ACC and IP Committee Letter regarding IPR and PGR

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3. PA T E N T DISC L OSUR ES3-1. Disclosure of Asserted Claims and Infringement ContentionsNot later than 14 days after the Initial Case Management Conference, a party claiming patentInfrin(a)(b)(c)(d)(e)(f)(g)(h)Each claim of each patent in suit that is allegedly infringed by each opposing party,including for each claim the applicable statutory subsections of 35 U.S.C. §271 asserted;Separately for each asserted claim, each accused apparatus, product, device, process,of which the party is aware. This identification shall be as specific as possible. Eachproduct, device, and apparatus shall be identified by name or model number, if known.Each method or process shall be identified by name, if known, or by any product, device,or apparatus which, when used, allegedly results in the practice of the claimed method orprocess;A chart identifying specifically where each limitation of each asserted claim is foundwithin each Accused Instrumentality, including for each limitation that such partycontends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), ormaterial(s) in the Accused Instrumentality that performs the claimed function.For each claim which is alleged to have been indirectly infringed, an identification of anydirect infringement and a description of the acts of the alleged indirect infringer thatcontribute to or are inducing that direct infringement. Insofar as alleged directinfringement is based on joint acts of multiple parties, the role of each such party in thedirect infringement must be described.Whether each limitation of each asserted claim is alleged to be literally present or presentunder the doctrine of equivalents in the Accused Instrumentality;For any patent that claims priority to an earlier application, the priority date to whicheach asserted claim allegedly is entitled; andIf a party claiming patent infringement wishes to preserve the right to rely, for anypurpose, on the assertion that its own apparatus, product, device, process, method, act, orother instrumentality practices the claimed invention, the party shall identify, separatelyfor each asserted claim, each such apparatus, product, device, process, method, act, orother instrumentality that incorporates or reflects that particular claim.If a party claiming patent infringement alleges willful infringement, the basis for suchallegation.3-2. Document Production Accompanying Disclosurepatent infringement shall produce to each opposing party or make available for inspection andcopying:USDC Patent Local Rules Revised December 1, 2009PAT-4
(a)(b)(c)(d)(e)Documents (e.g., contracts, purchase orders, invoices, advertisements, marketingmaterials, offer letters, beta site testing agreements, and third party or joint developmentagreements) sufficient to evidence each discussion with, disclosure to, or other manner ofproviding to a third party, or sale of or offer to sell, or any public use of, the claimeddocument as required herein shall not constitute an admission that such documentevidences or is prior art under 35 U.S.C. § 102;All documents evidencing the conception, reduction to practice, design, and developmentof each claimed invention, which were created on or before the date of application for thepatent in suit or the priority date identified pursuant to Patent L.R. 3-1(f), whichever isearlier;A copy of the file history for each patent in suit; andAll documents evidencing ownership of the patent rights by the party asserting patentinfringement.If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents sufficientto show the operation of any aspects or elements of such instrumentalities the patentclaimant relies upon as embodying any asserted claims.The producing party shall separately identify by production number which documentscorrespond to each category.3-3. Invalidity ContentionsInfringem(a)(b)The identity of each item of prior art that allegedly anticipates each asserted claim orrenders it obvious. Each prior art patent shall be identified by its number, country oforigin, and date of issue. Each prior art publication shall be identified by its title, date ofpublication, 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, thedate the offer or use took place or the information became known, and the identity of theperson or entity which made the use or which made and received the offer, or the personor entity which made the information known or to whom it was made known. Prior artunder 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) fromwhom 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 theperson(s) or entities involved in and the circumstances surrounding the making of theinvention before the patent applicant(s);Whether each item of prior art anticipates each asserted claim or renders it obvious. Ifobviousness is alleged, an explanation of why the prior art renders the asserted claimobvious, including an identification of any combinations of prior art showingobviousness;USDC Patent Local Rules Revised December 1, 2009PAT-5
Page 1 and 2: April 9, 2012The Honorable David J.
Page 3: C. The ACC and its Intellectual Pro
Page 8 and 9: over the Petitioner by the other pa
Page 10 and 11: EXHIBIT 1
Page 12 and 13: should be made applicable to that c
Page 14 and 15: dated and signed by counsel of reco
Page 16 and 17: (c) A chart identifying specificall
Page 19 and 20: is made by a party. If the defendan
Page 21 and 22: infringement that will rely on an o
Page 23 and 24: esolving differences, and facilitat
Page 25 and 26: (a) Not later than 45 days after se
Page 29 and 30: 1. SC OPE O F RU L ES1-1. TitleThes
Page 31: following categories of discovery r
Page 35 and 36: (b)(c)Recent discovery of material,
Page 37 and 38: (b)(c)(d)(e)of all references from
Page 41 and 42: consent or object. Non-exhaustive e
Page 43: (e) Whether any party proposes to c

ACC and IP Committee Letter regarding IPR and PGR

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