By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Pfizer Inc., et al. v. Sandoz Inc., et al., Civil Action No. 13-1110-GMS (D.Del.,  November 4, 2015), the Court denied Defendants’ Motion to Amend Findings and Judgment on Anticipation of U.S. Patent No. 6,858,650 (“the ‘650 Patent”).  During the four day bench trial, Plaintiffs moved, pursuant to Federal Rule of Civil Procedure 52(c), for judgment on partial findings on the issue of anticipation of the ‘650 Patent.  Id. at 1.  The Court granted Plaintiffs’ motion during the trial upon finding the ‘650 Patent was not anticipated by the reference to fesoterodine in the PCT/EP99/03212 (“the ‘212 Application”) because both inventions were the work of Dr. Meese.  Id.  The Court reasoned that “[a] patentee’s ‘own work may not be considered prior art in the absence of a statutory basis.’” (citing Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1355 (Fed. Cir. 2003)).

In their Motion to Amend Findings and Judgment on Anticipation, Defendants, for the first time according to the Court, claimed that the ‘212 Application should not be considered Dr. Meese’s own work because there were two inventors listed on the ‘212 Application – Dr. Meese and Dr. Sparf.  Id. at 2-3.  Thus, Defendants asserted that the ‘212 Application should be considered the work of a separate inventive entity and may be considered prior art.  Id.

In denying Defendants’ Motion, the Court found that Defendants had not raised the issue before and deprived the Court of the opportunity to fully hear evidence on the issue.  Id. at 3.  In addition, the Court found that, even if Defendants did not waive the argument, the fact that the ‘212 Application lists two inventors is not dispositive and the evidence on the record was sufficient to support the Court’s original ruling.  Id.  Specifically, the Court found that the record was sufficient to support a finding that Dr. Meese alone invented the form of fesoterodine disclosed in the ‘212 Application.  Id. at 4-5.  Thus, there was no clear error of fact.  Id. at 5.

Copies of the Memorandum Opinion and accompanying Order are attached.

The take away from this case is that counsel have to be very aware of the record and must be diligent to provide written notice of any claims and/or defenses and to expressly rebut any contested assertions in the Pretrial Order.  Counsel should not assume the Court will recognize a line of questioning on an issue during trial by itself as sufficient to satisfy the requirement for notice of a party’s position on an issue.