Attempt to “Disqualify” Prior Art at Summary Judgment Stage Denied

The drafting of jury instructions is an arduous task, but in a recent opinion, Judge Jordan’s ruling makes carefully constructed jury instructions a must for purposes of appeal.

In ., C.A. No. 04-1373 (D. Del. Nov. 2, 2006) (Jordan, J.), Ampex moved for summary judgment that certain pieces of prior art were not in fact “prior art.”

The more interesting piece that they sought to preclude was a continuation-in-part patent of a parent application that was filed before the filing date of the patent-in-suit. (The filing date of the continuation-in-part was after the filing date of the patent-in-suit.) During the prosecution of the parent application the Examiner rejected certain claims as not enabled and the applicant responded, not by fixing the claims, but instead by arguing that one of ordinary skill in the art would find the disclosure enabling on this matter. When the Examiner continued his rejection, the applicant abandoned the application and filed a continuation-in-part. Now, in the pending litigation, Kodak is asserting that the prior art date for this patent is the filing date of the parent application because one of ordinary skill in the art would have found at least one issued claim enabled and has an expert to testify to such. (sound familiar?)

The question then becomes…can a defendant take a position that the applicant of the prior art patent abandoned? Definitely an interesting one, with far-reaching implications for invalidity cases. Unfortunately, the Court did not have to take a position one way or the other at this stage because it found a genuine issue of material fact existed sufficient enough for the prior art to go before the jury and therefore denied summary judgment.

The Court did note, however, that “should the completed record indicate that Defendants should not have been permitted to rely on this evidence,” the parties should make sure to have a jury verdict form that “poses interrogatories with sufficient specificty to permit an understanding of whether a verdict of invalidity” turned on that disputed piece of prior art. Id. at 6. Once again, demonstrating the importance of carefully worded and detailed jury instructions.