U.S. District Courts providing Patent Local Rules typically require the party claiming patent Infringement to submit infringement contentions within a specified period after the initial complaint is filed, often shortly after the parties’ initial Case Management Conference. Infringement contentions must include, among other things, each accused apparatus, product, device, process, method, act, or other instrumentality (the “Accused Instrumentality”) of each opposing party of which the party is aware, and must be as specific as possible. And, 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. In short, the party claiming infringement should detail all of the theories of infringement that it in good faith believes it can assert.
Patent Local Rule infringement contentions also require production of all documents that relate to the sale or other use of the claimed invention, as well as all documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or other patent priority date identified, whichever is earlier.
A party may be allowed to amend its infringement contentions and related document production only “upon a timely showing of good cause.” Circumstances that support a finding of good cause, provided there is no prejudice to the non-moving party, can include claim construction by the Court different from that proposed by the party seeking amendment, and recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions. Parties ignoring this good cause requirement for amendment do so at the risk of losing a motion to amend, and thereby forfeiting additional substantive evidentiary support for the alleged infringement, and, conceivably, the risk of sanctions.
Proposed amendments to the Federal Rules of Civil Procedure for patent infringement litigation may make infringement contentions a prerequisite for adequate patent litigation threshold pleadings. Until such time, patent litigants must be thoroughly familiar with any Patent Local Rules provided by the judicial district in which their case is pending to maximize the likelihood for success at trial.