S.D. Tex. P. R. 3-2 — Document Production Accompanying Disclosure: 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.
(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, or any public use of, the claimed invention before the application date for the patent-in-suit; (2) for any patent-in-suit that may be subject to pre-AIA law, 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; (4) license agreements for the patents-in-suit; and (5) documents evidencing the chain of title of 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.
(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