Invalidity Contentions

• Author: Kenneth L. Dorsney
• Pages: 741-745

Invalidity Contentions

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], submits its Invalidity Contentions (“Contentions”)

supplementing its 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

Contentions supplement Defendant’s Preliminary Invalidity 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 Co-defendants’ 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. [Author], “_____,” [Cite].

4. [Company] Pamphlet, “_____,” (“the Date 2 Pamphlet”“).

5. [Company] Pamphlet, “_____,” (“_____,” the Date 1 Pamphlet”).

6. (“patent”).

B. Summary

As provided in more detail below and in the attached Exhibits, all of the claims of

the ’001 patent are invalid under 35 U.S.C. §103(a) as obvious over combinations of

these prior art references:

• Claims x–yy are invalid as obvious over the ’002 patent in view of [Name]

(Ex. A).

1. Defendant’s Invalidity Contentions provide positions for all claims of the ’001

patent, although claims a, b and e–f are the only claims asserted by Plaintiff against

Defendant.

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