CAND - Court grants Summary Judgment Motion as to 48 undisclosed prior art references

  In a lengthy opinion addressing an extensive set of issues on summary judgment, Judge Spero grants summary judgment for plaintiff Volterra of "no invalidity" based on 48 undisclosed prior art references in Volterra Semiconductor v. Primerion.

As to the 48 undisclosed prior art references, the defendant argued that plaintiff was on notice of some of this prior art during discovery:

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Volterra excerpt - prior art was disclosed (p. 10)

Defendant also argued that some of the prior art, although not disclosed in its local rules invalidity contentions, provides specific information about the knowledge of a person of ordinary skill in the art.  The Court reasoned that if this art "framed" their obviousness contentions, it should have been disclosed more timely as part of their local rules invalidity contentions.

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Volterra - knowledge of person of skill in the art (p. 122)

After rejecting defendant's rationales for not disclosing the prior art during the time specified for local rules contentions, the Court considered whether the local rules contentions could be amended to include the prior art as rebuttal evidence.  The Court declined this justification as good cause as well because, other than conclusory statements that the prior art was rebuttal evidence, there was no link between the prior art and the contentions being rebutted.

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Volterra - new prior art as rebuttal (p. 123)

CAND decision re disclose prior art references in your invalidity contentions

PatDek also tracks document production information to ensure that the prior art is not only disclosed in contentions, but also produced as part of discovery.  Brilliant Instruments (see here and here) is a cautionary tale to seek permission before including undisclosed invalidity contentions in an expert report.

it is extremely important to disclose each and every prior art reference in the Invalidity Contentions, or otherwise you cannot use them to establish invalidity.  In Brilliant Instruments, Inc. v. GuideTech, Inc., 4-09-cv-05517 (CAND), District Court Judge Claudia Wilken granted Defendant’s motion to strike prior art references from plaintiff’s expert report that were not include in plaintiff’s invalidity contentions.

via It’s sooooo~ important to disclose each and every prior art reference in your Invalidity Contentions.

The administration portal allows you to define a Bates No. for your case.  In the event that the prior art was produced under a different Bates No. scheme from your case, there is also an alternative Bates No. field to cover those situations.  The Bates Nos. also appear in a list identifying all prior art considered in the case.  This is yet a further verification step to confirm that the prior art was analyzed and produced during the preliminary invalidity contentions stage of the case.