Texas Patent Rules

Patdek is directed to organizing patent information. The information presented below highlights aspects of the Texas Local Patent Rules governing invalidity contentions.

Eastern District local rules (here) (published March 19, 2014)

E.D. Tex. L.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;

L.R. 3-3(b) explains that an obviousness allegation, based upon a combination of items of prior art must include "each such combination." While L.R. 3-3(b) does not specify the particular manner of the identification, PatDek provides a comprehensive list of each obviousness combination (two-reference and three-reference combinations) as part of its reporting capabilities.

E.D. Tex. L.R. 3-3(c) provides:

(c) A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element 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;

L.R. 3-3(c) explains that a chart is required for "identifying where specifically in each alleged item of prior art each element of each asserted claim is found." PatDek provides in claim chart format, citations and/or text identifying passages of each prior art reference that correspond to each claim limitation. The PatDek case template allows the case manager to identify the analysis concepts that relate to 35 U.S.C. § 112(6), providing a framework to specify "the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function" as stated in L.R. 3-3(c).

E.D. Tex. L.R. 3-4 concerns the document production that is to accompany invalidity contentions.

Northern District local rules (here) (amended November 17, 2009)

Order #62

N.D. Tex. Paragraph 3-3(a)(2) provides:

(2) 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;

N.D. Tex. Paragraph 3-3(a)(3) provides:

(3) A chart identifying where specifically and in detail in each alleged item of prior art each element of each asserted claim is found, including for each element that the party contends is governed by 35 U.S.C. 5 112(6), the identity of the structure, act, or material in each item of prior art that performs the claimed function;

N.D. Tex. Paragraph 3-4 concerns the document production that is to accompany invalidity contentions.

Southern District local rules (here) (reprinted December 2009)

S.D. Tex. P.R. 3-3(b) provides:

(b) whether each item of prior art anticipates each asserted claim or renders it obvious and, if the latter, the detailed bases for these contentions;

S.D. Tex. P.R. 3-3(c) provides:

(c) a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element 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;

S.D. Tex. P.R. 3-4 concerns the document production that is to accompany invalidity contentions.