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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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District Court Denies Summary Judgment Where Defendant Relied on Prior Art Already Considered by Examiner and Failed to Submit Expert Report

Woods v. DeAngelo Marine Exhaust, Inc., Case No. 08-81579-CIV (S.D. Fla. Nov. 23, 2009)

In this case, the district court denied defendant's motion for summary judgment of obviousness regarding patents relating to "water jacketed exhaust pipes for marine exhaust systems."  The prior art relied upon by the defendant was already considered by the patent examiner, leading the Court to state that defendant's burden of showing obviousness was "particular heavy" and "especially difficult when the prior art was before the PTO examiner during prosecution of the application."

The defendant did not submit an expert report analyzing the patents-in-suit and the prior art and also did not address the level of skill in the art in its motion for summary judgment.  In response, the district court noted that "[t]he lack of expert evidence is significant … although expert testimony is not always required, such evidence would help the court properly assess the primary factors set forth in Graham … [w]ithout the benefit of expert guidance from one skilled in the art, the court must evaluate the defendant's motion for summary judgment with only attorney argument."

Finding that none of the cited prior art appeared to teach or suggest a specific portion of the asserted claims, the Court found that there were genuine issues of material fact concerning obviousness, and denied defendant's motion for summary judgment.

Thanks go out to Docket Navigator for bringing this case to my attention.

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