Judge Robinson Allows Late Reliance on Reference

Scott Daniels | October 13, 2011

Reexamination provided an unexpected benefit to the accused infringer in Asahi Glass v. Guardian Industries in Delaware.  Last week Judge Sue Robinson allowed Guardian to rely upon a prior art reference at trial, even though the reference had not been timely identified or analyzed in the Guardian’s original expert report.  The reference had been used by the Japanese Patent Office in 2005 to reject claims in applications corresponding to the patents-in-suit – so Judge Robinson might have been justified in ruling that Guardian had ample opportunity to present the reference on a timely basis. 

The reference appears to have first come to the attention of the parties in July when it was applied by the examiner to reject the patents-in-suit in co-pending reexaminations.  Judge Robinson denied a request by Guardian to assert the reference in a summary judgment motion, but yielded on use of the reference at trial.  “Given the unusual circumstances of the surfacing of the Tani reference only recently during reexamination, its importance to the PTO as potential invalidating art, and the importance of giving the Federal Circuit as thorough a record as is practicable, the court will allow [Guardian] to present its obviousness theory based on the Tani reference at trial.”  The Judge’s only proviso was that Guardian’s expert be presented for a deposition on the new reference and that Asahi’s expert be permitted to submit a supplemental report on the new reference.

Guardian’s lawyer who suggested reexamination must be a hero now in that camp.  

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