Prior art precluded as untimely; Further briefing on on-sale bar is ordered
Laboratory Skin Care, Inc. and Zahra Mansouri v. Limited Brands, Inc. and Bath and Body Works, LLC, Civil Action No. 06-601-JJF, October 14, 2009.
Farnan, J. Defendants’ motion for summary judgment on invalidity is denied. Defendants’ motion for leave to supplement is granted and plaintiffs’ motion to preclude is granted. Further briefing is ordered with regard to defendants’ motion for summary judgment pursuant to §102(b).
The patent-in-suit pertains to formulations for cleansing and moisturizing the skin. Defendant moves to supplement their summary judgment motion that the ‘516 patent is invalid as anticipated with formulations sheets for the Solarcaine product that they recently received through a third-party subpoena to Schering-Plough Corp. Plaintiffs contend that defendants’ submission is untimely given that defendants failed to subpoena Schering-Plough until 4 days before the discovery cutoff. In granting defendants’ request, the Court accepts defendants’ explanation for the delay that they had attempted to obtain the information through less intrusive means first and turned to the subpoena only when those attempts failed.
Next the Court considers plaintiffs’ motion to preclude the 1980 PDR as prior art. Plaintiffs contend that defendants should not be permitted to use the reference since it was not disclosed in discovery. Defendants argue that the 1990 PDR was produced on the last day of discovery, thereby placing plaintiffs on notice before the discovery cut-off. However, the disclosure (3 pages from the 1990 PDR) was buried in over 15,000 pages of documents that were otherwise identified by broad bates ranges. The Court agrees and finds that disclosure was not sufficient and that defendants have breached their duty to supplement pursuant to 26(e). Moreover, the failure was neither justified nor harmless. Thus defendants are precluded from relying on either the 1980 or 1990 PDR with respect to their anticipation defense.
Turning to defendants’ motion for summary judgment, defendants contend that five prior art references invalidate some or all of the asserted claims. Noting that anticipation is generally a question of fact, the Court finds that summary judgment is not warranted. Finally, the Court orders full briefing on the issue of whether the ‘516 patent is invalid under the on-sale bar of §102(b).
