Posted On: October 19, 2011

Judge Robinson: Orders Leading Up To Asahi Trial

The jury trial in Asahi Glass Co. Ltd. v. Guardian Indus. Corp. case (09-515-SLR) started on October 17, 2011, and Judge Robinson issued several orders in the leadup to trial:

  1. Sept. 26: The Court excluded the defendant's experts' written description/enablement testimony, after criticizing the expert’s report for failing to construe the claims at issue, for failing to apply the required analyses, and for failing to provide “a limitation-by-limitation comparison of each asserted claim to each prior art reference.” The Court asked the defendant to submit a color-coded version of the expert’s report that matches the claim elements with the prior art descriptions.
  2. Oct. 3: The Court excluded the expert’s anticipation analysis after reviewing the color-coded report, although the Court allowed obviousness testimony based on a supplemental expert report that did not have the same objections
  3. Oct. 11: The Court granted a motion to reconsider the Sept. 26 order, and clarified that the defendants were barred from presenting any anticipation claims at all, because they would necessarily lack expert testimony.
  4. Oct. 13: The Court barred the plaintiff’s expert from testifying as a fact witness regarding secondary considerations of non-obviousness, because the expert's knowledge was based on the research of others rather than on his own observations.

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Posted On: October 18, 2011

Judge Robinson: Should leave to amend between the liability and damages phases of a bifurcated trial be subject to Rule 15(a) or 15(b)?

Judge Robinson was recently faced with an issue of first impression implicated by her practice of bifurcating damages and liability in her patent infringement cases. SRI International Inc. v. Internet Security Systems Inc., C.A. No. 04-1199-SLR (D. Del. Oct. 4, 2011). After the liability phase of the case concluded, a damages trial was scheduled to commence later this year. Id. at 2. Defendant Symantec subsequently filed a motion to amend its answer to assert inequitable conduct. Judge Robinson noted that Symantec’s motion presented the question of “whether leave to amend between the liability and damages phases of a bifurcated patent trial is subject to the liberal standard set forth in Federal Rule of Civil Procedure 15(a) or . . . the more conservative standard set forth in Federal Rule of Civil Procedure 15(b).” Id. at 5 n.5. The answer to that question, however, is left for another day because the court determined that under either standard, Symantec’s motion would be denied. Id. at 5.

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Posted On: October 14, 2011

Judge Leonard P. Stark: Motion to Amend GRANTED/Motion to Strike Inequitable Conduct Claims GRANTED

Plaintiff, Softview, sought to add claims against additional defendants concerning the same patents-in-suit within the time set forth in the case scheduling order. For this reason, and because the request satisfied the test for permissive joinder and will "promote judicial economy," the Court granted Softview's motion to amend. Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Order (D. Del. Sept. 30, 2011). Any concerns about jury confusion, the Court noted, could be addressed by a request for a separate trial later in the case. Id. at 1-2.

In addition, Softview moved to dismiss and strike defendants' inequitable conduct defenses. The Court granted the motion finding that the defendants' original and proposed amended pleadings "fail to adequately allege scienter." Id. at 2. A theory based on a "mere disagreement with Softview's prosecution counsel as to whether certain amendments impermissibly added 'new matter'" along with other related concerns does not "give rise to a reasonable inference that prosecution counsel knew he was amending to add new matter and intended to deceive the PTO of this fact" Id. (emphasis in original).

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Posted On: October 12, 2011

Judge Sue L. Robinson: Jury Verdict - Patent INVALID

On September 28, 2011, a jury returned a verdict in the Solvay, S.A. v. Honeywell Specialty Materials LLC matter, in favor of the defendants, finding the patent-in-suit invalid. C.A. No. 06-557-SLR, Jury Verdict Form (D. Del. Sept. 28, 2011).

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Posted On: October 11, 2011

Judge Stark: Motion to Dismiss or for a More Definite Statement Denied

In St. Clair Intellectual Property Consultants, Inc. v. Apple Inc., C.A. No. 10-00982-LPS (D. Del. Sept. 30, 2011), Judge Stark denied "Defendant Research in Motion Ltd. and Research in Motion Corporation's Motion to Dismiss or, in the alternative, Motion for a More Definite Statement." Id. at 1. In its motion to dismiss, Research in Motion ("RIM") argued that the plaintiff's complaint "fails to satisfy the third required element of Form 18 because it fails to identify the specific RIM products (or class of products) that allegedly infringe any of the patents-in-suit." Id. at 4-5. Although the complaint "identifies the category of infringing products as 'smartphones and tablets' and elaborates by identifying specific models of RIM's smartphones and tablets that are allegedly infringing[,]" RIM claimed that the complaint was deficient because it "identifies 'nearly every product sold by RIM' and, thus, provides insufficient notice[.]" Id. at 5. Judge Stark rejected this argument, noting that the complaint "makes numerous references to the allegedly infringing product models and explicitly ties the RIM products to each recitation of infringement[.]" Id. at 6. In denying RIM's motion to dismiss, the court also rejected RIM's argument that the complaint "fails to allege that RIM makes, uses, or sells a device 'embodying the patent[,]'" stating that "the Complaint is not required to address how the infringing products use the patented technology." Id. at 6-7. Finally, the court "determined that St. Clair's Complaint provides sufficient notice of the infringement allegations[,]" and therefore the court denied RIM's motion in the alternative for a more definite statement. Id. at 7-8.

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