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Judge Stark: Summary Judgment Denied on Non-Infringement, No Indirect Infringement, and Invalidity

Judge Stark recently considered summary judgment motions from defendants Canon and Adobe in a patent infringement action brought by Tarkus Imaging. Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. June 14, 2012). Judge Stark ultimately concluded that summary judgment was not appropriate on any point because “the portions of this case at issue in the pending summary judgment motions present a ‘battle of the experts’ that is not amendable to resolution prior to presentation of evidence, including testimony.” Id. at 1-2.

Specifically, with regard to Canon’s motion for summary judgment of non-infringement, “[t]he Court [was] not persuaded, at this stage of the proceedings, by Canon’s contentions that Tarkus is barred from asserting doctrine of equivalents infringement theories due to application of prosecution history estoppel or that Tarkus has failed to create a genuine dispute of material fact because Tarkus’s expert has not identified specifically infringing source code.” Id. at 5. The Court also denied Adobe’s motions for summary judgment of non-infringement and no indirect infringement. On the issue of indirect infringement, Adobe argued that it had no knowledge of the patent-in-suit, but the Court found that Tarkus had “presented evidence that creates a dispute of fact as to whether Adobe was willfully blind to the existence of the [patent-in-suit].” Id. at 8-9.

Finally, the Court denied Canon’s motion for summary judgment that Tarkus’s patent was invalid on the ground that a claim term lacked an antecedent basis and was therefore indefinite. An expert opinion, the Court said, “based on the plain language of the claims and the specification, is sufficient to create a genuine dispute as to whether a person of ordinary skill in the art could determine the scope of the claim and the meaning of [the claim term] despite the lack of express antecedent basis [for that term]. As a claim term without an explicit antecedent basis may nevertheless be definite if the term ‘has a reasonably ascertainable meaning . . . decided in context,’ summary judgment is not warranted based on the present record.” Id. at 10-11.


Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS (D. Del. June 14, 2012).

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