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S.D. Tex. P. R. 3-3 — Preliminary Invalidity 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.
After service upon it of the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” each party opposing a patent infringement claim must serve on all parties, by the deadline set forth in the Scheduling Order, “Preliminary Invalidity Contentions” containing the following information: (a) the identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious, including: (1) each prior art patent identified by its number, country of origin, and date of issue; (2) each prior art publication identified by its title, date of publication, and, author and publisher when feasible; (3) (A) In cases subject to pre-AIA § 102, prior art under 35 U.S.C. § 102(b) must 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 that made the use or which made or 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) must 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) must 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); (B) In cases subject to post-AIA § 102, prior art under 35 U.S.C. § 102(a)(1) must be identified by specifying the item offered for sale, in public use, or otherwise available to the public, the date the offer or use took place or the claimed invention was made available, and the identity of the person or entity that made the use or which made or received the offer, or the person or entity that made the claimed invention available or to whom it was made available. Prior art under 35 U.S.C. § 102(a)(2) must be identified by its number, country of origin, and date of issue if it is a patent, or by its application number, country of origin, and filing date if it is a patent application. For prior art under 35 U.S.C. § 102(a)(2), the party asserting invalidity must specify the effective filing date to which that party believes such patent or application is entitled; (b) whether each item of prior art anticipates each asserted claim or renders it obvious and, if the latter, the detailed bases for these contentions; (c) a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element 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 (d) any other invalidity grounds including, but not limited to indefiniteness under 35 U.S.C. § 112(b), or lack of enablement or written description under 35 U.S.C. § 112(a), of any of the asserted claims, including the detailed basis for these contentions;3 (e) a statement of any grounds of invalidity based on eligibility under 35 U.S.C. § 101; and (f) for each patent-in-suit, the party’s contention about the applicability of pre-or post-AIA law and the basis for that contention. 3 References to 35 U.S.C. §§ 112(a) and (b) shall, as applicable, be construed to refer to pre-AIA 35 U.S.C. § 112, ¶¶ 1 or 2, or post-AIA 35 U.S.C. §§ 112(a) or (b).
After service upon it of the “Disclosure of Asserted Claims and Preliminary Infringement Contentions,” each party opposing a patent infringement claim must serve on all parties, by the deadline set forth in the Scheduling Order, “Preliminary Invalidity Contentions” containing the