In a recent order, Judge Richard G. Andrews ruled on various motions in limine. Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Dec. 1, 2016). Notably, plaintiffs sought to prevent defendants from providing “any comparison between the accused products and alleged prior art.” Id. at 2. Judge Andrews granted and denied plaintiffs’ request in part, without prejudice to timely object to specific testimony at trial. Id.
As Judge Andrews explained, the parties agreed that “‘practicing the prior art’ is not a defense to infringement” and therefore defendants “may not make that argument.” Id. at 2-3. Defendants cited three cases to support their position that they may “argue that Plaintiffs’ patents are invalid because they would prohibit [Defendants] from practicing the prior art.” Id. at 3. Judge Andrew found that “[t]o the extent Defendants are saying, the patents are no different than the prior art, of course, they can argue that.” Id. On the other hand, “[t]o the extent they are saying something more, such as, Defendants’ products practice the prior art, they have a problem.” Id. Judge Andrews noted that the Federal Circuit decision defendants cited did not help their position, and both district court decisions “agree that Defendants cannot compare an accused product to the prior art for purposes of establishing invalidity or non-infringement.” Id.
Judge Andrews granted and denied other motions in limine, some in part, and postponed ruling on another.