Federal Judiciary

No, not that do-over.

By Michael C. Smith

Saffran, M.D., Ph.D., v. Johnson & Johnson et al, (2-07-cv-00451) (E.D. Tex. Feb. 24, 2009)
Judge: T. John Ward
On Tuesday Judge Ward granted the plaintiff's motion to strike the defendant's invalidity contentions, but granted leave to submit new contentions that comply with the local rules within 20 days.  He noted that Local Patent Rule 3-3 (a) requires the defendants to identify ?each item of prior art that allegedly anticipates each asserted claim or renders it obvious.? Rule 3-3(b) requires that if the defendant contends that ?a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified . . .? The ?Invalidity Contentions? Defendants have served, he wrote (quotations by the Court) did not comply with the plain reading or spirit of the rule. "The purpose of the rules is to put the parties on notice of the information its adversary anticipates using at trial. The defendants? almost 800 pages of ?Invalidity Contentions? do not put the plaintiffs on real or useful notice. The defendants? current ?Invalidity Contentions? are an attempt to end run the rules. (Ed note: There are those quotes again).  They do not specifically identify combinations of references that the defendants anticipate using at trial, and they include language purporting to make the contentions merely illustrative."  Judge Ward granted the defendants leave to file new ?Invalidity Contentions? that comply with the letter and spirit of the rule, "and that specifically identify the combination of references they anticipate using at trial."  (Emphasis in original).

Full post as published by Eastern District of Texas Federal Court Practice on February 26, 2009 (boomark / email).