Plaintiffs in the patent game tend to treat prior art references like particular unwelcome guests. There is an obvious level of affront when they arrive, tempered only by what politeness can be mustered. Once they are in the door, there are constant references to how crowded it is, how little air, how maybe we should just call it a night even though its just so much fun to see everyone.
(Eds. Note -- can you tell I'm from the midwest? I was going over this metaphor with one of the many New Yorker's I know and they seemed not to get the dynamic).
Once you finally cajole them our of the house, packed with leftovers and other bribes, it is a moment of sweetest relief.
Should they have the audacity to return -- be it for one more thing they meant to tell you or for forgotten keys -- all bets are off.
This leads me the case of Allergan, Inc. v. Revance Therapeutics, Inc., C.A. No. 21-1411-RGA. D.I. 468 (D. Del. Nov. 22, 2024). The parties there had initially asserted numerous claims and references, that were whittled down through the course of the case. When SJ rolled around, one of the motions dealt with whether plaintiff could swear behind 2 references. Before the motion was decided, however, those references were dropped.
The parties then disputed whether this mooted the SJ motion. Defendants said they still intended to use the references as background and thus the motion was live, while plaintiffs argued that this was just an end run around the narrowing that had already occurred. Naturally, many letters were filed.
Judge Andrews held that the motion was not moot and that the references could be presented to the jury:
I agree with Revance that simply because "Frevert" and "Webb" are not part of the currently-asserted obvious combination does not mean that they are, or should be, excluded from trial. They might be useful to show the scope and content of the art which seems to be what Revance would be offering them for, to be a basis for motivation to combine, or to establish a reasonable expectation of success. That they were previously asserted as part of obvious combinations for various claims of three of the asserted patents and the obviousness combinations have now been withdrawn as part of the case narrowing is of no moment. Further, I am not going to exclude them (including as exhibits) on the basis that they will confuse or mislead the jury . . .
Thus, if Allergan wants to negate Frevert and Webb as prior art (to the extent the issue is not resolved in the forthcoming summary judgment opinion), Allergan will have to put on evidence supporting an earlier conception date for the asserted claims at issue.
Id. (internal citations omitted)
Unfortunately, we won't get to see how this all turns out for a while as the trial was taken of the calendar shortly thereafter -- but we'll let you know what's up when it happens.
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