Tuesday, January 17, 2012

Lack of Expert Testimony Concerning Priority Date Precludes Prior Art Evidence

The court granted plaintiff's motion in limine to preclude defendants from presenting evidence of a patent as prior art where defendants failed to present expert testimony concerning the priority date of the patent-in-suit. "At issue is whether the parent [patent application] contained sufficient disclosures such that 'one skilled in the art, reading the original specification, would immediately discern the limitation at issue in the parent.' The focus is not on whether the parent application contained the express words of the claim, but rather whether the disclosures convey that plaintiff "was in possession of the invention" at the time of the prior application. Defendants, however, have offered no expert testimony on this issue. The court thus finds that defendants have not demonstrated that plaintiff is not entitled to [the claimed] priority date. Given this failure, [the patent to be excluded from evidence] does not constitute prior art."

Voda v. Medtronic Inc., et. al., 5-09-cv-00095 (OKWD January 12, 2012, Order) (Leonard, J.)

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