Today we'll take a look at the local patent rules for the Northern District of New York, specifically obviousness contentions. You can find an index of local patent rules here if you want to browse rules in different jurisdictions. The Northern District of New York specifies the following for invalidity charts and invalidity contentions relying on obviousness challenges:

L. Pat. R. 3.3(b)(2) provides:

(2) Whether each item of prior art anticipates each asserted claim or renders it obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness, the reason why one of ordinary skill in the art would have combined the references at the time of the invention in issue in the case, and identification of what the accused considers to be the primary reference.

L. Pat. R. 3.3(b)(3) provides:

(3) A chart identifying where specifically in each alleged item of prior art each limitation or view of each asserted claim is found, and for utility patents, including for each limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function;

{C}Unlike most local patent rules, the NDNY requires an "identification of what the accused considers to be the primary reference." NDNY L. Pat. R. 3-3(b)(2). Not only does a defendant need to identify "any combinations" to show obviousness, but the primary reference needs to be identified. Most jurisdictions merely require an identification of obviousness combinations, but not the primary reference. In this Series on local patent rules, we'll address other nuances in jurisdictions for your consideration.

Let us know if you're aware of other differences of interest.