of the preliminary or final infringement contentions or the preliminary or final invalidity contentions must include in its motion to amend a statement that the newly discovered accused instrumentalities, newly discovered bases for claiming infringement, or newly discovered prior art references were not known to that party prior to the motion despite diligence in seeking out same.

Texas Southern

3. PATENT INITIAL DISCLOSURES
3-6. Amended and Final Contentions – Leave of Court Not Required.
Each party’s “Preliminary Infringement Contentions” and “Preliminary Invalidity Contentions” will be that party’s final contentions, except as set forth below.

(a) If a party claiming patent infringement has good cause to believe that the material produced by an opposing party under P.R. 3-4 requires amendment of its “Preliminary Infringement Contentions” with respect to the information required by P.R. 3-1(c) and (d), leave of court is not required. These amended contentions must be served within a reasonable time after the opposing party’s document production.

(b) If a party claiming patent infringement has good cause to believe that the Court’s Claim Construction Ruling requires “Final Infringement Contentions” amending its “Preliminary Infringement Contentions” with respect to the information required by P.R. 3-1(c) and (d), leave of court is not required. These Final Infringement Contentions must be served by the deadline set in the Scheduling Order.

(c) By the deadline set in the Scheduling Order, each party opposing a claim of patent infringement may serve, without leave of court, “Final Invalidity Contentions” that amend that party’s “Preliminary Invalidity Contentions” with respect to the information required by P.R. 3-3, if either:

(1) a party claiming patent infringement has served amended infringement contentions under P.R. 3-6(a) or “Final Infringement Contentions” under P.R. 3-6(b), or

(2) the party opposing a patent infringement claim has good cause to believe that the Court’s Claim Construction Ruling requires the amendment.

3-7. Amendments to Contentions By Leave of Court.
(a) Amendment or modification of the Preliminary or Final Infringement Contentions or the Preliminary or Final Invalidity Contentions, other than expressly permitted in P.R. 3-6, may be made only if the presiding judge finds there is good cause for the requested changes.

(b) Good cause may include, but is not limited to, newly discovered (1) accused instrumentalities, (2) bases for claiming infringement, or (3) prior art references, provided that good cause may be found only if the party seeking leave to amend shows that it exercised diligence in seeking the newly discovered information or documents.

Utah

LPR 3.1. FINAL INFRINGEMENT, UNENFORCEABILITY AND INVALIDITY CONTENTIONS
A party claiming patent infringement must serve on all parties “Final Infringement Contentions” containing the information required by LPR 2.3 (a)–(h) no later than twenty-one (21) weeks after the due date for service of Initial Infringement Contentions. Each party asserting invalidity or unenforceability of a patent claim shall serve on all other parties, within fourteen(14) days after the Final Infringement Contentions are due, “Final Unenforceability and Invalidity Contentions” containing the information required by LPR 2.4 (b) and (c). Final Infringement Contentions may rely on no more than eight(8) asserted claims, from the set of previously-identified asserted claims, per asserted patent without an order of the court upon a showing of good cause and absence of unfair prejudice to opposing parties. Final Unenforceability and Invalidity Contentions may rely on no more than ten (10) prior art references, from the set of previously-identified prior art references, per asserted patent without an order of the court upon a showing of good cause and absence of unfair prejudice to opposing parties.

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).

LPR 3.4. AMENDMENT OF FINAL CONTENTIONS
A party may amend its Final Infringement Contentions; or Final Non-infringement, or Unenforceability and Invalidity Contentions only by order of the court upon a showing of good cause and absence of unfair prejudice to opposing parties, made no later than fourteen (14) days of the discovery of the basis for the amendment. An example of a circumstance that may support a finding of good cause, absent undue prejudice to the non-moving party, includes a claim construction by the court different from that proposed by the party seeking amendment.
The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

Washington Eastern

LPR 124 Amended Contentions
Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Device which was not discovered, despite diligent efforts, before the service of the Infringement Contentions. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

Washington Western

124 Amended Contentions.
Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Device which was not discovered, despite diligent efforts, before the service of the Infringement Contentions. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.