The U.S. Court of Appeals for the Federal Circuit again confirmed its precedent holding that an accused infringer cannot succeed merely by comparing the allegedly infringing activity to the prior art in an attempt to prove that the activity is either non-infringing or that the patent is invalid as anticipated, a strategy known as the “practicing the prior art” defense.  Cordance Corp. v. Amazon.com, Inc., Case No. 10-1502 (Fed. Cir., Sept. 23, 2011) (Linn, J.).

The district court overturned, via judgment as a matter of law (JMOL), a jury verdict of invalidity as to certain Cordance patent claims, holding that Amazon.com (Amazon) had failed to present sufficient evidence to support the jury’s verdict of anticipation.  On appeal, Amazon argued that substantial evidence, including expert testimony, supported the jury verdict that the claims are anticipated by Amazon’s 1995 online shopping cart system, which Amazon noted was very similar to Amazon’s currently accused system.  Cordance responded in part that Amazon’s anticipation argument was simply a “practicing the prior art” defense, a tactic the Federal Circuit has disfavored.

The Federal Circuit again confirmed that “practicing the prior art” is not a defense to patent infringement.  The Court noted that in Tate Access Floors, the Court explained that accused infringers “are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a ‘practicing the prior art’ defense to literal infringement under the less stringent preponderance of the evidence standard.”  However, the Federal Circuit nevertheless found that Amazon had presented sufficient evidence showing that each limitation of the claims is present in the prior art system, such that the jury verdict of invalidity should not have been overturned.