Claim chart

The patent rules of the Northern District of California and the Eastern District of Texas each require two kinds of chart, one from each side of the case^1,2. The table follows the Northern District of California rules, with the Eastern District of Texas deadlines for comparison^1,2.

These steps follow the Northern District of California rules for infringement and invalidity contentions¹.

1. List the asserted claimsIdentify each claim allegedly infringed by each opposing party, with the subsections of 35 U.S.C. 271 asserted for each claim¹.
2. Identify what is comparedName each accused product or device by name or model number, if known. For prior art, identify a patent by number, country of origin and date of issue, and a publication by title, date and, where feasible, author and publisher¹.
3. Map every limitationShow specifically where and how each limitation of each asserted claim is found. For a limitation governed by 35 U.S.C. 112(f) (112(6) in the rule's wording), identify the structure, act or material that performs the claimed function¹.
4. Say literal or equivalentFor an infringement chart, state for each limitation whether it is literally present or present under the doctrine of equivalents, and explain how any equivalent is insubstantially different, for example under the function, way, result test¹.
5. Sign it and keep it currentCharts are signed by counsel, certifying they are complete and correct after a reasonable inquiry. Amending contentions requires a court order on a timely showing of good cause¹.

• Ex parte reexamination. The request must explain how each cited reference applies to each claim. The MPEP says this can ideally be provided by a detailed claim chart comparing each claim, limitation by limitation, with the teachings of each reference³.
• Page limit. Claim charts are considered part of a reexamination request and count toward its page limit⁴.
• Preissuance submissions. A third party's concise description of relevance may include claim charts mapping parts of a document to claim elements, but it is not an invitation to propose rejections⁵.
• Inter partes review. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied on (37 CFR 42.104(b)(4))⁶.

The key tests work element by element. A claim is anticipated only if each and every element is found, expressly or inherently, in a single prior art reference⁸. For infringement under the doctrine of equivalents, the US Supreme Court stated in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (1997) that each element of a patent claim is material to defining the scope of the invention, so the doctrine must be applied to individual elements, not to the invention as a whole⁷.

The Northern District of California rules likewise require the chart to address each limitation of each asserted claim, and require the party claiming infringement to say for each limitation whether it is present literally or by equivalents¹.