Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

But plaintiffs argued that the ‘582 had a right to the filing date of its parent, U.S. Patent No. 6,274,154 (the “’154 patent”). The ‘154 patent only disclosed coating a glove with aloe vera. But plaintiffs argued that the ‘154 patent inherently disclosed skin-soothing substances other than aloe vera. Plaintiffs supported its arguments with testimony from the inventor and plaintiffs’ expert.

Because, among other reasons, defendant failed to support its denials of inherency with any facts, the Court deemed admitted, at least, structural inherency and inherency of theory. Because defendant admitted inherent disclosure, plaintiffs’ ‘582 patent had the critical date of its parent ‘154 patent – April 7, 1998. Plaintiffs’ admitted July 1999 sales of patented gloves, therefore, were not an on-sale bar.

Practice tip: When making or responding to Local Rule 56.1 statements, always support your statements or responses with evidence.

• Email This
• Print
• Comments (1)
• Trackbacks

Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, 2007 WL 781250 (N.D. Ill. Mar. 12, 2007) (Cole, Mag. J.).

Judge Cole denied plaintiff's motion to exclude plaintiff's document as a Rule 37 sanction for defendants' failure to identify its potential reliance upon the document and the person who created it.  During the discovery process, plaintiff produced a "Contact Report" listing calls made by one of its sales employees (who eventually left plaintiff's employ).  Defendants sought to rely upon the document as part of their 35 USC Section 102(b) on sale bar defense (similar to the issue in the Court's last opinion in this case).  Plaintiff argued that defendants should not be allowed to rely upon the document because:  1) defendants failed to identify the Contact Report in their responses to plaintiff's invalidity interrogatory; and 2) defendants did not identify the Contact Report's author (plaintiff's former employee) in their Rule 26 disclosures.  As with plaintiff's previous Rule 37 arguments, the Court denied them because defendants made plaintiff aware of the documents during discovery.  The Court noted that plaintiff was arguing defendants should be barred from relying on a document plaintiff produced for failure to identify plaintiff's document to plaintiff.  The Court was not swayed by defendants' failure to identify the Contact Report's author because he was plaintiff's ex-employee and because he had passed away and, therefore, would not be brought as a witness.  Finally, the Court explained that while a party has a right to be apprised of an opposing party's evidence, but not necessarily the weight or significance the opposing party places on that evidence.

• Email This
• Print
• Comments
• Trackbacks

Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, 2007 WL 781253 (N.D. Ill. Mar. 7, 2007) (Cole, Mag. J.).

Judge Cole denied plaintiff's motion to exclude two defense witnesses as a Rule 37 sanction for failing to properly disclose the witnesses.  During the discovery process, defendants identified two witnesses, through declarations signed by the witnesses, as having knowledge of a 35 USC Section 102(b) on sale bar.  Although defendants provided plaintiff the witnesses' declarations and otherwise identified the witnesses to plaintiff, defendants failed to add the witnesses to their respective Rule 26 disclosures and they failed to supplement their respective responses to plaintiff's interrogatory seeking details of all of defendants' invalidity defenses.  Plaintiff argued that these failures led to plaintiff's decision not to depose the witnesses and that defendants' should be barred from relying upon the witnesses for failure to update their Rule 26 disclosures and interrogatory responses.  The Court, however, held that while nondisclosure would generally result in exclusion, exclusion was not warranted in the instant case because defendants did disclose the witnesses in writing.  As a result, "[s]upplementation would have availed nothing required by the [Federal] Rules and was thus unnecessary."

• Email This
• Print
• Comments
• Trackbacks

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve granted judgment as a matter of law for plaintiff, holding that the jury's findings of invalidity and obviousness were not supported by legally sufficient evidence.  At trial, defendant introduced an article describing a prior art radio as 102(b) prior art using its expert.  But the expert testified that one of the claim elements was missing.  Defendant argued that pictures of the radio that were not used in the article, showed the device.  But the Court held that defendant could not piece together the article, testimony and pictures to prove that the article disclosed all elements of the claimed invention.  The jury's obviousness finding was not supported by legally sufficient evidence because defendant did not present clear and convincing evidence of a motivation to combine its obviousness prior art references.

* You can find much more on this case in the Blog's archives.

• Email This
• Print
• Comments
• Trackbacks

Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008, 2007 WL 487564 (N.D. Ill. Feb. 12, 2007) (Kendall, J.).

Judge Kendall denied summary judgment of invalidity for defendant in this patent dispute (you can find the Court's prior claim construction ruling here).  Defendant argued that plaintiff's public use of money-counting machines embodying the patented inventions in banks more than one year before filing of the patent application invalidated the patents pursuant to 35 U.S.C. Section 102(b).  Defendant relied upon the testimony of several bank employees that the machines were beta-tested by banks in locations that bank patrons could see without signing any confidentiality agreements.  But plaintiff put forth evidence that defendant had taken steps to keep the use confidential and that, even if the use was public, it was only an experimental use which does not create a Section 102(b) bar.  Based on the conflicting evidence, the Court held that there were questions of material fact as to the patents' validity and, therefore, denied summary judgment.

• Email This
• Print
• Comments
• Trackbacks