Continuing in the vein of last week's discussion of claim narrowing, Judge Andrews issued an interesting opinion on Friday discussing the number of invalidity arguments a defendant was allowed to present at trial.
Although we still occasionally see orders in the district limiting the number of prior art references a defendant is allowed to assert, it has become increasingly common in recent years to see the Court limit the number of prior art arguments or combinations or defenses an accused infringer can assert -- either instead of, or in addition to, a set number of references.
The question of how to count "arguments" has generated a fair amount of opinions in the district, with slightly varying results. Judge Burke gave what is probably the most comprehensive description of an argument in 2018 in Ethicon LLC, et al., v. Intuitive Surgical, Inc., C.A. No. 17-871-LPS-CJB, D.I. 68 (D. Del. Jan. 9, 2018), where he stated:
A “prior art argument” shall be understood to be an argument that: (1) a single reference anticipates a claim; or (2) a single reference renders a claim obvious (i.e., “single-reference obviousness”); or (3) a combination of references renders a claim obvious. Thus, for example, if Defendants rely on prior art reference A for anticipation and for single-reference obviousness as to claim 1 of a patent, that will count as two separate prior art arguments. If Defendants also rely on prior art references A+ B for obviousness and A+ B + C for obviousness as to claim 1 of the patent, that will count as two more, separate, prior art arguments. Additionally, prior art arguments shall be counted on a per claim basis, meaning that if Defendants assert that prior art reference A anticipates claim 1 of a patent, and that prior art reference A also anticipates claim 2 of that patent, that will count as two prior art arguments. Further, a “prior art argument” shall consist of those reference(s) that Defendants utilize to show the existence of claim limitation(s) in the prior art.
This leads us to Judge Andrews' decision in Baxalta Incorporated et al v. Bayer Healthcare LLC, C.A. No. 17-1316-RGA, D.I. 668 (D. Del. Feb. 18, 2021). At the pretrial conference, he ordered the defendant to narrow its case down to no more than three "defenses" per asserted patent family. Id., D.I. 550 at 4. Perhaps because of the wording -- "defense," rather than "argument" -- the parties disputed whether using 102(g) prior art as part of an obviousness combination was 1 "defense" or 2 (one under 102(g) and one under 103). See id., D.I. 667. Judge Andrews held that the answer is 1, to wit: "If . . . the 102(g) prior art is only offered as part of an obviousness defense, then it is not a separate invalidity defense; it is merely a part of an obviousness combination."
And so the relentless march towards a uniform and comprehensive definition of a basic term continues.