Chief Judge Stark Grants Defendants’ Request to Increase Number of Prior Art References

December 1, 2015

Publication| Intellectual Property

In Enzo Life Sciences, Inc. v. Life Technologies Corp., C.A. No. 12-105-LPS (D. Del. Nov. 5, 2015), Chief Judge Stark granted the defendants’ request to increase the number of prior art references from six to twelve per asserted claim as to one of the patents-in-suit. According to the Court, the plaintiff’s lack of clarity over the priority date (attributable to a combination of disputes among the parties, the plaintiff’s changing position, and the plaintiff’s lack of a substantive response to interrogatories on this topic) rendered the defendants’ request reasonable, rather than a “pretext” (as the plaintiff alleged). The Court found persuasive the defendants’ argument that the determination of the priority date may ultimately exclude some of the references from qualifying as prior art, further justifying an expansion of the number of prior art references.

Chief Judge Stark further concluded that it was reasonable for the defendants to raise the issue in a post-Markman decision status report provided for in the scheduling order. The order expressly authorized the defendants to raise in the report any concerns with the limitations on prior art. But the Court did grant the plaintiff an extension of several weeks to respond to the defendants’ expert reports, to mitigate any prejudice the plaintiff would suffer.

Analysis: Chief Judge Stark continues to decide limits on the number of prior art references based on the facts of each case.

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