A 282 notice is a bit of an anachronism and a bit of a trap.
For those who don't read these latter sections of section 35 that often, it goes like this:
a party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit [or] as showing the state of the art
Obviously, in the modern world of contentions, expert reports, moving type, etc., the parties are usually giving each other notice of the relevant prior art constantly throughout the case, and so, filing a separate notice should be unnecessary.
But, law being what it is, we all like to cross our T's and loop our B's and so you sometimes see them served. This of course, often leads to further arguments about why various references that were dropped, or never disclosed at all, are showing up in this notice.
Such was the case, earlier this month in Roger Jackson v. NuVasive, Inc., C.A. No. 21-53-RGA, D.I. 496 (D. Del. Apr. 11, 2025). The defendant their filed its 282 notice the requisite 30 days before trial. That notice, however, included references never previously disclosed, references that had been disclosed as only evincing the state of the art, and references that had been dropped during case narrowing. Judge Andrews addressed each in turn.
Unsurprisingly, the totally undisclosed references were struck:
The first category consists of"seven references never before disclosed by NuVasive . . . . ". At no point before filing its § 282 notice, in an expert report or discovery request, did Defendant ever indicate that it would rely on these references. . . . These references are STRUCK from Defendant's§ 282 notice.
Id. at 2.
In the vein of the many Judge Andrews opinions discussing state-of-the-art references in the narrowing context, the references to be used for only that purpose were not stricken:
NuVasive argues that it may use these references "to show the state of the art through cross examination of Dr. Jackson." (D.1. 485 at 6). Plaintiff . . . suggests NuVasive will "attempt to elicit non-disclosed testimony from Dr. Jackson to gap-fill holes in Mr. Fallin's expert disclosures." Whether Defendant's cross-examination of Dr. Jackson exceeds the scope of direct examination or solicits expert opinions from a fact witness or is otherwise objectionable is a determination to be made at trial, so these references are not struck from Defendant's § 282 notice
Id.
Most interestingly here, the references that had been previously used for anticipation/obviousness combinations, but which were now put forth as only showing the state of the art, were struck:
The fourth category consists of five references in Mr. Fallin's obviousness claim chart. Though NuVasive argues that these references wiII serve as "evidence of the state of the art" they are "cited in the right-hand column of the charts to show teachings of specific claim limitations" and there is no indication they appear in the section of Mr. Fallin's report dedicated to the state of the art. In the interest of avoiding juror confusion and unfair surprise to Plaintiff, these references are STRUCK from Defendant's § 282 notice.
Id. at 2-3
Naturally, this whole exchange raises the question of whether it makes sense to serve a separate 282 notice in the first place. Unfortunately, that's a tough one. Here, the filing seems to have been largely superfluous, with the Court ruling on the issues exactly as one would expect if the notice had never been filed and the parties had simply been left with their earlier expert and contention disclosures. It is, however, possible to see a world where the notice is filed and the patentee elects not to challenge it. In this case, perhaps a later challenge to timely disclosure—at trial or in post-trial briefing—is overruled on the grounds that the otherwise improperly disclosed reference was included in an unchallenged 282 notice.
From that perspective, the patentee's strategy is clear—challenge anything on the 282 notice that you would object to at trial.
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