Summary Judgment as to Priority and On Sale Date Requires Admission of Infringement

The court denied defendant's motion for summary judgment as to the priority date of a the asserted patent claims and on sale date of the accused product because defendant was unwilling to admit infringement. "Defendant argues that the priority date is significant, because if the patents in suit are only entitled to the later date, then if Defendant’s accused products infringe, then they also anticipate and render invalid the asserted claims. Defendant does not seek summary judgment of invalidity at this time, and instead merely seeks partial summary judgment of the priority date and the date its accused products were on sale. . . . But Defendant fails to grapple with its own dilemma: that to argue anticipation, it needs to admit infringement. And Defendant is unwilling to do so, preferring instead to reserve the right to argue noninfringement if this motion fails. . . . Unfortunately for Defendant, the law requires it in this circumstance to demonstrate that the claims read on its accused product if it wants to argue that those products anticipate. The Court need only consider a patent’s entitlement to a claimed priority date after a defendant has come forward with invalidating prior art. . . . By Defendant’s failure to demonstrate that the asserted claims read on the accused product, it has failed to shift the burden to Plaintiff to demonstrate entitlement to the claimed priority dates.”

Bird-B-Gone Inc. v. Bird Barrier America Inc., et. al., 8-12-cv-00178 (CACD February 15, 2013, Order) (Guilford, J.).