Prior Art Toolkit: Search Protocols, Invalidity Charts, and On-Sale Bar Investigations

Summary. This toolkit collects the working documents for proving, or defeating, prior art under 35 U.S.C. § 102: a critical-date worksheet, a search plan and contemporaneous search log, a reference register, a protocol for capturing and authenticating archived web pages, and a chain-of-custody and teardown record for physical products. It then provides anticipation and obviousness chart templates built to the requirements of local patent rules and the PTAB's petition rules, followed by an on-sale and public use investigation kit: a patent owner history timeline, written discovery, Rule 30(b)(6) topics, a third-party subpoena rider, and a witness interview outline with a corroboration matrix. Litigation templates for invalidity contentions, the § 282(c) pretrial notice, and an expert declaration outline follow. The patent owner's side is covered with a priority support chart, an experimental use evidence file, and an accessibility rebuttal outline, and the inventor's side with a disclosure calendar, evaluation agreement clauses, an IDS log, and a Rule 130 declaration outline. Each template states its purpose, owner, and timing and is followed by drafting notes tied to the controlling statutes and cases, using one invented irrigation-controller dispute throughout.

Invalidity cases are usually won with unglamorous paper: a search log written while the searches ran, a 2016 PDF captured with its timestamp intact, an invoice that dates a sale to the week, and a witness whose memory matches all three. The cases that lose often had better art and worse paperwork. These templates are the paperwork, for both the side that needs the art to count and the side that needs it not to.

How to use this toolkit

Each template states its purpose, its owner (the person who should prepare it), and when to use it, then gives the template and short drafting notes. Text in [BRACKETS] is to be filled in. Adapt every template to the governing local rules, the scheduling order, and the protective order; none of them is a substitute for reading those first.

The law behind the templates is in Prior Art Under the America Invents Act: Section 102, the On-Sale Bar, Public Use, and the One-Year Grace Period. The sequence of steps is in Finding, Qualifying, and Using Prior Art: A Practical Guide, and the questions each reference must answer are in the Prior Art Qualification Checklist: A Practical Checklist.

The running example. Larkspur Irrigation, Inc. owns U.S. Patent No. [11,XXX,XXX] (the '[XXX] patent), which claims an irrigation pump controller that reads wireless soil-moisture sensors, computes a zone water deficit, and adjusts pump speed to hold a pressure setpoint selected according to that deficit. The nonprovisional application was filed June 1, 2020 and claims priority to a provisional application filed June 3, 2019. Larkspur sued Marlow Agritech LLC and served the complaint on October 6, 2025, asserting claims 1, 9, and 14. Marlow's lead engineer remembers a 2016 manual for a competitor's controller, the Corvane AquaTrac 3, once posted on Corvane's support site. Larkspur's own history includes a paid "Field Partner" installation at Ridgeback Vineyards that began in April 2018, and a booth with a live demonstration and early-adopter order forms at an agricultural technology expo in February 2019. All names and facts are invented.

The short version of the law. Under the AIA, a claimed invention is unpatentable if, before its effective filing date, it was patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or if it was described in an earlier-filed U.S. or PCT application naming another inventor (35 U.S.C. § 102(a)). The inventor's own disclosures within one year before that date are excepted (§ 102(b)(1)(A)). An invention is on sale when it is the subject of a commercial offer and ready for patenting, Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), even if the sale was confidential, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. 123 (2019). In court, invalidity must be proved by clear and convincing evidence, Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91 (2011); an inter partes review can rest only on patents and printed publications, 35 U.S.C. § 311(b). Every template below serves one of those rules.

Template 1: Matter fact sheet and critical-date worksheet

Purpose: one page recording the facts that decide which art counts. Owner: an associate or paralegal pulls the file; the responsible lawyer checks every date. When to use: the first day of any validity question, on either side. A patent owner should prepare it before sending a demand letter.

MATTER FACT SHEET                                   Prepared [DATE] by [NAME]
Patent: U.S. [11,XXX,XXX]     Title: [Adaptive Irrigation Pump Controller]
Owner of record: [Larkspur Irrigation, Inc.]   Assignments: [REEL/FRAME]
Claims at issue: [1, 9, 14]   Independent: [1, 9]
PRIORITY CHAIN
  [Provisional 63/XXX,XXX]       filed [2019-06-03]
  [Nonprovisional 16/XXX,XXX]    filed [2020-06-01]  claim: [119(e) to provisional]
  Foreign or PCT members:        [NONE]
STATUTE: AIA? (any claim ever with EFD on or after 2013-03-16)  [YES]
CLAIM-BY-CLAIM EFFECTIVE FILING DATE
  Claim | Earliest supporting appl. | Support cite          | Disputed element      | EFD
  1     | [Provisional]             | [p. 4:3-20; Fig. 2]   | [1(d) "setpoint ...   | [2019-06-03 or
        |                           |                       |  according to deficit"]  2020-06-01]
  9     | [ ]                       | [ ]                   | [ ]                   | [ ]
  14    | [ ]                       | [ ]                   | [ ]                   | [ ]
CRITICAL DATES                      If EFD holds          If EFD falls back
  Third-party art cutoff (EFD):     [2019-06-03]          [2020-06-01]
  Grace-period line (EFD - 1 yr):   [2018-06-03]          [2019-06-01]
  Pre-AIA only: 102(b) date [ ]  invention date claimed [ ]
DEADLINES
  Complaint served [2025-10-06] -> IPR petition bar date [2026-10-06]
  Invalidity contentions due [ ]   282(c) notice: at least 30 days before trial
RELATED: family members [ ]; IPR/PGR/reexam [ ]; foreign counterparts [ ]

Drafting notes. Effective filing dates are determined claim by claim under 35 U.S.C. § 100(i), and support must run through every application in the chain, Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997). The two-column layout is deliberate. In the example, if claim 1 keeps its June 3, 2019 date, Larkspur's February 2019 expo falls inside the grace period and drops out; if the provisional does not describe element 1(d), the claim falls back to June 1, 2020 and the expo becomes prior art, which is how the claims in New Railhead Manufacturing, L.L.C. v. Vermeer Manufacturing Co., 298 F.3d 1290 (Fed. Cir. 2002), were lost. The April 2018 vineyard installation is outside the grace period on either date. Once Marlow puts in art that predates the actual filing date, Larkspur must come forward with evidence of support in the provisional, PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008). Compute the inter partes review bar date from service of the complaint under 35 U.S.C. § 315(b), and write it on the front of the file.

Template 2: Search plan

Purpose: a short written plan that tells searchers what they are looking for, where, through what date, and when to stop. Owner: the responsible lawyer, with the technical lead or outside search firm. When to use: before the first query; revise when constructions or priority positions change. Applicants use the same plan for patentability and freedom-to-operate searches.

SEARCH PLAN: '[XXX] patent, claims [1, 9, 14]          Version [1.0] [DATE]
Privileged and confidential: attorney work product
1. TARGET   Claims and constructions (attach Template 1). Date limit: art
            before [2020-06-01]; flag anything before [2019-06-03] and
            before [2018-06-03].
2. ELEMENT MAP
   Element | Patent's words            | Synonyms, older terms         | Equivalents
   1(b)    | wireless soil-moisture    | soil water content probe;     | capacitance or TDR
           | sensors                   | tensiometer; field telemetry  | probe with radio link
   1(d)    | setpoint selected         | deficit irrigation; demand-   | pressure schedule
           | according to the deficit  | based pressure; ET-based      | keyed to moisture
3. CLASSIFICATION  CPC groups on the patent, its cited references, and
            family members [e.g., A01G 25/16, control of watering]; add
            groups found on the best hits.
4. SOURCES, IN ORDER
   (a) The patent's file history, cited art, family, and prior challenges
   (b) Patent Public Search, Google Patents, Espacenet, PATENTSCOPE
   (c) Non-patent literature: IEEE Xplore, Google Scholar, university
       extension and irrigation district reports, trade magazines
   (d) Archived web: competitors' product and support pages (Template 5)
   (e) Products: dealers, distributors, auction listings (Template 6)
   (f) The patent owner's own history (Template 9)
5. LANGUAGES  [English; Spanish; Hebrew; Chinese] machine translation for
              screening; certified translation for anything relied on
6. PEOPLE AND COMPANIES  [competitors; inventors' prior employers;
              university labs; component suppliers]
7. BUDGET AND STOPPING RULE  [hours per source]; stop when [two references
              each anticipate claims 1 and 9 under both constructions, or
              budget exhausted]; report weekly
8. WITNESSES  Who will testify about the search if estoppel or diligence is
              litigated: [NAME]

Drafting notes. Write the plan as if a court may someday read it. If a petitioner takes an inter partes review to a final written decision, estoppel under § 315(e)(2) reaches the grounds it raised or reasonably could have raised, measured by what a skilled searcher conducting a diligent search would have found, Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274 (Fed. Cir. 2023), and the plan and log are evidence on that question. Plans and logs prepared for litigation are work product under Fed. R. Civ. P. 26(b)(3), but facts and data a testifying expert considers must be disclosed under Rule 26(a)(2)(B), so keep the expert's materials separate from the search team's working notes. Use date operators to keep results inside the window (Google Patents accepts limits such as before:priority:20200601), but do not stop at the critical date: later documents can describe earlier products, supply motivation to combine, or lead to the art itself. The Patent Litigation Toolkit: A Roadmap and Research Guide lists additional research sources by phase.

Template 3: Contemporaneous search log

Purpose: the record of what was searched, how, and what was found, made as the searching happens. Owner: each searcher; reviewed weekly by the lawyer. When to use: every query in every source, including the ones that find nothing.

Drafting notes. A log reconstructed from memory cannot do the work of one written at the time, and it cannot help a witness who must later explain how a capture was made. Record dead ends and empty results, because they show diligence and define what was searched. Never edit an entry after the fact; add a dated correction row instead. Applicants should keep the same kind of log during prosecution, because the art an applicant's team found and considered is exactly what the duty of disclosure in 37 C.F.R. § 1.56 asks about (Template 17).

Template 4: Reference register

Purpose: a single table tracking every candidate reference from discovery to trial, so that nobody relies on art whose proof is unfinished. Owner: the associate running invalidity. When to use: from the first hit onward; review it before every contentions deadline, petition, and expert report.

Drafting notes. The register is the bridge between the Prior Art Qualification Checklist: A Practical Checklist and the documents you serve. The "Forums" column matters more than it looks: the Board hears only patents and printed publications (§ 311(b)), so the units and the vineyard installation can be used only in court, at the ITC, or in a post-grant review filed within nine months of grant, while their manuals and spec sheets can also go to the Board. Estoppel after an inter partes review does not reach public use or on-sale grounds, even when printed materials help prove them, Ingenico Inc. v. IOENGINE, LLC, 136 F.4th 1354 (Fed. Cir. 2025), which is why entries like R-030 and E-001 are worth developing even if Marlow files a petition on R-012.

Template 5: Archived web capture and authentication package

Purpose: preserve an archived page or file in a form that can be authenticated and dated, and plan the proof before anyone relies on it. Owner: a paralegal or litigation-support analyst, under a lawyer's direction; the person who captures should be someone who can testify. When to use: the day a candidate page or file is found. Patent owners should use the same protocol to preserve their own archived pages before suit.

ARCHIVE CAPTURE PROTOCOL                       Matter [ ]   Ref. [R-012]
1. List every capture of the FILE and of the PAGE that linked to it:
   web.archive.org/cdx/search/cdx?url=[corvane.com/support/aquatrac3_revC.pdf]
   Record each 14-digit timestamp (UTC), status code, MIME type, digest.
   Same digest across captures = same bytes; a new digest = a changed file.
2. Retrieve the earliest pre-critical-date capture two ways:
   (a) replay view, screenshot showing the archive URL and timestamp
   (b) original bytes: web.archive.org/web/[TIMESTAMP]id_/[ORIGINAL URL]
3. Hash every file (SHA-256); store originals read-only; log names.
4. Capture the link path for the same period (home page > products >
   support > manual) to show how an interested person would find it.
5. Record PDF metadata (creation date, producer) as a lead only.
6. Find independent copies: printed manual in a purchased unit (Template
   6), customer files, distributor sites, file histories that cite it.
7. Proof plan: [archive affidavit or witness] [stipulation] [Rule 36
   request] [comparison with authenticated copy] [witness who used it]

DECLARATION OF [NAME] REGARDING ARCHIVED WEB CAPTURES
1. I am a [litigation support analyst] at [FIRM]. I have personal knowledge
   of the facts in this declaration.
2. On [DATE] at [TIME, ZONE], I used the Internet Archive's Wayback Machine
   to retrieve the captures listed in Appendix A, following the protocol
   attached as Appendix B.
3. Exhibit [X] is a true and correct copy of the file I retrieved from
   [ARCHIVE URL]. Its SHA-256 hash value is [VALUE]. I have not altered it.
4. Exhibit [Y] is a true and correct set of screenshots showing the pages
   linking to that file, as displayed by the Wayback Machine on [DATE].
I declare under penalty of perjury that the foregoing is true and correct.
Executed on [DATE] at [CITY, STATE].              [SIGNATURE]

REQUEST FOR ADMISSION NO. [ ] (Fed. R. Civ. P. 36(a)(1)(B))
Admit that Exhibit [X] is a genuine copy of the document titled "AquaTrac 3
Installation and Operation Manual, Rev. C" as it was available at
[ORIGINAL URL] on [DATE].

Drafting notes. The capturing analyst's declaration, made under 28 U.S.C. § 1746, proves what the archive displayed when the analyst looked; it does not prove what the original site displayed in 2016. That second link comes from the archive's own records custodian, from a witness, or from circumstances. Courts differ on how much is needed: archive screenshots were excluded without testimony from someone with knowledge of the archive's reliability in Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014), and admitted on an Internet Archive employee's testimony in United States v. Gasperini, 894 F.3d 482 (2d Cir. 2018). The Federal Circuit accepted authentication under Fed. R. Evid. 901(b)(3) by comparison with copies in the patent owner's own certified file histories in Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364 (Fed. Cir. 2021), so step 6 is often the cheapest proof available. Ask opposing counsel to stipulate to authenticity before paying for an archive affidavit; a refusal followed by a request for admission under Fed. R. Civ. P. 36 sets up a cost-shifting argument under Rule 37(c)(2) if the genuineness is later proved. For the general framework of electronic evidence, see Lorraine v. Markel American Insurance Co., 241 F.R.D. 534 (D. Md. 2007), and for the step-by-step foundation, Authenticating Website Evidence: A Practical Checklist.

Template 6: Product acquisition, chain-of-custody, and teardown record

Purpose: prove that a physical unit existed in the claimed configuration before the critical date, and that nothing happened to it since. Owner: the lawyer directs; an engineer who will testify performs the teardown; a paralegal keeps custody. When to use: when a unit is located, before anyone opens it.

PRODUCT EVIDENCE RECORD                     Item [R-030-A]   Matter [ ]
ACQUISITION  Source [auction listing URL + capture]; seller [NAME, CONTACT];
             price [ ]; ordered [DATE]; received [DATE] by [NAME]
IDENTITY     Model [AquaTrac 3]; serial [ ]; date codes [PCB 2016-W38];
             labels, packaging, printed materials [Manual Rev. C]
FIRMWARE     Version [ ], read by [non-destructive method]; hash of image [ ]
PROVENANCE   Seller declaration [Y/N]; original invoice [ ]; manufacturer
             records by subpoena [Template 12]
CONDITION    Signs of repair, replaced parts, or updates [ ]
CUSTODY LOG  Date/time | From | To | Purpose | Seal no. | Signature
TEARDOWN     Protocol [ref]; date [ ]; engineer [ ]; video [file, hash];
             photos [range]; parts bagged and labeled [IDs]
OBSERVATIONS Mapped to claim elements 1(a) to 1(d): [ ]
STORAGE      Location; access log

Drafting notes. Authentication comes from a witness with knowledge and from distinctive characteristics such as serial numbers and date codes (Rule 901(b)(1) and (b)(4)). Dating the unit is the hard part: a date code shows when a board was made, not when the product was sold or how it was configured on the critical date, so pair it with sales records and firmware history. In litigation, give the other side notice and an opportunity to attend any destructive teardown; a unilateral teardown invites a spoliation fight. Every oral account of how the product worked in 2016 needs documentary corroboration, as discussed under Template 13. The Litigation Hold and Evidence Preservation Checklist: A Practical Checklist covers the preservation side.

Template 7: Anticipation claim chart

Purpose: show, element by element, where a single reference discloses each limitation, in the form courts and the Board expect. Owner: the associate drafts; the technical expert confirms every mapping; the responsible lawyer reviews constructions. When to use: contentions, IPR petitions, expert reports, and summary judgment.

Drafting notes. Anticipation requires every element, arranged as claimed, in a single reference, expressly or inherently, Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987). Quote the reference rather than paraphrase it, and cite the page, column and line, paragraph, figure, and reference numeral. Do not borrow from a different embodiment without a passage that links them, Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), or from another document unless the reference incorporates it with detailed particularity, Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (Fed. Cir. 2000). Where a limitation is not express, the inherency column must show it is necessarily present, Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991). Local patent rules modeled on the Northern District of California's Patent L.R. 3-3 require a chart showing specifically where and how each limitation is found, and an IPR petition must specify where each element is found in the patents or printed publications relied on, 37 C.F.R. § 42.104(b). Keep the claim lettering identical across every chart, contention, and report. For construction-dependent rows, the Claim Construction Toolkit: Charts, Briefs, Expert Declarations, and Hearing Materials has matching templates.

Template 8: Obviousness combination chart and motivation statement

Purpose: show which reference supplies each element and why a skilled artisan would have combined them. Owner: the technical expert, with the associate. When to use: whenever no single reference discloses every element, and as a fallback for every anticipation theory.

MOTIVATION STATEMENT (one per combination)
A person of ordinary skill in [agricultural irrigation control] as of
[June 3, 2019] would have modified R-012's star-topology sensor network to
use the multi-hop mesh network of R-019 because [R-012 at 12 warns that
probes beyond the base radio's range require repeaters; R-019 at 2 explains
that mesh routing extends coverage across large blocks without repeaters].
A skilled artisan would have expected success because [R-019 reports field
results with the same class of probe]. Nothing in R-012 teaches away
because [ ]. Objective indicia the patent owner may raise: [commercial
success of Larkspur's controller; nexus questions: ].

Drafting notes. The statutory question under 35 U.S.C. § 103 is framed by Graham v. John Deere Co., 383 U.S. 1 (1966), and the reason to combine can come from the references, the problem, or the market, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). It must be stated, not assumed: an expert who showed that every element existed somewhere but supplied no reason to combine, ignored the relevant date, and skipped the objective indicia offered "impermissible hindsight" in InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327 (Fed. Cir. 2014). Confirm that each secondary reference is analogous art, either from the same field of endeavor or reasonably pertinent to the inventor's problem, In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004); In re Clay, 966 F.2d 656 (Fed. Cir. 1992). "Common sense" can supply a missing limitation only rarely, and only with a reasoned explanation backed by evidence, Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). The applicant's side of the same analysis is in Overcoming Obviousness Rejections: A Comprehensive Guide to Section 103 Analysis.

Template 9: Patent owner history timeline

Purpose: map every pre-filing disclosure, use, offer, and sale by the patent owner against the critical dates, version by version. Owner: the challenger's associate builds it from public sources and then from discovery; the patent owner's counsel should build the same table before filing suit. When to use: in the first month of the case (challenger) or before the demand letter (patent owner).

Drafting notes. For each row, the on-sale question is whether there was a commercial offer under general contract law and whether the invention was ready for patenting, Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001); Pfaff. The public use question is whether working units were shown or used without restriction, as in Minerva Surgical, Inc. v. Hologic, Inc., 59 F.4th 1371 (Fed. Cir. 2023). A "Field Partner" fee does not become experimental because of its label, Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., 32 F.4th 1161 (Fed. Cir. 2022), and testing the customer runs to see whether the product suits it is not the inventor's experiment, Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361 (Fed. Cir. 2008). The "version and configuration" column decides most of these disputes: the vineyard units count only if they embodied every element, which is why firmware release records matter as much as invoices. Fill the "status" column for both effective filing dates from Template 1 so that the priority attack and the on-sale attack are visibly linked.

Template 10: Written discovery on pre-filing commercial activity

Purpose: requests that pin down every pre-filing disclosure, offer, sale, and use, with the documents that date them. Owner: the challenger's associate. When to use: at the opening of fact discovery, sequenced so the answers arrive before the Rule 30(b)(6) deposition. Patent owners should assemble the responsive set before filing suit.

DEFINITIONS (excerpt)
"Claimed Subject Matter" means any product, prototype, system, firmware,
  software, or service that practices or was designed to practice any
  asserted claim, including every version and predecessor, released or not.
"Pre-Filing Period" means [January 1, 2017] through [June 1, 2020].
"Disclosure Event" means any demonstration, display, presentation,
  publication, posting, quotation, offer, sale, lease, loan, license, pilot,
  beta, evaluation, field trial, or delivery of Claimed Subject Matter to any
  person other than [Larkspur]'s employees.

REQUESTS FOR PRODUCTION (Fed. R. Civ. P. 34)
1. Documents sufficient to identify each Disclosure Event, including its
   date, location, participants, and the version of Claimed Subject Matter.
2. All quotations, proposals, price lists, order forms, purchase orders,
   deposits, invoices, contracts, and shipping records for Claimed Subject
   Matter during the Pre-Filing Period.
3. All agreements, test plans, data, reports, and communications concerning
   any pilot, beta, evaluation, field trial, or partner program.
4. All confidentiality or nondisclosure agreements with any person who
   received, observed, or used Claimed Subject Matter.
5. All trade show, conference, and investor materials concerning Claimed
   Subject Matter, including booth graphics, spec sheets, videos, lead lists,
   and badge scans.
6. Firmware and software release notes and engineering change records
   sufficient to show the configuration of each version.
7. Supply and contract manufacturing agreements, purchase orders to
   suppliers, and documents showing who held title to finished goods.

INTERROGATORIES (Fed. R. Civ. P. 33)
1. Identify each Disclosure Event, stating its date, participants,
   location, terms, version, and the documents that record it.
2. State the date and circumstances of the first offer for sale of Claimed
   Subject Matter that included [element 1(d)].
3. If you contend any Disclosure Event was experimental, state all facts
   supporting that contention, including the claimed feature tested, the
   protocol, the records kept, who controlled the units, and any payment.
4. For each asserted claim, state the effective filing date you contend it
   is entitled to and identify where each element is described in each
   application you rely on.

REQUESTS FOR ADMISSION (Fed. R. Civ. P. 36)
1. Admit that [LARK-001877] is a genuine copy of an order form made
   available at your booth at [EXPO] on February 12 to 14, 2019.
2. Admit that Ridgeback Vineyards was not subject to any written obligation
   of confidentiality concerning the controllers installed in April 2018.

Drafting notes. Interrogatories are limited to 25, including discrete subparts, under Fed. R. Civ. P. 33(a)(1), so spend them on contention and identification questions and let document requests under Fed. R. Civ. P. 34 do the rest. Ask for the first offer by version, because a sale counts only if the thing offered embodied the claim, and it counts even if nobody recognized that at the time, Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (Fed. Cir. 1999). Request 7 tests the contract manufacturing line drawn in The Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (en banc). Documents usually decide these disputes: an employee's conclusory account of what the company would have done could not overcome the documentary record of an offer in Merck & Cie v. Watson Laboratories, Inc., 822 F.3d 1347 (Fed. Cir. 2016). For objections and responses, see Mastering Document Discovery: A Comprehensive Guide to Objecting and Responding to Requests for Production.

Template 11: Rule 30(b)(6) topics on pre-filing activity

Purpose: corporate testimony that binds the patent owner's account of its own history. Owner: the challenger's lead lawyer. When to use: after the documents in Template 10 are produced and reviewed, so the examination can be built around them.

NOTICE OF DEPOSITION OF [LARKSPUR IRRIGATION, INC.] UNDER RULE 30(b)(6)
Matters for examination:
1. The development of the Claimed Subject Matter from conception through
   [June 1, 2020], including each prototype and version and its configuration.
2. Each Disclosure Event identified in response to Interrogatory No. 1,
   including its purpose, terms, participants, confidentiality, and records.
3. The Ridgeback Vineyards Field Partner program: negotiation, terms,
   payment, installation, operation, data collection, control of the units,
   and how it ended.
4. [Larkspur]'s participation in [EXPO] in February 2019, including the
   demonstration, materials distributed, orders or deposits taken, and
   follow-up with attendees.
5. Quotations, orders, deposits, invoices, and shipments of Claimed Subject
   Matter before [June 1, 2020].
6. Supply and contract manufacturing arrangements before [June 1, 2020],
   including title to goods and any supplier's right to sell to others.
7. Firmware and software release history before [June 1, 2020].
8. The search for and collection of documents responsive to Requests 1-7.

Drafting notes. Describe each matter with reasonable particularity, and confer with the other side about the matters for examination before or promptly after serving the notice, as Fed. R. Civ. P. 30(b)(6) has required since 2020. The organization must prepare its designee on information reasonably available to it, so a designee who "does not know" what happened at the vineyard is a problem for the patent owner, not the challenger. Topic 8 lets you test whether pre-filing sales records were actually searched. For preparation on both sides, see Preparing and Defending a Rule 30(b)(6) Deposition and the Rule 30(b)(6) Deposition Preparation Checklist: A Practical Checklist.

Template 12: Third-party subpoena rider

Purpose: obtain dated records from the people on the other side of the patent owner's transactions, and from the makers of third-party art. Owner: the challenger's associate. When to use: once the counterparties are identified; early, because nonparties are slow.

SCHEDULE A TO SUBPOENA TO PRODUCE DOCUMENTS (Fed. R. Civ. P. 45)
Instructions: Time period [January 1, 2016] to [June 1, 2020] unless stated.
Produce documents as kept in the usual course of business, and electronic
documents in native or searchable form with metadata. Please complete the
attached certification under Federal Rule of Evidence 902(11) so that no
records custodian needs to testify.

TO RIDGEBACK VINEYARDS LLC (customer)
1. All agreements, purchase orders, invoices, payment records, and
   correspondence with [Larkspur] concerning irrigation controllers.
2. Documents sufficient to show when the controllers were installed, who
   operated them, and any restriction on their use or disclosure.
3. Manuals, specification sheets, screenshots, photographs, videos, and
   data exports concerning the controllers.

TO [EXPO ORGANIZER]
1. [Larkspur]'s exhibitor contract, booth assignment, and floor plan.
2. Attendance figures, the exhibitor directory or program, and press lists.
3. Photographs or video of [Larkspur]'s booth.

TO CORVANE SYSTEMS (maker of third-party art)
1. Documents sufficient to show each revision of the AquaTrac 3 manual and
   the dates each was posted to corvane.com or shipped with units.
2. Documents sufficient to show AquaTrac 3 sales before [June 3, 2019],
   by firmware version.

Drafting notes. Serve notice and a copy on every party before serving a documents subpoena on a nonparty, Fed. R. Civ. P. 45(a)(4); set the place of compliance within 100 miles of where the recipient resides or regularly transacts business (Rule 45(c)(2)); and take reasonable steps to avoid undue burden (Rule 45(d)(1)), which in practice means narrow requests and an offer to pay copying costs. A certification of regularly conducted activity under Fed. R. Evid. 902(11), with written notice to the other side, authenticates business records without a custodian deposition, and the records then come in under the business records exception in Fed. R. Evid. 803(6). Voluminous sales records can be presented through a summary under Fed. R. Evid. 1006. A friendly phone call before the subpoena often produces better documents faster. The Nonparty Discovery Toolkit: Subpoenas, Third-Party Records, and Privilege covers objections and motion practice, and the Cross-Border Discovery Toolkit: 1782 Applications, Hague Requests, and Blocking Statute Analyses covers records held abroad.

Template 13: Witness interview outline and corroboration matrix

Purpose: capture a witness's account of a prior use, sale, or publication early, and tie every fact to a document before anyone signs a declaration. Owner: a lawyer conducts the interview, with a second person taking notes. When to use: before any declaration, expert report, or § 282(c) notice names the witness.

INTERVIEW OUTLINE: [former Corvane support engineer]       Date [ ]
1. Preliminaries: who we represent; that we do not represent the witness;
   no request for any former employer's privileged information.
2. Background: role and dates at [Corvane]; responsibilities for manuals
   and the support website.
3. The document: who wrote Rev. C; when it was finished; how it was posted;
   how customers found it; whether it shipped with units.
4. Dates: what fixes each date in memory; calendars, emails, release notes.
5. The product: versions sold before 2017; how deficit mode worked; who
   bought units; where units might still exist.
6. Documents: what the witness kept; where company records would be.
7. Others: who else would know; contact details.
8. Compensation: none for testimony; reasonable payment for time only,
   disclosed in writing.

Drafting notes. Oral testimony offered to invalidate a patent must be corroborated, whether the witness is interested, Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998), or not, Finnigan Corp. v. International Trade Commission, 180 F.3d 1354 (Fed. Cir. 1999). Contemporaneous documents are the preferred corroboration, Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728 (Fed. Cir. 2002), assessed under a rule of reason, Sandt Technology, Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344 (Fed. Cir. 2001); a designer's date book entry helped corroborate the date of a party at which she displayed her device in Beachcombers International, Inc. v. WildeWood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994). Compensation is the other trap. Reasonable payment for a fact witness's time is generally permitted, but payment for the content of testimony is not (ABA Model Rule of Professional Conduct 3.4(b) and comment [3]; ABA Formal Opinion 96-402), state rules vary, and in TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151 (Fed. Cir. 2004), specific facts undermining paid consultants' recollections of a trade show handout defeated summary judgment of invalidity. Model Rule 4.2 limits contact with represented persons, including some current employees of a represented organization, and Model Rule 4.3 governs interviews of unrepresented witnesses.

Template 14: Invalidity contentions skeleton and § 282(c) notice

Purpose: disclose every invalidity theory in the form the local rules and the statute require, so that none is excluded at trial. Owner: the challenger's lead lawyer. When to use: by the local-rule deadline (often 45 days after the infringement contentions in districts that follow the Northern District of California or Eastern District of Texas model), amended promptly as discovery yields new art, and the notice at least 30 days before trial.

[MARLOW AGRITECH LLC]'S INVALIDITY CONTENTIONS
I.   Preliminary statement: contentions based on information reasonably
     available; positions under each party's proposed constructions;
     reservation to amend under [LOCAL RULE] on a showing of good cause.
II.  Priority: claims [1, 9, 14] are not entitled to [June 3, 2019] because
     the provisional does not describe [element 1(d)] [cite]; their
     effective filing date is [June 1, 2020].
III. Identification of prior art
     A. Patents and published applications: number, country, date of issue
        or publication, and named patentee or applicant.
     B. Printed publications: title, date, author, publisher [R-012; R-019].
     C. Public uses, offers, and sales: the item, the date, and the persons
        who made and received the offer or use [R-030; E-001; E-002].
IV.  Anticipation: each reference and the claims it anticipates (Exhibit A
     charts, one per reference, in the Template 7 format).
V.   Obviousness: each combination, the reasons to combine, and the claims
     (Exhibit B charts and motivation statements, Template 8).
VI.  Other grounds: [35 U.S.C. 101; 112(a); 112(b)].
VII. Production: copies of all art not in the file history, with English
     translations of foreign-language portions relied on.

NOTICE PURSUANT TO 35 U.S.C. § 282(c)
Defendant [Marlow Agritech LLC] gives notice that at trial it may rely on
the following as anticipation of the '[XXX] patent or as showing the state
of the art:
1. Patents: [country, number, date, name of patentee] ...
2. Publications: [title, date, and page numbers] ...
3. Persons who may be relied upon as the prior inventor or as having prior
   knowledge of, or as having previously used or offered for sale, the
   invention of the patent in suit: [name and address] ...
This notice supplements Defendant's invalidity contentions served [DATE]
and expert reports served [DATE].

Drafting notes. Section 282(c) of 35 U.S.C. § 282 requires written notice, at least 30 days before trial, of the patents and publications relied on and the names and addresses of the people relied on for prior knowledge, use, or offers for sale; without it, that proof may come in only on terms the court sets. Serve it even when the contentions already list everything: courts often accept detailed contentions as written notice, but a dedicated notice with every witness's name and address removes the argument. Amendments to contentions require good cause, which means diligence in finding the art and in moving to add it, O2 Micro International Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355 (Fed. Cir. 2006), so date-stamp the search log entry that found each late reference. Plead invalidity as a defense and counterclaim in the answer; the Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines has forms.

Template 15: Expert declaration outline

Purpose: an outline for the technical expert's invalidity declaration or report, with a separate track for the facts of public accessibility. Owner: the expert drafts the opinions; counsel organizes the record and the legal standards. When to use: with an IPR petition, or for the opening expert report in litigation; patent owners use the same outline for the rebuttal.

DECLARATION OF [EXPERT] REGARDING INVALIDITY OF THE '[XXX] PATENT
I.    Qualifications; compensation; prior testimony (last four years)
II.   Materials considered (Appendix A): every reference, capture, product,
      deposition, and document relied on
III.  Legal standards as provided by counsel (anticipation, obviousness,
      printed publication, burden of proof in this forum)
IV.   Person of ordinary skill in the art as of [June 3, 2019] and [June 1, 2020]
V.    Technology background, with citations to dated sources
VI.   Claim constructions applied (both constructions where disputed)
VII.  Prior art status: facts relied on and the witnesses who establish them
      (accessibility, dates, sales), without opining on credibility
VIII. Anticipation: R-012 (claims 1, 9), element by element (Exhibit A)
IX.   Obviousness: R-012 with R-019 (claim 14), reasons to combine,
      expectation of success, objective indicia
X.    Declaration under 28 U.S.C. 1746

Drafting notes. In litigation, the report must contain the opinions and their bases, the facts or data considered, exhibits, qualifications, prior testimony, and compensation under Fed. R. Civ. P. 26(a)(2)(B), and since the 2023 amendment Fed. R. Evid. 702 requires the proponent to show that it is more likely than not that the opinion rests on sufficient facts and reliable application. At the Board, expert testimony that does not disclose its underlying facts or data is entitled to little or no weight (37 C.F.R. § 42.65(a)). A technical expert is a poor witness on when a library cataloged a book; use a fact witness or a library science expert, as the petitioner did in VidStream LLC v. Twitter, Inc., 981 F.3d 1060 (Fed. Cir. 2020). For the deposition that follows, see the Expert Deposition Toolkit: Outline Frameworks, Reliance Material Requests, and Rule 26 Protection Maps.

Template 16: Patent owner's response kit

Purpose: the three documents a patent owner needs when prior art arrives: proof of its priority date, proof that its own early activity was experimental or excepted, and an outline for attacking the challenger's proof. Owner: the patent owner's counsel, with the inventors and the engineer who ran early testing. When to use: before filing suit if possible; at the latest, when the invalidity contentions or petition arrive.

EXPERIMENTAL USE EVIDENCE FILE: Ridgeback Vineyards (E-001)
[ ] Written test plan naming the claimed features tested [date, author]
[ ] Records made during the test (logs, data, service visit reports)
[ ] Who controlled the units, the settings, and the firmware
[ ] Confidentiality terms (written, or implied by relationship and control)
[ ] Payment terms; whether the fee covered only cost
[ ] Number of units, duration, end date, and return or removal of units
[ ] Changes made to the design because of the test results
[ ] Communications showing purpose (testing, not selling)
[ ] Date the invention was reduced to practice (testing after it ends the
    experimental use argument)

ACCESSIBILITY AND PROOF REBUTTAL OUTLINE (R-012)
1. Date: capture of the PDF itself, not just the page? Digest changes?
2. Findability: link path in 2016? Indexed? Who in the art knew of it?
3. Content: is Rev. C as captured the same as the manual in unit R-030?
4. Authentication: archive affidavit? Witness? Timely objection filed?
5. Corroboration: does every witness statement have a document behind it?

Drafting notes. Once the challenger shows art that predates the actual filing date, the patent owner must come forward with evidence that the earlier application supports the claim, although the burden of persuasion stays with the challenger, Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008). The experimental use file tracks the factors in Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336 (Fed. Cir. 2002), and control is often decisive: monitored testing succeeded in TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984), while prototypes handed out without monitoring or records failed in Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996). Testing must be aimed at claimed features, Electromotive Division of General Motors Corp. v. Transportation Systems Division of General Electric Co., 417 F.3d 1203 (Fed. Cir. 2005). For the rebuttal outline, the leading accessibility losses are Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016) and Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018). At the Board, evidentiary objections must be made within the periods in 37 C.F.R. § 42.64 or they are waived, and the petitioner may then cure with supplemental evidence, so object early and specifically. The PTAB Toolkit: Petitions, Patent Owner Responses, and Motions to Amend has the response forms.

Template 17: Applicant and inventor kit

Purpose: keep inventors from creating their own prior art, and keep applicants' disclosure obligations organized. Owner: the company's patent counsel, with the product and marketing leads. When to use: from the first prototype through issuance; review the calendar before every trade show, launch, and investor round.

EVALUATION AGREEMENT CLAUSES (for a pre-filing field test)
1. Purpose. The Units are provided solely so that [Company] can test
   [specified features], according to the Test Plan in Exhibit A.
2. Control. [Company] retains title to and control of the Units, their
   settings, and their software, and may inspect and adjust them at any time.
3. Records. [Customer] will keep the logs described in Exhibit A and provide
   them to [Company] weekly; all test data belongs to [Company].
4. Confidentiality. [Customer] will keep the Units, their operation, and all
   test information confidential and will limit access to named personnel.
5. No sale. No fee is charged [other than reimbursement of installation
   cost]. Nothing in this Agreement is an offer to sell.
6. Term and return. The test ends on [DATE]; [Company] will remove the Units.

IDS LOG (one row per item)
Item | Source (search, foreign office, inventor, litigation) | Date first
known to a 37 CFR 1.56(c) individual | Date cited by a foreign office |
IDS filed | 1.97 tier: (b) no fee / (c) statement or fee / (d) both |
Copies and translations supplied | Concise explanation (non-English)

RULE 130 DECLARATION OUTLINE
1. Identity and role of declarant (inventor or person with knowledge)
2. The cited disclosure and its date
3. Basis: (a) attribution: the disclosure is the inventor's own work, or
   was obtained from the inventor (explain each non-inventor co-author); or
   (b) prior public disclosure: the inventor publicly disclosed the same
   subject matter on [DATE], with a copy or detailed description attached
4. Statement that the disclosure was made one year or less before the
   effective filing date
5. Corroborating exhibits

Drafting notes. The grace period in § 102(b)(1) protects an inventor's own disclosures for one year in the United States only, so the calendar's last two columns usually point to the same advice: file a provisional under 35 U.S.C. § 111(b) that fully describes what will be shown, before it is shown. Showing working units to the trade without restriction is a public use (Minerva); a confidential display that never operates the device may not be, Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007). The evaluation clauses implement the experimental use factors, but no clause turns a real sale into a test (Sunoco), and a confidentiality clause does not stop a sale from counting (Helsinn). Selling product made by a secret process starts the clock on any process patent, Celanese International Corp. v. International Trade Commission, 111 F.4th 1338 (Fed. Cir. 2024). For prosecution, the duty of disclosure, IDS timing, and IDS content are governed by 37 C.F.R. §§ 1.56, 1.97, and 1.98 (MPEP § 609), and since January 19, 2025 size fees apply once cumulative IDS citations pass 50, 100, and 200 items. Withholding material art risks unenforceability, though only on proof of but-for materiality and specific intent to deceive, Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). A Rule 130 declaration under 37 C.F.R. § 1.130 may explain non-inventor co-authors, as the inventor did successfully in In re Katz, 687 F.2d 450 (CCPA 1982) (MPEP §§ 2155.01 to 2155.03). See also Drafting Enforceable Non-Disclosure Agreements for Technology Transactions and the Global Patent Portfolio Toolkit: Filing Calendars, National Phase Instructions, and Cost Models.

Common drafting mistakes

• Charting the page instead of the file. An archived product page proves nothing about a linked manual unless the manual itself was captured, or otherwise shown to be available, before the critical date (Template 5, step 1).
• Paraphrasing the reference in the chart. Quote it and pinpoint it. Paraphrase invites the response that the reference does not say what the chart says.
• Mixing embodiments or documents and calling it anticipation. That is an obviousness argument, and it needs a motivation statement (Template 8).
• Treating a date code as a sale date. A board's manufacturing date is not proof of when, how, or in what configuration the product was sold.
• Letting a witness's memory carry a sale or use. Every fact in the corroboration matrix needs a document in the third column before a declaration is signed.
• Forgetting the forum. Product, use, and sale evidence cannot be the basis of an IPR ground; keep it developed for court, where IPR estoppel does not reach it.
• Skipping the § 282(c) notice because the contentions were thorough. Contentions may be enough, but a dedicated notice listing every witness's name and address removes the argument; serve it.
• For patent owners, discovering the vineyard deal in the defendant's exhibit list. Build Template 9 and the priority chart in Template 16 before the demand letter goes out.

Frequently asked questions

Who should run the search: the law firm, a search firm, or the client's engineers? Usually all three, in different roles. Search firms are efficient on patent literature; engineers know the old products, the trade press, and who sold what; lawyers should control the plan, the qualification decisions, and the proof, because those are legal judgments and because the searchers may become witnesses.

How long does an invalidity investigation take, and what does it cost? A focused patent and literature search can be done in a few weeks; a product and on-sale investigation that depends on subpoenas, teardowns, and depositions runs for months and costs considerably more. The IPR bar date in Template 1 usually sets the pace for the paper search, and the contentions deadline sets it for everything else.

Can we rely on a Wayback Machine capture in an IPR petition? Yes, if you can show the capture is what it purports to be and that the document was publicly accessible before the critical date. Plan the authentication route before filing, because the patent owner may object and you will have a short window to answer with supplemental evidence.

What if the patent owner's early sale was confidential? For the patent owner's own sales, confidentiality does not matter; a secret sale is still a sale (Helsinn). Spend the effort proving the offer, the date, the version, and readiness for patenting.

Should a patent owner produce its own pre-filing sales records voluntarily? They will be requested and must be produced if relevant, so the real question is timing. Reviewing them before suit lets the patent owner pick claims and priority positions that survive them, which is far cheaper than learning about them at a deposition.

Practical takeaways

• Fix the claims, their effective filing dates, and the IPR bar date before searching; most other decisions follow from Template 1.
• Plan and log every search as if a court will read both, because on estoppel questions it may.
• Capture files, not just pages; hash them; and line up a witness or a stipulation for every capture you rely on.
• Chart one reference at a time with quotations and pinpoints; build obviousness charts with an explicit, dated motivation statement.
• Investigate the patent owner's own history version by version, and pair every account with invoices, agreements, and release records.
• Patent owners should build the priority chart and the experimental use file before they sue; inventors should keep a disclosure calendar and file before they show.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

• Prior Art Under the America Invents Act: Section 102, the On-Sale Bar, Public Use, and the One-Year Grace Period: the doctrine behind every template in this toolkit.
• Overcoming Obviousness Rejections: A Comprehensive Guide to Section 103 Analysis: obviousness from the applicant's side.
• Inter Partes Review Strategy: Discretionary Denial, Estoppel, and the Parallel District Court Case: sequencing paper art at the Board and product art in court.
• Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court: the evidence law behind Template 5.
• Mastering Document Discovery: A Comprehensive Guide to Objecting and Responding to Requests for Production: responding to and enforcing requests like those in Template 10.

Related Guides

• Finding, Qualifying, and Using Prior Art: A Practical Guide: the step-by-step process these templates support.
• Filing or Defending an Inter Partes Review: A Practical Guide: how charts and declarations are used in a petition.
• Preparing and Defending a Rule 30(b)(6) Deposition: the corporate deposition behind Template 11.

Related Checklists

• Prior Art Qualification Checklist: A Practical Checklist: the questions every reference in the register must answer.
• Authenticating Website Evidence: A Practical Checklist: foundation steps for captures.
• Rule 30(b)(6) Deposition Preparation Checklist: A Practical Checklist: preparing the designee on pre-filing history.
• Litigation Hold and Evidence Preservation Checklist: A Practical Checklist: preserving documents and devices on both sides.
• Maintaining the Duty of Candor to Avoid Inequitable Conduct: A Practical Checklist: the prosecution side of Template 17.

Related Toolkits

• Patent Litigation Toolkit: A Roadmap and Research Guide: research sources by phase of a patent case.
• Claim Construction Toolkit: Charts, Briefs, Expert Declarations, and Hearing Materials: construction charts to pair with invalidity charts.
• PTAB Toolkit: Petitions, Patent Owner Responses, and Motions to Amend: Board filings that carry the art.
• Nonparty Discovery Toolkit: Subpoenas, Third-Party Records, and Privilege: subpoena practice for customers, organizers, and competitors.
• Cross-Border Discovery Toolkit: 1782 Applications, Hague Requests, and Blocking Statute Analyses: evidence held abroad.
• Expert Deposition Toolkit: Outline Frameworks, Reliance Material Requests, and Rule 26 Protection Maps: defending and attacking the invalidity expert.
• Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines: pleading invalidity defenses and counterclaims.
• Indirect Infringement Toolkit: Knowledge Evidence, Direction or Control Proof, and Substantial Noninfringing Use Analyses: the infringement theories invalidity art usually answers.
• Global Patent Portfolio Toolkit: Filing Calendars, National Phase Instructions, and Cost Models: filing before disclosure to keep foreign rights.