Judge Williams Strikes Lack of Written Description Defenses as Untimely

November 11, 2022

Publication| Intellectual Property

In Sysmex Corp. v. Beckman Coulter, Inc., No. 19-1642-GBW (Oct. 12, 2022), newly appointed Judge Williams granted the plaintiffs’ motion to strike one of the defendant’s lack of written description defenses. 

As part of the narrowing of prior art references and invalidity defenses before trial, the court had granted the plaintiffs’ request to require the defendant to identify the specific claim limitations on which it based its Section 112 defenses.  When the defendant identified two limitations in a claim common to the two asserted patents, the plaintiffs moved to strike, arguing that these terms had not been identified in the defendant’s final invalidity contentions or expert reports as the basis for a written description defense. 

In response, the defendant argued that this defense was based not on any particular term but rather on the absence of a limitation, i.e., that the patent claimed a different manner of measuring blood cells from what was described in the specification.  But the court pointed out that the defendant’s previous contentions had identified specific terms for other written description defenses—just not these terms.  Judge Williams thus found the disclosure of these terms to be untimely.

The defendant chose not to argue that excluding the defense would be improper under Pennypack, so the court deemed any such argument waived and excluded the defense, adding that a Pennypack analysis would have favored exclusion anyway. 

The decision is available here.     

Key PointIf accused of failing to disclose a claim, defense, or theory, make sure to argue that the alleged failure should not result in exclusion under the factors identified by the Third Circuit in Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894 (3d Cir. 1977)—so as to avoid any waiver of such argument.

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