Magistrate Judge Burke Orders Narrowing of Claims and Prior Art

April 3, 2018

Publication| Intellectual Property

In Thermo Fisher Scientific Inc. v. Agilent Technologies, Inc., No. 17-600-LPS-CJB (D. Del. Feb. 5, 2018), Magistrate Judge Burke ordered the parties to reduce in two stages the number of asserted claims and prior art combinations involving the three asserted patents. The plaintiffs first were ordered to reduce the number of asserted claims to 40, then about nine months later to 15. The defendant was ordered to reduce the number of prior art combinations to 160 out of 40 references, then to no more than 50 out of at most 20 references, with each reduction to take place two weeks after the plaintiffs’ respective reductions.

Key Point: In proposing a framework for the narrowing of invalidity contentions, the parties looked to Chief Judge Stark’s opinion in Greatbatch, Ltd. v. AVX Corp., C.A. No. 13-723-LPS (D. Del. July 28, 2015), on this topic for guidance, an opinion on which Magistrate Judge Burke has also relied on several occasions for reducing the number of prior art references and obviousness combinations.

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