AGA Medical Corp. v. W.L. Gore & Associates, Inc., 0-10-cv-03734 (MND October 26, 2012, Order) (Mayeron, M.J.).
Tuesday, October 30, 2012
Prior Art Statement Must Explain How Each Prior Art Combination Renders a Claim Obvious
The court granted in part plaintiff's motion to strike defendant's prior art statement and barred defendant from relying on any combination of prior art to assert its obviousness defense without a detailed explanation of how the combination invalidates the claims. "If [defendant] intends to rely upon all 1406 possible combinations, then it must individually list each combination and explain in detail how each combination renders one or more of [plaintiff's] claims obvious. The potential length of a prior art statement does not excuse non-compliance with this Court’s Order. . . . While [defendant] identifies legitimate potential reasons to combine, it does not actually include these reasons in any explanation of a specific combination. Instead, [it] simply listed broad reasons to combine that could be used in a §103 defense and then claimed that all of these reasons apply to all 1406 or more potential combinations. Like [defendant's] method of listing potential combinations, this tactic does not comply with the spirit or intent of this Court’s Order."