A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Conception

Full Scope
Patrick Hendry, Unsplash

Judge Bryson recently unsealed his opinion in Janssen Pharmaceuticals Inc. v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Sept. 8, 2023), in which he grants summary judgment of no anticipation by a reference under (Pre-AIA) § 102(a).

As a reminder, pre-AIA § 102(a) covers prior art that was available "before the invention" of the patent.

Here, the plaintiff argued that it had reduced the invention to practice before the date of the prior art. The defendant responded that, sure, they reduced an embodiment to practice before the prior art, but they didn't conceive of the invention's full scope:

Tolmar does not appear to dispute that the June 2007 clinical trials practiced …

When should a patentee have to disclose the date of invention? The defendant would prefer a date before invalidity contentions so they don't waste time vetting reams of recent prior art only to have the plaintiff produce the inventor's 4th grade journal showing conception in the early 1930's. The plaintiff, on the other hand, would prefer not to go digging through lab notebooks to try and prove a conception date, only to find that all of the relevant prior art was carved on stone tablets by cabal of renaissance alchemists long before the inventor was born.

No Answer In The Rules

Neither the Delaware Default Standard for Discovery, nor the form scheduling orders of any of our judges address when …