Failure to Include Prior Art in Invalidity Contentions Excused Where Defendant Possessed Diagram of Prior Art Before the Disclosure Deadline ...

But Lacked Knowledge of its Significance

Defendant's motion for leave to amend its invalidity contentions to include additional prior art was granted. "[T]he parties do not dispute that Defendant had knowledge of [the prior art] in its diagramed form before the [deadline to serve a prior art list]. Defendant never concealed that it believed that the hand-drawn diagram of the [prior art] is relevant to its invalidity defense. Nevertheless, having knowledge or possession of a hand-drawn diagram is different than having knowledge of relevant prior art. A hand-drawn diagram without more does not warrant the conclusion that the diagramed item was an invention that 'was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.'"

Regalo International, LLC v. DEX Products, Inc., 08-cv-04206
(MND November 3, 2009, Order) (Boylan, J.)