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The longer you hold a fact, defense or claim in secret, the greater the chance you will never get to use it. In this case, a "perfunctory" pleading with no invalidity contention bolstering led to the loss of an obviousness-type double patenting invalidity defense. Takeaway: make sure all defenses are adequately and timely disclosed.
Bosch's answer states that "[e]ach of the claims of the Patents-in-Suit is invalid and/or unenforceable for failure to satisfy the conditions of patentability as specified under one or more sections of Title 35 of the U.S. Code, including, without limitation, Pre-AIA 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256." As a preliminary matter, it is questionable whether this perfunctory, single-sentence assertion is sufficient to preserve all of the statutory invalidity bases listed. Normally this shortcoming is cured by the Invalidity Contentions required by our Patent Local Rules. However, as Bosch points out, double patenting is not a prior art defense and is not covered by the local rules requiring invalidity contentions. More importantly, however, is that nowhere in the above does Bosch ever state, or even hint, that any non-statutory invalidity bases are asserted.
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