The opinion of the court was delivered by: Honorable B. Lynn Winmill Chief U. S. District Judge
MEMORANDUM DECISION AND ORDER
The Court has before it Fleming's third motion to strike Escort's invalidity contentions. The motion is fully briefed and at issue. For the reasons explained below, the Court will grant the motion in part, striking Escort's defenses based on (1) the Murakami patent application H9-27096, either by itself or in combination with the Ross '884 patent, as anticipating claims 8, 23, 25, and 26 of Fleming's '038 patent; (2) Orr's Prior Invention in combination with Murakami; and (3) Lang's '403 patent in combination with Orr or Murakami. The motion will be denied in all other respects.
Fleming has sued Escort for infringing two of Fleming's patents: (1) the '038 patent, and (2) the '653 patent. The Court issued a summary judgment decision, leaving some issues for a trial that is set for June 14, 2012.
In early 2012, Fleming had produced to Escort a list of the issues that Fleming intended to prove at trial, but Escort did not respond with its own list. To avoid a trial by ambush, the Court, on February 17, 2012, ordered Escort to submit a list of issues on which they bear the burden of proof at trial. Escort filed that list, stating that they intended to argue that various patents, and combinations of patents, rendered Fleming's patents invalid. See List of Issues (Dkt. No. 181). Fleming responded with this motion to strike, arguing that Escort is barred from raising some of these issues. The Court will review each of Fleming's objections.
Fleming asserts that Escort's List of Issues shows Escort's intent to argue at trial that the Murakami patent application anticipated Fleming's '038 patent, claims 23, 25 and 26, and that a combination of Murakami and the Ross '884 patent anticipated Fleming's '038 patent, claim 8. The Court has previously held that the Murakami reference did not anticipate claims 1, 3, and 5-8 of the '038 patent. See Memorandum Decision (Dkt. No. 169).*fn1 While the Court's decision did not deal specifically with claims 23, 25, and 26, of the '038 patent, it nevertheless applied to them because those claims are dependent claims from claim 1, a claim the decision referenced expressly. Fleming adds that it makes no difference that Escort is combining the Murakami reference with other references, and asserts that if the Murakami reference itself cannot be used with regard to those claims, it also cannot be used in combination with other references.
Escort agrees*fn2 , and the Court will so order.
The Orr/Murakami Combination
Escort intends to argue at trial that the combination of Orr's prior invention and Murakami's references invalidate Fleming's patents. See List of Issues (Dkt. No. 181). Yet the Court, in an earlier decision, struck the Orr/Murakami combination from the case on the ground that it was disclosed too late by Escort. See Memorandum Decision (Dkt. No. 117).
Escort argues that the Court's ruling was partially reconsidered with regard to the Orr prior invention -- a point discussed further below -- and that by allowing a portion of the Orr prior invention to be used at trial, the Court should also allow back in the Orr/Murakami combination. But the Court's ruling on the Orr prior invention was entirely separate from, and had no effect on, the Court's ruling on the Orr/Murakami combination. The Orr/Murakami combination was disclosed too late, and that conclusion is not altered in any way by the Court's finding that a portion of Orr's prior invention remains in the case.
Escort argues next that it did disclose the Orr/Murakami combination in a timely manner. For example, Escort cites charts attached to its Invalidity Contentions that, Escort argues, put Fleming on notice that it would claim that the Orr/Murakami combination renders obvious certain claims of Fleming's patents. The Court rejected this argument earlier, see Memorandum Decision (Dkt. No. 117), and does so again. Escort's Invalidity Contentions fail to describe what Escort now wants to raise at trial -- that the Orr/Murakami combination renders Fleming's patents obvious. The examples Escort cites do not contain a single reference to an Orr/Murakami combination. Instead, they assert the obviousness defense based on a combination of a primary reference in combination with numerous secondary references. For example, one chart attached to Escort's Invalidity Contentions claims that Fleming's '038 patent is obvious based on a primary reference to the Henderson patent "in combination with" eight other secondary references: (1) Orr Publication; (2) Orr's prior invention; (3) Murakami patent application; (4) Henry patent; (5) Martin patent; (6) Silverman patent; (7) Thakker patent, "and/or" (8) Orr international publication. See Exhibit 17 (Dkt. No. 65-17). Another chart also claims the '038 patent is obvious based on a primary reference to the Ryan patent "in combination with" the same eight secondary references. See Exhibit 16 (Dkt. No. 65-16).
None of these charts attached to Escort's Invalidity Contentions have as a primary reference either Orr's Prior Invention or Murakami. None of the charts put Fleming on notice that Escort would argue that a ...