Two statements of note in a recent decision by Judge Jordan (, C.A. No. 05-141 (D. Del. Jan. 19, 2007) (Jordan, J.):
– An inventor’s testimony regarding the meaning of a piece of prior art will be given little or no consideration (as with claim construction) since the testimony is often self-serving. Id. at 12 n.5.
– Disclosing an element of a claim as an alternative embodiment in a piece of prior art rather than as the primary embodiment of the claim will not make a reference non-anticipating. Id. at 12 n.6.
The Court went on to grant the defendants’ motion for summary judgment that the patent was invalid based on a PCT application filed by the inventor of the patent-in-suit.