Failure to Identify Noninfringing Substitute During Summary Judgment Precludes Such Evidence at Trial

The court granted in part plaintiff's motion in limine to preclude evidence of a noninfringing alternative that was not addressed in summary judgment. "The summary judgment ruling that there were no acceptable and available non-infringing alternatives will stand. [Defendant] had the burden of identifying any such alternatives at the summary judgment stage, and it failed to do so. [Defendant] may not now introduce the new theory that tubal ligation was an acceptable alternative. . . . The summary judgment ruling does not imply that [plaintiff] would have sold its product to every user of [defendant's] method if [defendant] had not been in the market. Rather, the absence of any acceptable non-infringing alternative is only one step along the way to proving lost profits."

Conceptus, Inc. v. Hologic, Inc., 3-09-cv-02280 (CAND October 6, 2011, Order) (Alsup, J.)