Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009) (Cole, Mag. J.)*
Judge Cole granted summary judgment of invalidity based upon the §102(b) on-sale bar and denied summary judgment as to invalidity based upon §102(b) public use and obviousness.
Priority Date
Plaintiff argued that its pipe coupler patent was entitled to the priority date of its provisional application because the provisional application disclosed in the drawings the tapered threads at issue, although they were not described in the specification. The Court held that figures showing tapered threads would be sufficient, but that the figures did not show tapered threads. Plaintiff alleged that enlargements of the figures showed a 1% taper. But the Court held that the original drawing did not “convey” the tapered threads with “reasonable clarity.” Even the enlargement showed “no true tapers.” Because the provisional application did not disclose the taper, the patent’s priority date was its filing date.
On-Sale Bar
The Court held that plaintiff admitted he offered the patented couplers for sale more than one year before the filing date, also known as the critical date. Plaintiff also admitted both in interrogatory responses and at deposition that his invention had been reduced to practice at the time of the offer. Plaintiff claimed that the use was experimental, but the court held that the claim was not properly supported by evidence in plaintiff’s Local Rule 56.1 statement of material facts.
Public Use Bar
The Court denied summary judgment based upon the public use bar. The alleged prior art device was asserted against other claims in defendants’ invalidity contentions, but not against the claim at issue, claim 12. Furthermore, the evidence of the alleged prior art coupler was provided by a witness that was not disclosed in defendants’ Rule 26 disclosures or their interrogatory responses. He was first identified in a subpoena at the end of fact discovery.
Defendant’s obviousness arguments were based upon the same prior art as the public use bar prior art. So, summary judgment was not appropriate for similar reasons. Additionally, defendants arguments were cursory and did not even cite case law.
* Click here for more on this case in the Blog’s archives.

Continue Reading Patent Disclosure Includes the Specification and the Drawings

Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip. Op. (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.

Continue Reading Parties Make Each Others’ Cases With Unsupported LR 56.1 Statements

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