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S.D. Tex. P. R. 3-1 — Disclosure of Asserted Claims and Preliminary Infringement Contentions: the court's own rule, verbatim from RULES OF PRACTICE FOR PATENT CASES IN THE SOUTHERN DISTRICT OF TEXAS ((Amended April 18, 2022)), official PDF, sha-custodied. Court-level requirement: applies in every case before the U.S. District Court for the Southern District of Texas alongside the federal rules and any judge-specific procedures.
As provided in the Scheduling Order issued by the presiding judge at the initial scheduling conference, a party claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” which must contain the following information: (a) each claim of each patent-in-suit that is allegedly infringed by an opposing party; (b) for each asserted claim, a specific and separate identification of each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party, including where possible: (1) each product, device, and apparatus identified by name or model number, and (2) each method or process identified by name, any product, device, or apparatus that, when used, allegedly results in the practice of the claimed method or process; (c) a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that is allegedly governed by 35 U.S.C. § 112(f),1 the identity of the structures, acts, or materials in the Accused Instrumentality that performs the claimed function;2 1 All references to 35 U.S.C. § 112(f) shall, as applicable, be construed to refer to pre-AIA 35 U.S.C. § 112, ¶ 6, or post-AIA 35 U.S.C. § 112(f). 2 Given that the Infringement Contentions are exchanged prior to discovery, this chart will likely be based solely on publicly available information and the reasonable steps required by Rule of 11 of the Federal Rules of Civil Procedure to assert infringement in the Complaint. (d) for each Accused Instrumentality and each element of each asserted claim, identification of whether the element is claimed to be literally present or present under the doctrine of equivalents. For any claim under the doctrine of equivalents, the Infringement Contentions must identify the structure or step in the Accused Instrumentality that is asserted to be equivalent; (e) for each claim that is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each party in the direct infringement must be described. (f) for any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; (g) for each patent-in-suit, the party’s contention as to the applicability of pre-or post-AIA law regarding 35 U.S.C. § 102 and the basis for that contention; and (h) if a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party must identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.
As provided in the Scheduling Order issued by the presiding judge at the initial scheduling conference, a party claiming patent infringement must serve on all parties a “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” which must contain the following info