Appendix 3

• Author: Kenneth Dorsney
• Pages: 561-573

561

A–3

INV A L I D I T Y CO N T E N T I O N S

IN THE UNITED STATES DISTRICT COURT

[Name of District]

[DISTRICT COURT CAPTION]

DEFENDANT’S INVALIDITY CONTENTIONS

Pursuant to Local Rule __, and __, the [Date] Joint Discovery Plan, defendant

[Name of Defendant] submit its Invalidity Contentions (“Contentions”,

supplementing their Preliminary Invalidity Contentions served [Date]).

Defendant's Contentions are based upon the construction of the claims of the

patent-in-suit, U.S. Patent No. 1 ("the ‘001 Patent"),1 as set forth in the Court's Claim

Construction Opinion dated [Date] ("the Claim Construction Opinion”). These

amendments supplement Defendant's original contentions and do not replace them.

Defendant reserves its right to amend and/or supplement these Contentions as permitted

by the local rules and the Court's orders. Defendant also reserves the right to rely on the

codefendants' invalidity contentions and any references cited therein.

I. PRIOR ART REFERENCES

A. Prior Art References

Defendant identifies the following patent and printed publication prior art

references that, when combined, render the claims of the ‘001 patent obvious under 35

U.S.C. § 103(a):

1. U.S. Patent No. 2, issued [Date] to _____ ("the ‘002 patent").

2. U.S. Patent No. 3, issued [Date] to _____ ("the ‘003 patent'").

3. U.S. Patent No. 4, issued [Date] to _____ ("the ‘004 patent").

4. U.S. Patent No. 5, issued [Date] to _____ ("the ‘005 patent").

5. U.S. Patent No. 6, issued [Date] to _____ ("the ‘006 patent").

6. [Author], "_____," [Cite].

7. [Company] Pamphlet, "_____” ("the Date 3 Pamphlet").

8. [Company] Pamphlet, "_____," ("the Date 2 Pamphlet").

9. [Company] Pamphlet, "_____," ("the Date1 Pamphlet").

10. [Company] Pamphlet, "_____," ("the [Company] Dissolution Pamphlet").

11. U.S. Patent No. 7, issued [Date] to _____. ("the ‘007 patent").

Collectively, the Date 3 Pamphlet, the Date 2 Pamphlet and the Date1 Pamphlet

may be referred to herein as "the Pamphlets."

B. Summary

1 Defendant's Invalidity Contentions provide positions for all claims of the ‘001

patent, although claims 1, 2 and 10-15 are the only claims asserted by Plaintiff against

Defendant.