D. Md. L.R. 804.1

Unless otherwise ordered by the Court, in all cases other than those arising under the

Hatch-Waxman Act (21 U.S.C. § 355), in which a party has asserted a claim of patent

infringement, the parties shall make the following disclosures.

a) Initial Disclosure of Infringement Contentions

Twenty-eight (28) days from the date of the Scheduling Order, any party claiming patent

infringement shall serve on all parties an Initial Disclosure of Infringement Contentions,

separately setting forth for each allegedly infringing party, the following information:

i. Each claim of each patent in suit that is allegedly infringed by each

allegedly infringing party, including for each claim the applicable statutory

subsections of 35 U.S.C. § 271 asserted;

ii. Separately for each allegedly infringed claim, each accused apparatus,

product, device, process, method, act, or other instrumentality (“Accused

Instrumentality”) of each allegedly infringing party of which the party is

aware. This identification shall be as specific as possible. Each product,

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 or process;

iii. A chart identifying specifically where each limitation of each asserted claim

is found within each Accused Instrumentality, including for each limitation

that such party contends is governed by pre-AIA 35 U.S.C. § 112(6) or

post-AIA 35 U.S.C. § 112(f), the identity of the structure(s), act(s), or

material(s) in the Accused Instrumentality that performs the claimed

function;

iv. For each claim which is alleged to have been indirectly infringed, an

identification of any direct infringement, a description of the acts of the

alleged indirect infringer that contribute to or are inducing that direct

infringement, and an identification of the bases upon which the patentee

contends the alleged infringer had knowledge of the patent asserted to be

indirectly infringed. Insofar as alleged direct infringement is based on joint

acts of multiple parties, the role of each such party in the direct

infringement must be described;

v. Whether each limitation of each asserted claim is alleged to be literally

present or present under the doctrine of equivalents in the Accused

Instrumentality;

vi. For any patent that claims priority to an earlier application, the priority date

to which each asserted claim allegedly is entitled;

vii. The date of conception and the date of reduction to practice of each

asserted claim;

viii. 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 shall identify, separately for each asserted claim, each

such apparatus, product, device, process, method, act, or other

instrumentality that incorporates or reflects that particular claim; and

ix. If a party claiming patent infringement alleges willful infringement, the

basis for such allegation.

b) Document Production Accompanying Initial Disclosure of Infringement

Contentions

With the Initial Disclosure of Infringement Contentions, the party claiming patent

infringement shall produce to each allegedly infringing party or make available for inspection

and copying all documents relating to:

i. Any offers to sell or efforts to market each claimed invention prior to the

date of the application for the patent (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);

ii. The standing of the party alleging infringement with respect to each patent

upon which such allegations are based; and

iii. A copy of the file history for each patent in suit.

c) Initial Disclosure of Invalidity Contentions in Defense of Infringement Claims

Fifty-six (56) days from the date of the Scheduling Order, each party opposing a claim

of patent infringement shall serve on all parties its Invalidity Contentions, which shall

contain the following information:

i. 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);

ii. Whether each item of prior art anticipates each asserted claim or renders it

obvious. If obviousness is alleged, an explanation of why the prior art

renders the asserted claim obvious, including an identification of any

combinations of prior art showing obviousness;

iii. A chart 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 pre-AIA 35 U.S.C. § 112(6) or post-AIA 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;

iv. Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under

pre-AIA 35 U.S.C. § 112(2) or post-AIA 35 U.S.C. § 112(b), or enablement

or written description under pre-AIA 35 U.S.C. § 112(1) or post-AIA 35

U.S.C. § 112(a) of any of the asserted claims. This identification must be

as specific as possible. For example, each party asserting an enablement

defense must set forth with particularity what is lacking in the specification

to enable one skilled in the art to make or use the invention, specifically

citing information or materials obtained in discovery to the extent feasible.

Each party asserting an enablement defense must set forth with

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particularity what is lacking in the specification to enable one skilled in the

art to make or use the invention; and

v. If the claimant has alleged willful infringement, the date and a document

reference number for each opinion of counsel upon which the party relies

to support a defense to the willfulness allegation, including, but not limited

to, issues of validity and infringement of any patent in suit.

d) Document Production Accompanying Initial Disclosure of Invalidity Contentions

With the Initial Disclosure of Invalidity Contentions, the party opposing a claim of

patent infringement shall produce or make available for inspection and copying a copy of

any prior art identified in the Initial Disclosure of Invalidity Contentions that 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.