Fleming v. Escort Inc. et al

Filing 298

MEMORANDUM DECISION RE JURY QUESTION. Signed by Judge B. Lynn Winmill. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (cjm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
HOYT A. FLEMING,
Case No. CV 09-105-S-BLW
Plaintiff,
MEMORANDUM DECISION
RE JURY QUESTION

v.
ESCORT, INC. and BELTRONICS
USA, INC.,
Defendants.

Just after the jury in this case began its deliberations, they sent out a note to the Court
asking the following:
Can we possibly get some broader definitions or examples of “prior art”? The
definition in our notebook seems very limited. Can internal company documents,
prototypes, etc. that aren’t available to the public be considered prior art?
The Court proposed to counsel, by e-mail, that the question be answered by referring the
jury to the Glossary definition contained in their original instructions that was taken directly
from the Northern District of California Model Patent Jury Instructions. The plaintiffs agreed
but the defendants objected, arguing that
Yes, a company’s device (or “prototype”) can be prior art. See Instruction # 19. It
need not be available to the public to be considered prior art. Internal company
documents can also be prior art or they can corroborate other prior art. Defendants
request the above answer as a reference back to the glossary does not seem to answer
the specific question posed. . . . . In addition . . . in connection with the Glossary, it
says in the very first paragraph that "some terms will be defined in more detail in the
instructions you are given. The definitions in the instructions must be followed and
must control your deliberations." Thus, the incomplete glossary definition cannot
control and the jury should be referred to instructions 19 and 20.

Memorandum Decision - 1

Defendants’ argument that a “prototype” can be prior art and “need not be available to
the public to be considered prior art” is not entirely correct. In Apotex USA, Inc. v. Merck & Co.,
254 F.3d 1031, 1039 (Fed. Cir. 2001), the court stated that Ҥ 102(g) prior art must be somehow
made available to the public in order to defeat another patent . . . .” The Glossary definition
makes this clear and is taken directly from the Northern District of California Model Patent Jury
Instructions. Hence, the Court will refer the jury to the Glossary definition.
The Court does agree with defendants that the answer should also refer to instructions 19
and 20. Hence the Court will send the following answer to the jury:
Answer to Jury Question #1
You asked about a more complete definition of the term “prior art.” Please see the
definition of that term in the Glossary that was at the end of the original instructions you
received in your binder at the beginning of the case. Also, please review instructions 19 and 20.

DATED: July 2, 2012

B. LYNN WINMILL
Chief Judge
United States District Court

Memorandum Decision - 2