Judge Andrews Denies Motion in Limine Regarding Reference’s Status as Prior Art

August 24, 2018

Publication| Intellectual Property

In AstraZeneca L.P. v. Sigmapharm Laboratories, LLC, No. 15-1000-RGA (D. Del. July 6, 2018), Judge Andrews denied the plaintiffs’ motion in limine to exclude from trial an obviousness reference alleged to be prior art under 35 U.S.C. § 102(d), but reserved the ability to revisit the issue after trial. The parties disputed whether the reference, a South African patent, could serve as prior art for purposes of obviousness by virtue of Section 102(d), which concerns loss of right rather than novelty. The U.S. Court of Customs and Patent Appeals’ decision in In re Bass, 474 F.2d 1276, 1290 (C.C.P.A. 1973), and the Federal Circuit’s decision in Oddzon Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997), both cast doubt on whether the South African patent at issue here could serve as an obviousness reference on the basis of Section 102(d), but Judge Andrews concluded that the Court was not bound by either decision, as the relevant passages were dicta. Thus, Judge Andrews denied the motion to exclude the patent at trial, but reserved the right to take up the question again after trial.

Key Point: Judge Andrews agreed with the Federal Circuit that there was “substantial logic” to the proposition that the loss-of-right provisions of Section 102 are irrelevant to what qualifies as prior art for purposes of obviousness, but deferred a ruling on the question, should one be needed, until after the bench trial to consider it more closely in the context of the facts of this case.

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