5.1 Preliminary Patent Disclosures

(a) Preliminary Infringement Contentions

Not later than forty-five (45) days after service of the last filed answer, a party claiming patent infringement shall serve on all parties its "Preliminary Infringement Contentions." The "Preliminary Infringement Contentions" shall include an infringement claim chart for each accused product or process ("Accused Instrumentality"). However, if certain Accused Instrumentalities have the same relevant characteristics, they can be grouped together in the same chart.

(1) Each claim chart shall contain the following contentions:

  (A) Each claim of each patent in suit that is allegedly infringed by such Accused Instrumentality;

  (B) For each claim, an identification of the subsection(s) of 35 U.S.C. § 271 that are asserted;

  (C) A specific identification of where each limitation of the claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function; and

  (D) Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality.

(2) In addition to the claim chart(s), the "Preliminary Infringement Contentions" shall also include the following contentions:

  (A) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement, the identity of the known direct infringer(s), and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement;

  (B) To the extent that the alleged direct infringement is based on joint acts of multiple parties, the identity of each such party and the role of each such party in the direct infringement;

  (C) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and

  (D) If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that it practices (or practiced) the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that practices (or practiced) that particular claim, and the date(s) that the party began and (if completed) ended such practicing of the claimed invention.

(b) Document Production Accompanying Preliminary Infringement Contentions

With the Preliminary Infringement Contentions, the party asserting patent infringement shall produce to each opposing party or make available for inspection and copying:

(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, or any public use of, the claimed invention prior to the date of application for each 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 evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for each patent in suit or the priority date identified pursuant to SPR 5.1(a), whichever is earlier;

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

(4) All documents evidencing ownership of the patent rights by the party asserting patent infringement; and

(5) If a party identifies its own practicing instrumentalities pursuant to SPR 5.1(a), documents sufficient to show the operation of any aspects or elements of such instrumentalities the patent claimant relies upon as embodying any asserted claims.

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

(c) Preliminary Invalidity Contentions

Not later than forty-five (45) days after service of the Preliminary Infringement Contentions, each party opposing a claim of patent infringement shall serve on all parties its "Preliminary Invalidity Contentions," which shall contain the following contentions:

(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 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);

(2) Whether each item of prior art anticipates each asserted claim or renders it obvious and, if obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of combinations of prior art showing obviousness, and an explanation of why a person of skill in the art would find obvious the asserted claim(s) in light of such combinations (e.g., reasons for combining references);

(3) A chart (or charts) identifying where specifically in each alleged item of prior art each limitation of each asserted claim is found, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), 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 other asserted grounds of invalidity of any asserted claim(s), including contentions based on 35 U.S.C. § 101 or 35 U.S.C. § 112.

(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.