In Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-555-RGA and Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA (D. Del. Jan. 16, 2016), Judge Richard G. Andrews denied in part defendants’ motion to exclude the testimony of plaintiff’s liability expert. As Judge Andrews explained, defendants objected to the expert’s testimony on the grounds that “he applied the incorrect legal standard regarding conception, that he did not analyze all of the claim elements and applied an incorrect legal standard for written description, and that he failed to apply the Court's claim construction in analyzing infringement.” Id. at 1.
As to the conception issue, Judge Andrews noted that the defendants' argument boiled down to “what standard must be applied to corroborating evidence.” Id. According to Judge Andrews, defendants essentially argued that “the corroborating evidence itself must contain an enabling disclosure.” Id. at 2. Judge Andrews found, however, that courts have applied the “rule of reason,” which was “developed . . . to ease the requirement of corroboration.” Id. at 3. Judge explained that “if corroborating documents were themselves enabling disclosures, then conception would never need to be proved via inventor testimony, as the documents would speak for themselves.” Id. Judge Andrews concluded that the “real issue is whether the corroborating documents provide enough evidence for the jury to believe this testimony, not whether the documents themselves are enabling disclosures.” Id.
With respect to the written description issue, defendants asserted, among other things, that the expert “failed to address each and every claim element, and identify written description support for them in the provisional and parent application.” Id. at 4. In rebuttal, plaintiff argued that because “the PTO awarded a priority date of September 3, 1996, it is the Defendants’ burden to disprove entitlement to that priority date by clear and convincing evidence.” Id. Addressing plaintiff’s rebuttal, Judge Andrews explained that priority is awarded on a claim-by-claim basis, and pointed out that the Examiner from the PTO only made a priority finding with respect to claim 1. Id. Thus, according to Judge Andrews, plaintiff was still required to prove entitlement to its alleged priority date with respect to the remainder of the claims at issue. Id. Judge Andrews found that plaintiff’s expert did not show where each and every claim element found support in the alleged priority application for the remainder of the claims. Id. at 5. On the other hand, Judge Andrews found that defendants’ experts contested only specific elements, and plaintiff’s expert should therefore not be faulted for “failing to address apparent nonissues.” Id. at 5-6. Judge Andrews concluded that if plaintiff’s expert “needs to supplement his reports on the non-controversial elements, the parties should promptly meet and confer, and, if they cannot come to an agreement, file letters outlining their problem(s).” Id. at 6.
Turning to the claim construction issue, Judge Andrews concluded that defendants’ argument that the expert failed to apply the Court’s claim construction was "merely a repackaging of Defendants' summary judgment arguments and is not properly considered in a Daubert motion. Accordingly, this argument will be dealt with in the Court’s ruling on the summary judgment motions.” Id. at 6.
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