Judge Robinson: Do Not Violate the Cardinal Rule That Evidence Not Vetted During Discovery Cannot Be Used at Trial
In Belden Technologies Inc. v. Superior Essex Communications LP, C.A. No. 08-63-SLR (D. Del. Aug. 12, 2011), a patent infringement case involving high performance data cables, Judge Robinson recently issued a memorandum opinion deciding several post-trial motions, including plaintiffs' and defendants' motions for JMOL and plaintiffs' motion for a permanent injunction. Id. at 1. Although Judge Robinson upheld most of the jury's verdict as supported by substantial evidence and thus denied most of the plaintiffs' and defendants' requested relief, each motion for JMOL was granted-in-part. Id. at 40.
First, the court found that "defendants presented an obviousness defense at trial based on the knowledge of one of skill in the art, which evidence was not vetted during discovery and to which plaintiffs objected." Id. at 13. In doing so, "defendants violated the cardinal rule of this court's trial practice, that is, evidence not vetted during discovery cannot be used at trial." Id. Thus, Judge Robinson held that "the court will retry the invalidity of [this claim], at defendants' expense and precluding their use of the knowledge of one of ordinary skill in the art to support their invalidity defense. Id. at 14.
Second, the court found that one of the asserted claims was rendered obvious as a matter of law by the combination of two prior art patents, stating that the secondary considerations of non-obviousness proffered by the plaintiffs were insufficient to preclude the court's obviousness finding. Id. at 28. The court noted that "plaintiffs cite no testimony as to whether $3 million, a small fraction of the $140 million in sales of cables with separators, is significant to constitute a 'commercial success' in the patent validity context." Id. Further, "plaintiffs failed to show a nexus between the commercial success and [the asserted claim]"; "[g]iven plaintiffs' admitted status as a 'market leader' for high speed communication cables . . . , sales are easily attributed to their leadership position and successful marketing campaigns." Id.
Finally, the court denied plaintiffs' motion for a permanent injunction, finding that "plaintiffs have failed to demonstrate irreparable injury, as well as the inadequacy of money damages[,]" and "any hardship to plaintiffs would be outweighed by that to defendants." Id. at 39-40.