We're back! I hope you all had a great Thanksgiving. As we'd hoped, the Court issued some interesting decisions last week, including a denial of a motion to strike in Lindis Biotech, GmbH v. Amgen, Inc., C.A. No. 22-35-GBW (D. Del. Nov. 26, 2024).
In that case, the parties had agreed to a case narrowing schedule that required the accused infringer to cut back to 6 prior art references per patent by 14 days before the pretrial order, not including references used to show the state of the art, the knowledge of one skilled in the art, or for secondary considerations.
That "not including" part turned out to be pretty important. The accused infringer complied with the "6 references per patent" limitation and then, three days later, served a § 282 notice disclosing nearly 200 total references for trial. The patentee moved to strike, and the Court cited the parties agreed-upon exclusion in denying the motion:
Lindis may be frustrated with Amgen's disclosure of nearly 200 references, however, neither the parties' stipulation nor § 282(c) limits the number of references that Amgen may disclose (other than for the purpose of anticipation or obviousness, and for that purpose, Amgen complied).
. . .
Amgen's Notice was consistent with the parties' stipulation and the Court does not anticipate and will not allow Amgen to use its Notice pursuant to 35 U.S.C. § 282 to circumvent the parties' stipulation limiting the number of prior art references for purposes of anticipation and obviousness to no more than six per asserted patent. In fact, Amgen itself confirms that "Amgen will only rely at trial on the references it elected as grounds for obviousness or anticipation under that stipulation." . . . . If Amgen attempts to rely on any references other than those in the Identified References as a ground for anticipation or obviousness, Lindis may object during trial.
Id. at 4-6. The Court also found that disclosing almost 200 references about a month before trial did not prejudice the patentee:
[T]he Notice does not cause "undue prejudice to [patentee] Lindis." Lindis grounds its claim of undue prejudice on the fact that "less than one month before trial, Amgen has disclosed nearly two hundred references for potential support." D.I. 271 at 2; see id. (stating that "nearly two hundred can only be considered overkill," that there "is no feasible way for Amgen to present all of these references during a seven (7) day jury trial," and that "this dump of references also has the intended effect of significantly hampering Lindis' ability to prepare for trial, as it is not feasible for Lindis to prepare for over two hundred references which Amgen may present at trial" (emphasis in original)). However, Amgen filed its Notice on November 8, 2024 (D.I. 267), more than thirty days before the trial scheduled to begin on December 9, 2024, in compliance with § 282(c). See 35 U.S.C. § 282(c) (requiring notice "at least thirty days before the trial") . . . .
Id. at 3.
The Court doesn't touch on it, but I expect that these references were not disclosed for the first time just before trial. The references themselves would likely have been produced during discovery, and likely would have been cited in validity contentions, contention interrogatory responses, and expert reports. Otherwise they may be at risk of being inadmissible anyway.
Isn't § 282(c) Kind of Redundant at This Point?
The statute at issue, 35 U.S.C. § 282(c), requires disclosure of certain references and witnesses "at least 30 days" before trial:
In an action involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or . . . as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires.
35 U.S.C. § 282(c).
Section 282(c) states that a party can give notice of the prior art "otherwise in writing." Presumably, written invalidity contentions would qualify, as would expert reports, interrogatory responses, and the pretrial order. It's hard to imagine how a party could have admissible prior art at trial that it didn't disclose in writing at least 30 days in advance.
But parties still typically serve (and sometimes file) § 282(c) notices. The cost of doing so is fairly low, and the risk of not doing so is fairly high, including both potential exclusion of prior art (depending on how the Court interprets the party's prior disclosures), and the cost and distraction of fighting a dispute about exclusion in the lead up to trial. I think most accused infringers look at those risks and say "let's go ahead and serve it, just in case."
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