Judge Stark grants defendant’s motion for trial on exhaustion defense, denies motion as to laches and license defenses
In CIF Licensing, LLC d/b/a GE Licensing v. Agere Systems LLC, C.A. No. 07-170-LPS (D. Del. Dec. 3, 2012), Judge Leonard P. Stark decided several post-trial motions. This patent infringement action had been assigned to and tried before Judge Joseph J. Farnan, Jr.; upon his retirement the case was transferred to Judge Stark. Id. at 1.
Among the numerous post-trial motions that Judge Stark considered was Defendant’s motion for a trial on the remaining defenses of laches, patent license, and patent exhaustion. Id. at 4-5. Judge Stark granted the motion for a new trial on the exhaustion defense and denied the motion as to laches and license, relying largely on Judge Farnan’s pre- and post-trial orders.
Judge Stark denied Defendant’s request for a trial on the laches and license defenses because Judge Farnan had “already ruled” on the merits of these defenses and because Judge Stark agreed with Judge Farnan’s conclusions. Id. at 5, 7. Following oral argument on cross-motions for summary judgment, Judge Farnan had ruled the laches defense to be “‘without merit’” and had “‘tentatively rule[d]’” the license defense to be “‘amenable to disposition on summary judgment’” as well. Id. at 3. He had added that the license defense was “‘inapplicable to the infringement claims at issue.’” Id. Defendant was not permitted to present evidence on any of its defenses to the jury but Judge Farnan “indicated that Defendant would be permitted to renew the motions at the conclusion of the case.” Id. at 3. The jury returned a verdict, discussed here, of invalidity as to three out of the four patents-in-suit and willful infringement as to the remaining patent. Id. at 2. In his written post-trial order, Judge Farnan granted Plaintiff’s motions for summary judgment that its claims were not barred by laches and that Defendant was not licensed to the patents-in-suit, observing that he had decided both defenses were “‘without merit’” at oral argument. Id. at 3-4.
On the other hand, Judge Stark granted Defendant’s motion for a trial on the exhaustion defense because it had “received relatively little attention” at oral argument, and “[n]either at the conclusion of the Oral Argument nor in any subsequent oral or written order did Judge Farnan describe the exhaustion defense as having ‘no merit.’” Id. at 9. While Judge Farnan's post-trial order had denied defendant's motion for summary judgment of non-infringement due to patent exhaustion, Judge Stark observed that “Judge Farnan expressly granted [Defendant] ‘leave to renew [its motion] in the form of a post-trial motion.’” Id. Judge Stark additionally noted that “a trial [was] necessary to resolve [Defendant’s] exhaustion defense” because there were several significant factual disputes between the parties on this issue. Id. at 9-10.