A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: fre

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

Bridge
Jamie Street, Unsplash

Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.

Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.

Last week, Judge Andrews …

Judge Andrews yesterday issued his opinion denying all post-trial motions in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA (D. Del.). The jury had returned a verdict of infringement and no invalidity after a trial in January 2020.

One part of the opinion stands out—Judge Andrews discusses his decision to preclude the defendant from discussing the full prosecution history of the patent before the jury as prejudicial under FRE 403:

I ruled that 2Wire could elicit testimony about what prior art was in front of the patent examiner, but that testimony about a “lengthy history of cancelling claims, adding claims, rejecting claims, [and] rejecting new claims” was inadmissible under Federal Rule of Evidence 403 because …

The reference at issue, JP 1992-136787

Japanese patent publications are typically considered to be fairly safe prior art references, as long as you prove up authenticity and offer sufficient evidence of publication.

But it turns out that that second part—showing publication—is kind of important.

In F'real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC, Judge Connolly excluded a Japanese Patent Office Utility Model Publication on a motion in limine because the defendants failed to show that it was publicly accessible under § 102, based largely on defendants' own position in opposing IPR estoppel.

Couldn't Have Found Reference = No IPR Estoppel

The F'real defendants had previously filed an unsuccessful IPR, and plaintiff moved to exclude the reference based on IPR estoppel. …