*1 Case 1:19-cv-01515-RGA Document 368 Filed 04/04/25 Page 1 of 2 PageID #: 36674
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE RSB SPINE, LLC, :
: Plaintiff, :
: v. : Civil Action No. 19-1515-RGA
: DEPUY SYNTHES SALES, INC., et al., :
: Defendants. :
MEMORANDUM ORDER The parties have briefed two issues. First, the role of inventor testimony and secondary considerations in determining an interference-in-fact. (D.I. 355, 356, 357, 358). Second, whether DePuy’s ‘207 may claim priority to the ‘089 PCT Application. (D.I. 359, 360). I have reviewed the parties’ briefing.
Regarding the first issue, Mr. Lechmann may testify in the interference-in-fact section of the trial but will be limited to testimony about facts within his personal knowledge. He may not testify about the SynFix-LR or about secondary considerations of (non)-obviousness.
Regarding the second issue, the ‘599 continuation application underlying the ‘207 patent contained a “specific reference” with the required information in the first sentence of its specification when it was filed. 35 U.S.C. § 120; (D.I. 359-1 at 4 of 20, 37 C.F.R. § 1.78(a)(2)(i), (iii); D.I. 359-5 at 6 of 16). The ‘599 application did not need to be amended to contain this
Page 1 of 2 *2 Case 1:19-cv-01515-RGA Document 368 Filed 04/04/25 Page 2 of 2 PageID #: 36675
information. A reference to 35 U.S.C. § 120 itself was not required. Accordingly, the ‘207 patent is entitled to claim priority to the filing date of the PCT application.
IT IS SO ORDERED this 4 th day of April 2025.
_/s/ Richard G. Andrews______ United States District Judge Page 2 of 2