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CAND decision re disclose prior art references in your invalidity contentions

PatDek also tracks document production information to ensure that the prior art is not only disclosed in contentions, but also produced as part of discovery.  Brilliant Instruments (see here and here) is a cautionary tale to seek permission before including undisclosed invalidity contentions in an expert report.

it is extremely important to disclose each and every prior art reference in the Invalidity Contentions, or otherwise you cannot use them to establish invalidity.  In Brilliant Instruments, Inc. v. GuideTech, Inc., 4-09-cv-05517 (CAND), District Court Judge Claudia Wilken granted Defendant’s motion to strike prior art references from plaintiff’s expert report that were not include in plaintiff’s invalidity contentions.


via It’s sooooo~ important to disclose each and every prior art reference in your Invalidity Contentions.

The administration portal allows you to define a Bates No. for your case.  In the event that the prior art was produced under a different Bates No. scheme from your case, there is also an alternative Bates No. field to cover those situations.  The Bates Nos. also appear in a list identifying all prior art considered in the case.  This is yet a further verification step to confirm that the prior art was analyzed and produced during the preliminary invalidity contentions stage of the case.