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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 1912 times)
Isaac
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Posts: 3472
Re: Can infringers bring in evidence of Invalid Cl
« Reply #5 on: May 23rd, 2005, 8:44pm »
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I'm not a litigator either, but as I recall there can often
be an assymetric component to estoppel.  The defendant can use past
litigation to prevent the plaintiff from rearguing issues lost
against another defendant, but the plaintiff cannot in turn assert
that issues in his favor have already been decided against
a previous defendant.
 
That said, I agree with you that litigation tested claims ought
to be stronger.  The OP did not make clear whether the claims he
now wishes to assert were held to be valid in an earlier action.
« Last Edit: May 23rd, 2005, 8:45pm by Isaac » IP Logged

Isaac
Brad
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Re: Can infringers bring in evidence of Invalid Cl
« Reply #6 on: May 23rd, 2005, 11:54pm »
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To help clarify, the claims which are now to be asserted were not even contested nor asserted in the prior litigation. The objective would be to prevent our current infringer from bringing in evidence the old claims which were asserted and held to be invalid. (Even though they don't contain the same issues as the claims which are "now" to be asserted).  
 
I simply would like to see if I have any legal grounds for preventing the infringer from even bringing to light the prior invalid claims in order to make my patent seem less credible.
 
Hopes this helps! By the way thanks for the replies thus far!
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bamtxlaw
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Posts: 5
Re: Can infringers bring in evidence of Invalid Cl
« Reply #7 on: May 23rd, 2005, 11:58pm »
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Sorry if there was some confusion as to the prior post. But that was from bamtxlaw.
 
Thanks!
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bamtxlaw
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Posts: 5
Re: Can infringers bring in evidence of Invalid Cl
« Reply #8 on: May 24th, 2005, 12:07am »
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on May 23rd, 2005, 6:59pm, JimIvey wrote:
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.

 
 
I actually saw this same case too! However, instead of an infringer using this as a shield to prevent litigation of a previously invalidated claim, can the patent owner basically use the doctrine as a sword to estopp an infringer from bringing to the court's attention evidence of previously invalidated claims which are not relevent simply to ruin the patent's image.
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Isaac
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Posts: 3472
Re: Can infringers bring in evidence of Invalid Cl
« Reply #9 on: May 24th, 2005, 2:13am »
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Theoretically the claims in a patent are drawn to embodiments
of a single invention or to a few related inventions.  It is
highly likely that a decision on a set of claims has settled
issues relevant to a related set of claims even if there is
not complete estoppel on the previously uncontested claims.
 
It is also possible that testimony under oath by a party in
litigaton can be introduced to show an inconsistent position in
a second litigation possibly in an attempt to challenge the parties
credibility.
 
Some theories for introducing the evidence may be improper but
I'm personally skeptical of your theory for excluding evidence,
particularly if the evidence is probative of issues concerning
currently contested claims.
 
If the evidence is truly not relevant, then the rules of evidence
would make it inadmissable.   But is it really irrelevant?
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Isaac
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