Invalidity Production

Invalidity Production in the United States

Counter-contentions: Invalidity Production in Patent Local Rules

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

California Northern

3. PATENT DISCLOSURES
3-4. Document Production Accompanying Invalidity Contentions
With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Patent L.R. 3-1(c) chart;

(b) A copy or sample of the prior art identified pursuant to Patent L.R. 3-3(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon shall be produced;

(c) All agreements that the party opposing infringement contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation;

(d) Documents sufficient to show the sales, revenue, cost, and profits for accused instrumentalities identified pursuant to Patent L.R. 3-1(b) for any period of alleged infringement; and

(e) All agreements that may be used to support the party denying infringement’s damages case.

The producing party shall separately identify by production number which documents correspond to each category.

California Southern

3. PATENT DISCLOSURES
3.4 Document Production Accompanying Preliminary Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying:

a. Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of any Accused Instrumentality identified by the patent claimant in its Patent L.R. 3.1.c chart; and

b. A copy of each item of prior art identified pursuant to Patent L.R. 3.3.a which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

Delaware

d. Within 30 days after receipt of the above, each defendant shall produce to the plaintiff its initial invalidity contentions for each asserted claim, as well as the related invalidating references (e.g., publications, manuals and patents).

Georgia Northern

LPR 4: DISCLOSURE OF CONTENTIONS
LPR 4.3. Invalidity Contentions.
(b) The Disclosure shall include a copy of each item of prior art identified in the Disclosure comprising a printed publication if such item of prior art does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon shall be produced.

Idaho

3. PATENT DISCLOSURES
3.4. Document Production Accompanying Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Dist. Idaho Loc. Patent R. 3.1(c) chart; and

(b) A copy or sample of the prior art identified pursuant to Dist. Idaho Loc. Patent R. 3.3(a) which does not appear in the file history of the patent(s) at issue. To the extent 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.

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 2.4. Document Production Accompanying Initial Invalidity Contentions
With the Initial Non-Infringement and Invalidity Contentions under LPR 2.3, the party opposing a claim of patent infringement shall supplement its Initial Disclosures and, in particular, must produce or make available for inspection and copying:

(a) any additional documentation showing the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 2.2 chart; and

(b) a copy of any additional items of prior art identified pursuant to LPR 2.3 that does not appear in the file history of the patent(s) at issue.

Indiana Northern

N.D. Ind. L.P.R. 3-1 Preliminary Disclosures
(f) Document Production.
(a) The party opposing a patent-infringement claim must produce to all parties (or make available for inspection and copying) the following documents with its preliminary invalidity contentions. The producing party must separately identify by production number which documents correspond to which category.

(1) Documents sufficient to show the operation of any aspects or elements of an accused instrumentality identified by the patent claimant in its preliminary infringement contentions charts; and

(2) A copy or sample of the prior art identified under N.D. Ind. L.P.R. 3(e). If these items are not in English, an English translation of the portions relied upon must be produced.

Maryland

RULE 804. DISCLOSURES
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, the parties shall make the following disclosures:

d. Document Production Accompanying Initial Disclosure of Invalidity Contentions

With the Initial Disclosure of Invalidity Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying a copy of any prior art identified in the Initial Disclosure of Invalidity Contentions that does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon shall be produced.

Missouri Eastern

3. PATENT INITIAL DISCLOSURES
3-5. Document Production Accompanying Preliminary Invalidity Contentions.
With the Preliminary Invalidity Contentions, the Alleged Infringer must produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the Patent Claimant in its Local Patent R. 3-1(a)(iii) chart. If the Patent Claimant contends that compliance with this section requires the production of particular documentation (e.g., source code), the Alleged Infringer may request, and the Patent Claimant is obliged to produce, the same information as to any apparatus, product, device, process, method, act or other instrumentality that it has identified pursuant to Local Patent R. 3-1(a)(vii), above; and

(b) A copy of each item of prior art identified pursuant to Local Patent R. 3-4(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

(c) The Alleged Infringer shall timely supplement document production under this Local Patent R. 3-5 as required by the Federal Rules of Civil Procedure; however, the act of supplementation does not of itself permit amendment of the Alleged Infringer’s Preliminary Counter-Infringement Contentions or Preliminary Invalidity Contentions, which amendment shall instead be governed by Local Patent R. 3-7(a) and (b).

North Carolina Eastern

Rule 303.4 DOCUMENT PRODUCTION ACCOMPANYING PRELIMINARY INVALIDITY CONTENTIONS
With the “Preliminary Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Local Civil Rule 303.1(c) chart; and

(b) A copy of each item of prior art identified pursuant to Local Civil Rule 303.3(b)(1) that does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

North Carolina Western

III. PATENT INITIAL DISCLOSURES
P.R. 3.4 DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY CONTENTIONS.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying:

(A) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P.R. 3.1(C) chart; and

(B) A copy of each item of prior art identified pursuant to P.R. 3.3(A) that does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

The producing party shall separately identify by production number which documents correspond to each category.

New Hampshire

5.1 PRELIMINARY PATENT DISCLOSURES
(d) Document Production Accompanying Preliminary Invalidity Contentions. With the Preliminary Invalidity Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying:

(1) Documents sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its SPR 5.1(a) chart(s); and

(2) A copy or sample of the prior art identified pursuant to SPR 5.1(c) which does not appear in the file history of the patent(s) at issue. To the extent 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(s) which documents correspond to each category.

New Jersey

3. PATENT DISCLOSURES
3.4 Document Production Accompanying Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing an assertion of patent infringement shall produce or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation, composition, or structure of any aspects or elements of an Accused Instrumentality identified by the party asserting patent infringement in its L. Pat. R. 3.1(c) chart; and

(b) A copy or sample of the prior art identified pursuant to L. Pat. R. 3.3(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon shall be produced.

(c) A party asserting invalidity shall also produce any other document or thing on which it intends to rely in support of its assertion.

(d) With respect to each of the above document productions, the producing party shall separately identify by production number which documents correspond to each category.

Nevada

LPR 1-9. DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY CONTENTIONS
At the time of service of the Non-Infringement, Invalidity, and Unenforceability Contentions, each party defending against patent infringement must also produce to each opposing party or make available for inspection and copying:

(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 1-6(c) chart; and

(b) A copy or sample of the prior art identified under LPR 1-6(b) that does not appear in the file history of the patent(s) at issue. To the extent the item is not in English, an English translation of the portion(s) relied on must be produced. The producing party must separately identify by production number the documents that correspond to each category.

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:

(b) Invalidity Contentions must contain the following information to the extent then known to the party asserting invalidity:

(1) 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);

(2) 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.

(3) 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(f), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and

(4) Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(b) or enablement or written description under 35 U.S.C. § 112(a) of any of the asserted claims.

(c) Subject to amendment in the event of later discovered facts, unenforceability contentions shall contain, in detail, each ground then known upon which the accused infringer will assert that any patent in suit is unenforceable. If the accused infringer’s claim of unenforceability is based upon inequitable conduct, the accused infringer shall describe each omission or misrepresentation made to the Patent and Trademark Office (“PTO”) and shall state all grounds upon which the accused infringer will argue at trial that those prosecuting the patent intended to deceive the PTO, including the identification of any prior art references not disclosed to the PTO during the prosecution of the patent in suit, any facts suggesting that one or more persons substantially involved in the prosecution of the patent in suit were aware of such prior art reference prior to the issuance of the patent in suit, and any facts relevant to the element of intent to deceive.

3.4 Document Production Accompanying Non-Infringement, Invalidity and Unenforceability Disclosure
With the Disclosure of Non-Infringement, Invalidity and Unenforceability Contentions, the party opposing a claim of patent infringement shall produce or make available for inspection and copying, if not previously disclosed pursuant to Fed. R. Civ. P. 26(a)(1), the following:

(a) Source code, specifications, schematics, flow charts, artwork, drawings, photographs, video or other images from every available view or other documentation sufficient to show the operation, composition, design, variety of plant or structure of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Local Patent Rule 3.1(c) chart; and

(b) A copy or sample of the prior art identified pursuant to Local Patent Rule 3.3(b) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation shall be produced. In addition, a complete translation of the document relied upon, if in the possession of the producing party, shall also be produced.

(c) The producing party shall separately identify by production number which documents correspond to each category.

Ohio Northern

III. Patent Disclosures
3.6 Document Production Accompanying Invalidity and Unenforceability Contentions.
With its Invalidity and Unenforceability Contentions, any party opposing a claim of patent infringement shall produce or make available for inspection and copying:

(a) A copy or sample of the prior art identified pursuant to L. P. R. 3.5(a). To the extent 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 invalidity category; and

(b) All documents supporting any statement made in response to L. P. R. 3.5(e).

Ohio Southern

3. INITIAL DISCLOSURES
103.1 Initial Disclosures.
(a) Not later than fourteen (14) days before the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Fed. R. Civ. P. 26(a)(1) (“Initial Disclosures”).

(b) Not later than fourteen (14) days after the Initial Scheduling Conference, the patent holder shall produce or make available for inspection and copying:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, third party or joint development agreements, and any non-privileged correspondence relating to such items and circumstances) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, a sale of or offer to sell or other manner of transfer, a product, system, or process embodying the claimed invention prior to the application date of 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;

(2) All documents created on or before the application date of the patent in suit that show the conception, reduction to practice, design, or development of each claimed invention;

(3) Documents evincing timing, places, parties, or circumstances regarding any known use (whether the use was commercial, public, confidential, third-party, or otherwise) of any product, system, or process embodying the claimed invention prior to the application date of the patent in suit;

(4) All communications to or from the U.S. Patent Office for each patent in suit and for each patent on which a claim for priority is based; and

(5) All assignment and licensing documents supporting a party’s standing to sue.

The producing party shall separately identify by production number which documents correspond to each category.

103.2 Disclosure of Asserted Claims and Infringement Contentions.
(b) With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming patent infringement shall supplement its Initial Disclosures, if necessary, based upon the Initial Disclosures of the opposing party.

103.5 Document Production Accompanying Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement shall produce all non-privileged documents and/or make available for inspection all products, devices, processes, or evidence not readily reproducible that support its “Invalidity Contentions,” including, but not limited to, a copy of each item of prior art that allegedly anticipates each asserted patent and its related claims or renders them obvious.

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 3.1 INITIAL DISCLOSURES
Not later than fourteen (14) days before the Initial Scheduling Conference, the parties shall exchange the initial disclosures required by Fed. R. Civ. P. 26(a)(1) (“Initial Disclosures”).

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:

LPR 3.5 DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY CONTENTIONS
With the “Non-infringement and/or Invalidity Contentions,” the party asserting non-infringement and/or invalidity of a patent shall supplement its Initial Disclosures and, in particular, must produce or make available for inspection and copying:

Any additional documentation showing the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 3.2 chart; and
A copy of any additional items of prior art identified pursuant to LPR 3.4 that does not appear in the file history of the patent(s) at issue.

The party asserting non-infringement and/or invalidity of a patent shall also produce summary sales and/or use information reflecting the quantity of the Accused Instrumentality sold and/or used in the United States and the revenues from those sales and/or uses, to the extent known.

Tennessee Western

III. PATENT DISCLOSURES
3.2 Document Production Accompanying Initial Infringement Contentions.
With the Initial Infringement Contentions, the party claiming patent infringement shall produce to each opposing party or make available for inspection and copying:

(a) All documents concerning any disclosure, sale or transfer, or offer to sell or transfer of the claimed invention prior to the bar date under 35 U.S.C. § 102(b) and/or the date of invention for the patent in suit;

(b) All documents evidencing the conception and first reduction to practice of each claimed invention created on or before the date of application for the patent in suit or the priority date identified pursuant to LPR 3.l(f), whichever is earlier;

(c) A copy of the file history for each patent in suit (or so much thereof as is in the possession of the patentee) and any patent(s) or application(s) to which each patent in suit claims priority; and

(d) All documents evidencing ownership of the patent rights by the party asserting patent infringement.

Nothing in these required disclosures shall be considered an admission that such disclosures are prior art or evidence of prior art under 35 U.S.C. §§ 102 or 103.

3.6 Document Production Accompanying Invalidity and Unenforceability Contentions.
With its Invalidity and Unenforceability Contentions, any party opposing a claim of patent infringement shall produce or make available for inspection and copying:

(a) A copy or sample of the prior art identified pursuant to LPR 3.5(a). To the extent 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 invalidity category; and

(b) All documents supporting any statement(s) made in response to LPR 3.5(e).

Texas Eastern

3. PATENT INITIAL DISCLOSURES
3-2. Document Production Accompanying Disclosure.
With the “Disclosure of Asserted Claims and Infringement Contentions,” the party claiming patent infringement must produce to each opposing party or make available for inspection and copying:

(a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, 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, 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;

(b) 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 the priority date identified pursuant to P. R. 3-1(e), whichever is earlier; and

(c) A copy of the file history for each patent in suit.

The producing party shall separately identify by production number which documents correspond to each category.

3-4. Document Production Accompanying Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying:

(b) A copy of each item of prior art identified pursuant to P. R. 3-3(a) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced.

Texas Northern (Dallas Div.)

3. PATENT INITIAL DISCLOSURES
3-2. Document Production Accompanying Disclosure.
(a) In addition to serving the disclosure of asserted claims and preliminary infringement contentions, the party claiming patent infringement must produce or make available for inspection and copying to each opposing party:

(1) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, 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, the claimed invention prior to the date of application for the patent in suit. A party’s production of a document as required by this paragraph does not constitute an admission that the document evidences or is prior art under 35 U.S.C. § 102;

(2) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, that were created on or before the date of application for the patent in suit or the priority date identified under paragraph 3- 1(a)(5), whichever is earlier; and

(3) A copy of the file history for each patent in suit.

(b) The producing party must separately identify by production number which documents correspond to each category.

3-4. Document Production Accompanying Preliminary Invalidity Contentions.
At the time the preliminary invalidity contentions are served on all opposing parties, the party opposing a claim of patent infringement must also produce or make available for inspection and copying to all opposing parties:

(b) A copy of each item of prior art identified under paragraph 3-3(a)(l) that does not appear in the file history of each patent at issue. To the extent any such item is not in English, an English translation of each portion relied upon must be produced.

Texas Southern

3. PATENT INITIAL DISCLOSURES
3-2. Document Production Accompanying Disclosure.
(a) With the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” the party claiming patent infringement must produce to each opposing party or make available for inspection and copying, the following:

(1) documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third-party or joint development agreements) sufficient to show each discussion with, disclosure to, or other manner of providing to a third-party, or sale of or offer to sell, the claimed invention before the application date for the patent-in-suit;

(2) documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the application date for the patent-in-suit or the priority date identified under P.R. 3-1(e), whichever is earlier;

(3) a copy of the file history for each patent-in-suit; and

(4) license agreements for the patents-in-suit.

(b) The producing party must separately identify by production number which documents correspond to each category.

(c) A party’s production of a document as required by this paragraph is not an admission that the document is evidence of or is prior art under 35 U.S.C. § 102.

3-4. Production Accompanying Preliminary Invalidity Contentions.
With the “Preliminary Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying:

(b) a copy of each item of prior art identified under P.R. 3-3(a) that does not appear in the file history of the patent(s) at issue; and

Utah

LPR 2.2. INITIAL DISCLOSURES
The plaintiff shall provide its initial disclosures under Fed.R.CivP.26(a)(1) (“Initial Disclosures”) no later than twenty-one (21) days after the defendant files its answer or other response; provided, however, if defendant asserts a counterclaim for infringement of another patent, plaintiff’s Initial Disclosures shall be due no later than twenty-one (21) days after the plaintiff files its answer or other response to that counterclaim. The defendant shall provide its Initial Disclosures no later than twenty-eight (28) days after the defendant files its answer or other response; provided, however, if defendant asserts a counterclaim for infringement of another patent, defendant’s Initial Disclosures shall be due no later than twenty-eight (28) 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 Fed.R.CivP.34(a):

(a) A party asserting a claim of patent infringement shall for each asserted patent make available for inspection and copying, or serve control-numbered copies, with its Initial Disclosures the following non-privileged information in the party’s possession, custody or control:

(1) all documents concerning any disclosure, sale or transfer, or offer to sell or transfer, any item embodying, practicing or resulting from the practice of the claimed invention or portion of the invention prior to the date of application. 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) 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 or a priority date otherwise identified, whichever is earlier;

(3) the file history from the U.S. Patent and Trademark Office for each patent on which a claim for priority is based;

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

(5) all licenses; and

(6) the date from which it alleges damages, if claimed, began to accrue; or, if that date is not known, how the date should be determined.

(b) A party opposing a claim of patent infringement shall make available for inspection and copying, or serve control-numbered copies, with its Initial Disclosures the following non-privileged information in the party’s possession, custody or control:

(1) documents or things sufficient to show the operation and construction of all aspects or elements of each Accused Instrumentality identified with specificity in the pleading or Accused Instrumentality Disclosures of the party asserting patent infringement;

(2) a copy of each item of prior art of which the party is aware and upon which the party intends to rely 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;

(3) the Accused Instrumentality; and

(4) an estimate for the relevant time frame of the quantity of each Accused Instrumentality sold and the gross sales revenue.

LPR 2.5. DOCUMENT PRODUCTION ACCOMPANYING INITIAL INVALIDITY CONTENTIONS
With the Initial Non-Infringement, Unenforceability and Invalidity Contentions under LPR 2.3, the party opposing a claim of patent infringement or asserting invalidity or unenforceability shall supplement its Initial Disclosures and, in particular, must produce or make available for inspection and copying:

(a) any additional documentation showing the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its LPR 2.4 chart; and
(b) a copy of any additional items of prior art identified pursuant to LPR 2.3, including for foreign art any translation in the party’s possession, custody, or control that does not appear in the file history of the asserted patent(s).

LPR 3.3. DOCUMENT PRODUCTION ACCOMPANYING FINAL INVALIDITY CONTENTIONS
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 LPR 3.1, to the extent not previously produced, that does not appear in the file history of the patent(s) at issue. If any such item is not in English, an English translation of the portion(s) relied upon must be produced. The translated portion of the non-English prior art must be sufficient to place in context the particular matter upon which the party relies.
The producing party shall separately identify by control-number which documents correspond to each claim.

Washington Eastern

C. PATENT INITIAL DISCLOSURES
LPR 122 Document Production Accompanying Invalidity Contentions
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying a copy of each item of prior art identified pursuant to Local Patent Rule 121(b) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an accurate English translation of the portion(s) relied upon must be produced.

Washington Western

C. PATENT INITIAL DISCLOSURES
122 Document Production Accompanying Invalidity Contentions.
With the “Invalidity Contentions,” the party opposing a claim of patent infringement must produce or make available for inspection and copying a copy of each item of prior art identified pursuant to Local Patent Rule 121(b) which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an accurate English translation of the portion(s) relied upon must be produced.


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