United States District Court, W.D. Washington, Seattle
ORDER GRANTING PLAINTIFF'S MOTION FOR
S. Lasnik United States District Judge
matter comes before the Court on plaintiff's
“Motion for Clarification or Relief from
Deadline.” Dkt. # 171. On November 14, 2017, the Court
denied defendants' request for a declaration that claim 8
of U.S. Patent No. 8, 707, 855 (“the ‘855 patent)
is invalid because it is anticipated by prior art under 35
U.S.C. § 102. Defendants argued that claim 8 and claim 9
of the ‘855 patent were anticipated by defendants'
U.S. Patent No. 8, 720, 320 (“the ‘320 patent).
The same argument had been raised before the United States
Patent and Trademark Office (“PTO”) when
defendants filed their request for reexamination of the
‘855 patent. Dkt. # 96 at 2. The PTO ultimately
concluded that the prior art identified by defendants
“does not disclose or suggest first and second outlet
probe receptacles in combination with the other limitations
of claims 8 and 9.” Dkt. # 141-1 at 18. The PTO
completed its reexamination, cancelling claims 9, 12, and 13
and amending claim 8 to incorporate the limitations of claim
ruling on defendants' motion for summary judgment, the
Court was cognizant of the PTO's expertise in evaluating
whether prior art anticipates a claim and was guided by the
PTO's analysis regarding the exact same reference on
which defendants' motion relied. The Court considered the
memoranda, declarations, and exhibits submitted by the
parties as well as the PTO's decision and the arguments
presented in the parties' Joint Status Report (Dkt. #
147) and found that the ‘320 patent does not describe a
device with first and second outlet probe receptacles
positioned substantially 180E apart on the bottom surface of
the body. Because defendants had not shown that amended claim
8 was anticipated or obvious, the motion for summary judgment
parties do not agree regarding the import of that decision.
Plaintiff argues that, by denying the motion, the Court
affirmatively found that claim 8 was not anticipated such
that the issue cannot be revisited at trial. Defendants
maintain that a denial of summary judgment simply indicates
that defendants were not entitled to judgment as a matter of
law and that the jury must decide the issue of validity. The
denial of a motion for summary judgment may mean different
things in different contexts. Where, for example, the denial
is based on the existence of a genuine dispute of material
fact, the issue generally goes to the jury. Where, however,
the moving party cannot prevail on the issue as a matter of
law, judgment for the non-moving party may be appropriate.
circumstances presented here fall into the latter category.
In order to overcome the presumption of validity that
attached to amended claim 8, defendants had and still have
the burden of showing by clear and convincing evidence that
every element and limitation of the claim was previously
described in the ‘320 patent, either expressly or
inherently, such that a person of ordinary skill would be in
possession of the invention upon reviewing the ‘320
v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008).
Defendants were unable to make that showing, and the Court
found as a matter of law that the ‘320 patent, with its
circumferential bottom receptacle, does not describe a device
with two receptacles positioned substantially 180E apart.
Defendants did not move for reconsideration of that finding
and offer no additional evidence or argument to rebut it.
Because a limitation of amended claim 8 is missing, there can
be no anticipation as a matter of law. Defendants will not be
permitted to place before the jury an issue which has been
finally resolved against them.
of the foregoing reasons, plaintiff's motion for
clarification is GRANTED. Amended claim 8 is not anticipated
by the ‘320 patent based on the evidence presented in
 The Court's summary judgment order
also addressed defendants' obviousness argument under 35
U.S.C. § 103, but it need not have. Obviousness was
argued only as to claims 12 and 13 of the ‘855 patent.
Dkt. # 76 at 3; Dkt. # 87 at 2. Plaintiff also points out
that defendants' invalidity contentions raise an
obviousness defense only as to claim 12 of the ‘855
patent. Dkt. # 170-1 at 5. The PTO, however, considered
obviousness in light of the ‘320 patent in combination
with an application published at ¶ 2013/0017303
(“Vu” or “the ‘303
application”) when it allowed amended claim 8.
 This determination does not, of
course, preclude future determinations regarding the
invalidity of claim 8 based on other records or references.
“Courts do not find patents ‘valid, ' only
that the patent challenger did not carry the ‘burden of
establishing invalidity in the particular case
before the court.” In re Swanson, 540 F.3d
1368, 1377 (Fed. Cir. 2008) (quoting Et ...