No Judicial Estoppel From Concession That Accused Device Would be Patentable Over Asserted Claims

The court denied defendant's motion for summary judgment that plaintiff was judicially estopped from asserting infringement based on statements about the patent-in-suit during prosecution of another patent. "[Plaintiff] conceded that a presterilized, disposable sampling device would be patentable notwithstanding the [patent-in-suit], but not that such a device necessarily would avoid infringement of the [patent]. The Federal Circuit has recognized - odd or rare as the circumstance may be - that a device may be patentable over prior art without avoiding infringement as a matter of law. [Plaintiff] thus has not taken mutually exclusive positions and is not estopped from arguing that the [accused] device infringes the [patent]."

EMD Millipore Corporation, et al. v. AllPure Technologies, Inc., 1-11-cv-10221 (MAD September 17, 2013, Order) (Woodlock, J.)