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Failure to Offer Evidence of Acceptable Non-Infringing Alternatives in Summary Judgment Precludes Later Offer at Trial

Plaintiff filed a patent infringement action and subsequently filed a partial motion for summary judgment. In the partial motion for summary judgment, the plaintiff contended that there were no acceptable and available, non-infringing alternatives to the claimed inventions during the relevant damage period. The district court granted the motion.

Prior to trial, the plaintiff filed a motion in limine to preclude the defendant from introducing at trial evidence or argument that tubal ligation was an acceptable non-infringing alternative during the damages period. With one caveat, the district court granted the motion.

The district court noted that in opposing the plaintiff’s partial summary judgment motion, the defendant only identified design arounds that the defendant engineers tested but were never brought to market. The defendant did not identify any tubal ligation as an acceptable non-infringing alternative to oppose the summary judgment motion. The district court ruled that it was too late to do so now. “The summary judgment ruling that there were no acceptable and available non-infringing alternatives will stand. [Defendant] had the burden of identifying any such alternatives at the summary judgment stage, and it failed to do so. [Defendant] may not now introduce the new theory that tubal ligation was an acceptable alternative.”

The district court did caution that the plaintiff still had the burden of establish that but for the infringement the plaintiff would have made the additional sales. The district court emphasized that the absence of acceptable non-infringing substitutes is just one of four factors that must be satisfied. “The summary judgment ruling does not imply that [plaintiff] would have sold its product to every user of [plaintiff’s] method if [plaintiff] had not been in the market. Rather, the absence of any acceptable non-infringing alternative is only one step along the way to proving lost profits.”

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The district court’s opinion is another reminder that it is important to oppose summary judgment with all of the evidence available. The failure to do so can–and likely will–lead to the preclusion of evidence offered later at trial.

Conceptus, Inc. v. Hologic, Inc., Case No. C 09-02280 WHA (N.D. Cal. Oct. 6, 2011)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or