Opinion
03 Civ. 1468 (AKH).
September 30, 2005
ORDER DENYING SUMMARY JUDGMENT
Tradecard moves for judgment to preclude defendant from proving its invalidity defenses, and for partial summary judgment that the FC Module does not anticipate the '588 patent claims. For the reasons stated below, the motion is denied.
This case has been pretried extensively. The parties have exchanged and focused their contentions, litigated a Markman hearing to define the patent claims, and completed their discovery, except possibly some uncompleted experts' depositions. They are proceeding toward completing a pre-trial order. All that is left is to try the case.
The parties several times have engaged me in dispositive summary judgment motions, and I have heard counsel at length. I concluded, after expenditure of considerable judicial energy, that material issues had to be tried, and therefore I denied summary judgment.
In this setting, in the midst of final trial preparations, Tradecard made the current motion.
Another important event has occurred. Each time a United States District Judge is inducted, a random selection is made among all pending cases before all district judges, in order to assign a fair share of the work to the newly-inducted judge. This case is one of those selected, and it is ready to be transferred to the Hon. Paul J. Crotty. Since Judge Crotty will preside over this case, in connection with any further proceedings and trial, it is he, not I, who should shape that trial, including substantive determinations of Tradecard's motions.
Tradecard argues that defendants identified, as their defenses, four items of prior art that were both obvious and that anticipated plaintiff's '588 patent: the FC module, and the Shavit, Abecassis and Lindsey patents. Plaintiff points out that obviousness and anticipation are different defenses. 35 U.S.C. §§ 102, 103. Compare Finnegan Corp. v. ITC, 180 F.3d 1354, 1365 (Fed. Cir. 1999) (defining defense of anticipation), withRockwell Int'l Corp. v. U.S., 147 F.3d 1358, 1364 (Fed. Cir. 1998). Plaintiff also points out that defendants alleged that the FC Module and the Shavit patent anticipated plaintiff's patent, but not that they were obvious in relation to the patent, thus precluding it from becoming effective.
Tradecard argues that defendants' neglect to cover their bases by alleging both defenses for the same prior art caused Tradecard prejudice; Tradecard asserts that it might have conducted depositions in different ways had defendants alleged obviousness as well as anticipation.
Tradecard's argument lacks merit. Although it is not possible for me now to know what was in the minds of the Tradecard lawyers who conducted the depositions, it would not be just to create a forfeiture to remedy a missed technicality. There is a public interest about patents that would not be served if the defense of obviousness could not be asserted. I hold, therefore, balancing the public interest and the interest of fairness and justice to both parties, against the small incremental cost and bother of slightly opening discovery to allow Tradecard to recall several witnesses and ask a few more questions, that defendants should not be precluded to proceed with their defenses of both obviousness and anticipation.
Next, Tradecard asks for summary judgment striking defendant's defense that the FC Module anticipated Tradecard's '588 patent. Tradecard argues that the '588 patent, unlike the FC Module, contained a feature of hidden, or stored, terms, and that the defense of anticipation requires clear and convincing evidence that all material elements of a patent claim were anticipated. I hold that the motion is premature.
I have not had an opportunity, thus far, fully to absorb the features of the '588 patents in its best mode contemplated by the inventor. See 35 U.S.C. § 112 (requiring the specification to contain a written description of the invention, setting forth the best mode contemplated by the inventor of carrying out his invention). Without such a full understanding, it would not be proper to rule on the full extent of anticipation from the prior art. Accordingly, Tradecard's motion is denied, without prejudice to renewal in an appropriate format during or after trial.
All motions having been resolved, this case is now ready for transfer to Hon. Paul J. Crotty. And since there is little point to having another status conference before me, the conference that was scheduled to be held October 6, 2005, and any future scheduled events, are canceled.
SO ORDERED.