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An interesting opinion from Judge Thynge last week on case narrowing, and in particular, how to count invalidity arguments.

The defendant in Targus International LLC v. Victorinox Swiss Army, Inc.., C.A. No.20-464-RGA-MPT (D. Del. Nov. 18, 2022), had agreed to reduce the number of prior art "arguments" to 5. In its expert reports, however, they had counted reference "A in view of B", as well as "B in view of A" as a single argument. This lead to the inclusion of (what plaintiff counted as) more than 5 arguments. Plaintiff then moved to strike the extraneous arguments and Judge Thynge agreed, holding:

In its letter brief, Defendant maintains that it "never labeled any reference as 'primary'" and it "has preserved the right to use the combinations as it disclosed them in its invalidity contentions." D.I. 224 at 4. According to Defendant, the narrowed prior art combination of "'A' + 'B' + 'C'" is equivalent to "'C' in combination with 'A' and further in view of 'B'." Id. In the court's experience, these are different combinations, and to allow such an expansive reading of the parties' stipulation at D.I. 187 would interfere with the court's inherent authority to manage its own docket.

Id.

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