Thursday, November 4, 2010

Judgment of Nonobviousness does not Collaterally Estop Later Assertion of Anticipation Defense Involving the Same Patents and Prior Art

Plaintiff's motion for summary judgment to preclude defendant from challenging the validity of two patents-in-suit based on prior art asserted in a related case was granted as to obviousness but not anticipation. "'While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different.'. . . The [jury in the earlier case] was not asked to render a verdict with respect to [defendant's] anticipation defense; nor was this Court asked to reach such a judgment. Therefore, [defendant's] anticipation defenses were not 'actually litigated' and issue preclusion does not apply."

Power Integrations Inc. v. Fairchild Semiconductor International Inc., et. al., 1-08-cv-00309 (DED October 21, 2010, Opinion) (Stark, J.)

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