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   Can infringers bring in evidence of Invalid Claims
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   Author  Topic: Can infringers bring in evidence of Invalid Claims  (Read 1913 times)
bamtxlaw
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Can infringers bring in evidence of Invalid Claims
« on: May 23rd, 2005, 1:55pm »
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The following issue has proven itself to be quite difficult due to limited case law and/or statutes which specifically address it. Basically, the issue can be summarized as follows:
 
Can an alleged infringer present evidence of previously invalidated  claims of prior litigation (different case/ different infringer) against a patent owner who is now claiming patent infringerment against the infringer based on other claims of the same patent. (i.e. the patent owner is not trying to assert the previously invalidated claims).
 
The purpose would be to try and prevent the infringer from introducing evidence that may "dirty" the clean image the patent owner wants to portray.
 
Hopefully someone out there has faced this specific issue or in the alternative may be able to provide some insight. Anything offered will likely be helpful. Thanks!
« Last Edit: May 23rd, 2005, 4:02pm by bamtxlaw » IP Logged
Isaac
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Re: Can infringers bring in evidence of Invalid Cl
« Reply #1 on: May 23rd, 2005, 6:46pm »
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I think it depends on the reason for invalidating of the claims and
the applicability of those reasons to the current claims.
 
It would not be very far fetched that the previous ruling was
very probative of the current claims, but obviously nobody can
really tell without looking at the claims and the prior decision.
 
If the infringers only argument is that one set of claims is
invalid so likely the others are invalid, perhaps the argument would
not be allowed.  But I wouldn't be surprised if the infringer
could do better than that.
 
There may be any number of issues that were decided by the
previous court that you may be estopped from relitigating
with a new infringer.  If so, the defendant can certainly present those
decisions to the trier of fact.
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Isaac
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  jamesdivey  
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Re: Can infringers bring in evidence of Invalid Cl
« Reply #2 on: May 23rd, 2005, 6:59pm »
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If I'm not missing the point, I think you're looking for Blonder-Tongue, a Supreme Court case which establishes the collateral estoppel effect of claim invalidity determination in court.
 
In short, once a claim is determined invalid in court (and all appeals have been exhausted), that claim is forever lost against all potential infringers.  No one can infringe a claim that has been determined invalid in court.  Well, technically, you can infringe it but it's alway okay to infringe an invalid claim.  You won't be found liable.
 
The reverse is not true -- a claim that has not been found invalid (i.e., has successfully withstood a challenge to invalidity) can always be challenged on grounds of invalidity in subsequent cases by different litigants.  Remember, claims are never found valid; they are or are not found invalid.  In other words, claims are never found not invalid, they are only not found invalid.  
 
I hope that helps.  Sorry the semantics are so subtle and obcur, but that's the way it is.
 
Regards.
« Last Edit: May 23rd, 2005, 7:01pm by JimIvey » IP Logged

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James D. Ivey
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Isaac
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Re: Can infringers bring in evidence of Invalid Cl
« Reply #3 on: May 23rd, 2005, 7:33pm »
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The OP indicated that the new infringement action did not involve
the same claims.   I think there is still the possibility that
the patentee may be estopped from arguing some common issues
decided in the previous action, but I'm don't know if there
are patent specific court decisions that might limit the
garden variety application of estoppel.
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Isaac
JimIvey
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  jamesdivey  
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Re: Can infringers bring in evidence of Invalid Cl
« Reply #4 on: May 23rd, 2005, 7:48pm »
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I see.  Other claims in the same patent.  Skimmed past that the first time.
 
I don't see any reason it wouldn't be allowed to bring such evidence.  But then I'm not a litigator.
 
I'm not sure it would be helpful to bring such evidence.  If the claims now asserted had withstood a challenge to validity, that would seem to make the claims appear stronger -- not good for the accused.  On the other hand, if the claims now asserted were not asserted before and didn't face the challenge to validity, it might be helpful to show that similar, related claims were shown to be invalid for such and such reasons.
 
Bottom line:  I don't know.
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James D. Ivey
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