A Blog About Intellectual Property Litigation and the District of Delaware


Clerks frantically tallying prior art references and combinations
Clerks frantically tallying prior art references and combinations Brown Abaca, Crissy Jarvis, Unsplash

This blog could be nothing but disputes about claim narrowing. We'd have 72,000 posts a year and we'd never get to the bottom of all the little sub-disputes, and how each judge prefers to handle them. I'm sure it would be quite popular.

This week in IPA Technologies Inc. v. Amazon.com, Inc., Judge Andrews clarified his position on one of the more common disputes -- how exactly to count "references" for the purposes of narrowing.

The defendant, Amazon, had been ordered to reduce the number of references in its invalidity contentions and had responded by limiting itself to 4 prior art "systems." The problem was, that each of these systems was described by citation to dozens of different publications so that the actual number of citations in the contentions was closer to 40.

Judge Andrews agreed with Amazon's counting method, noting that the references describing the prior art systems seemed to be like "twelve pictures taken by multiple family members of a new college graduate receiving a diploma where the pictures mostly show the same thing, but the details differ slightly" and thus were properly counted as a single system reference.

He also briefly dealt with another common narrowing dispute, holding that the 466(!) pieces of prior art included in the contentions to describe the "state of the art" did not count against their total number of references.

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