Today we'll take a look at the local patent rules across jurisdictions and the specificity required for obviousness contentions. You can find an index of local patent rules here if you want to browse rules in different jurisdictions. Certain jurisdictions, like the Eastern District of Texas shown below, specify the following for invalidity contentions relying on obviousness challenges.
L. Pat. R. 3-3(b) provides:
(b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified;
Other jurisdictions, like the Northern District of California, do not recite the requirement to identify the motivation to combine prior art references when obviousness contentions are based on a combination of prior art.
L. Pat. R. 3-3(b) provides:
(b) 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;
In summary, certain jurisdictions specifically require a motivation to combine identification, while others do not. We have summarized a list of the jurisdictions that include and do not include this requirement. Certainly, for a given jurisdiction, Court decisions may indicate that motivations to combine must be included for obviousness-based contentions, even if not specifically recited in the local patent rules.
The following ten (10) jurisdictions recite that a motivation to combine prior art must be identified: Northern District of Georgia; Northern District of Illinois; Eastern District of North Carolina; Western District of North Carolina; District of New Hampshire; Northern District of New York; Western District of Pennsylvania; Eastern District of Texas; Northern District of Texas; and District of Utah (J. Campbell).
The following thirteen (13) jurisdictions do not recite that a motivation to combine prior art must be identified: Northern District of California; Southern District of California; District of Idaho; District of Maryland; Eastern District of Missouri; District of New Jersey; District of Nevada; Northern District of Ohio; Southern District of Ohio; Western District of Tennessee; Southern District of Texas; Eastern District of Washington; and Western District of Washington.
Let us know if you're aware of other differences of interest.