Intellectual Property Law

Sue L. Robinson: Unclear Record Precludes Anticipation, Obviousness Findings

By Karen E. Keller, Andrew A. Lundgren et al.

In another example of the difficulty of obtaining summary judgment in Delaware, district judge Sue L. Robinson has refused to invalidate a network-security patent on the grounds of anticipation and obviousness. By doing so, the Court also highlighted the importance of presenting one's case on summary judgment.

Examining the allegedly anticipating prior art, the Court concluded that "arguabl[e]" differences of scale created an "unclear" record. In a footnote, the Court then equated this lack of clarity with a failure to satisfy the controlling clear-and-convincing standard of review. As a result, the Court declined "to find through a motion practice" that the prior art anticipated the patent-in-suit. For substantially the same reasons, the Court also rejected the obviousness contention.

The import of the decision? When arguing (or defending) invalidity, an essential part of the litigation strategy includes mitigating (or creating) doubts in the Court's mind about the prior art.

SRI Int'l Inc. v. Internet Security Systems, C.A. No. 04-1199-SLR (D. Del. Aug. 21, 2008) (Robinson, J.).

Full post as published by Delaware IP Law Blog on August 28, 2008 (boomark / email).