Perfect Surgical Techniques, Inc. v. Olympus Surgical & Industrial America Inc., 4-12-cv-05967 (CAND December 16, 2013, Order) (Hamilton, J.)
Wednesday, December 18, 2013
On-Sale Invalidity Granted “For Purposes Of This Lawsuit Only”
The court granted in part defendant's motion for summary judgment that plaintiff's patent was invalid under the on-sale bar, but only for purposes of the instant lawsuit. "[P]laintiff seeks to amend its infringement contentions to remove its infringement allegations against four of the five products accused of infringing [the patent-in-suit]. . . . [S]hortly before the [early neutral evaluation] session, plaintiff was informed that a predecessor to one of the accused products . . . was on sale more than one year before the filing of the [patent-in-suit], thus exposing the [patent-in-suit] to an invalidity challenge based on 35 U.S.C. § 102(b). Defendants argue that plaintiff seeks to amend its contentions solely to avoid a finding of invalidity. . . . Plaintiff does not dispute that the [predecessor products] are identical in all material respects to the accused [forceps], nor does it dispute that the [predecessor forceps] were on sale more than one year before the [patent-in-suit] was filed. . . . [W]ithout the benefit of a claim construction proceeding, a universal finding of invalidity would be premature. . . . [B]ecause the court has not issued a claim construction order, and thus has not compared the [predecessor forceps], on a limitation-by-limitation basis, to the construed claims of the [patent], the court . . . grants defendants’ summary judgment of invalidity for purposes of this lawsuit only."