Anticipation and obviousness naturally have quite a bit in common. You frequently see the defenses listed in the alternative like, "the Velma reference anticipates the '666 Patent, or, in the alternative, The Velma reference in combination with the Daphne, Fred, and Shaggy references renders the '666 patent obvious." Indeed, you see this so commonly, that you might wonder if it's even necessary to specifically include the anticipation argument in your contentions/ expert reports/ pretrial order/ etc., since more or less all of it will be included in the obviousness case.
The answer is yes, you do have to include it. It is, in fact, very bad if you don't.
The defendant in BioDelivery Scis. Int'l, Inc. v. Alvogen PB Res. & Development LLC , C.A. No. 18-1395-CFC, found this out the hard way this week. Alvogen had listed numerous invalidity arguments in the pretrial order, but neglected to include anticipation. Although it discussed the allegedly anticipating "Vasisht-I" reference during the trial (the parties disputed whether Alvogen actually "presented evidence at trial that Vasisht I (DTX-017) discloses every element of [the] claim") it did not explicitly argue anticipation until the post-trial brief. D.I. 267 at 3. Plaintiff then moved to strike this anticipation argument from the post-trial briefing. D.I. 263.
In opposing the motion to strike, Alvogen argued that the difference was merely a "matter of semantics" because "[t]he facts that relate to anticipation of [the] claim [] are identical to the facts that relate to obviousness." D.I. 266 at 3.
Judge Connolly apparently disagreed, and struck the anticipation defense from the post-trial briefing without an opinion, entering the proposed order submitted by plaintiffs without edits. D.I. 281.
Notably, that same order also struck reference to an exhibit -- an IPR petition filed by the plaintiff -- that Alvogen had failed to actually introduce into evidence (although it was included on the list of potential exhibits in the pretrial order). Instead, when citing to the petition in the post-trial briefing, Alvogen referred to it as a "publicly available document," suggesting that the Court could take judicial notice. As with the anticipation defense, Judge Connolly simply struck all references to the petition from the post-trial briefing without an opinion.
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