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Judge Stark grants motion for summary judgment of laches and dismisses in part Defendants’ inequitable conduct affirmative defenses and counterclaims

Judge Stark recently granted defendants’ motion for summary judgment of laches in the long-standing suit filed by St. Clair for infringement of patents related to power savings and management. St. Clair Intellectual Property Managment Consultants, Inc. v. Acer, Inc., et al., C.A. No. 09-354-LPS (consol.) (D. Del. July 2, 2013). “A laches defense requires a showing by a preponderance of evidence that (a) the patentee’s delay in bringing suit was unreasonable and inexcusable, and (b) the alleged infringer suffered material prejudice attributable to the delay.” Id. at 4 (quotations omitted). And, a presumption of laches arises if the patentee had actual or constructive knowledge of alleged infringing activity for six or more years before filing suit. Id. Defendants’ argued, and Judge Stark agreed, that there was such a presumption here because St. Clair had constructive knowledge of “activities infringing the Fung patents” no later than October 2002, but did not file suit until May 15, 2009. Id. Specifically, Judge Stark found that:

The evidence presented by Defendants establishes that St. Clair, [its co-owner, and the patents’ inventor], were aware of the existence of products embodying “technology similar to that for which [the patentee] holds a patent and [which] uses that similar technology to accomplish a similar objective.” By its failure to act, despite this knowledge, St. Clair “shirk[ ed]” its “duty to examine the product or device more closely to ascertain whether it infringes … on peril of triggering the laches period and perhaps ultimately losing [its] right to
recover damages for the infringement.”

Id. at 6. (quoting Crown Packaging Tech. , Inc. v. Rexam Beverage Can Co., 679 F. Supp. 2d 512, 520 n.42 (D. Del. 2010).

To rebut the presumtion of laches, St. Clair argued that the trigger date for laches was the date of the first accused infringement, which was August 2004, and that the pre-2004 accused products were immaterial “because a new laches period began as a result of design changes implemented in the newer accused infringing products.” Id. at 7. Judge Stark rejected this argument because “St. Clair cannot avoid a laches defense by narrowing its infringement contentions, especially given that in 2002 St. Clair conducted an analysis of pre-2004 products.” Id. at 8.

Judge Stark also granted-in-part St. Clair’s motion for summary judgment dismissing certain bases for Defendants’ inequitable conduct defenses. Id. at 8. Defendants’ defenses were based on the named inventor misrepresenting that he was the sole inventor, the withholding of material prior art during prosecution, and the applicant’s misrepresenting its entitlement to small entity status. Id. Judge Stark granted St. Clair’s motion as to one prior art reference that was allegedly withheld during prosecution. Id. at 11. Specifically, Judge Stark found that Defendants’ failed to establish that the applicant or its attorneys knew of the specific reference or intentionally withheld it from the PTO. Id. Judge Stark also found that Defendants failed to raise a triable issue of fact as to the applicant’s intent to deceive the PTO regarding small entity status. Id. at 12-13.

St. Clair Intellectual Property Managment Consultants, Inc. v. Acer, Inc., et al., C.A. No. 09-354-LPS (con…

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