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The jury trial in Asahi Glass Co. Ltd. v. Guardian Indus. Corp. case (09-515-SLR) started on October 17, 2011, and Judge Robinson issued several orders in the leadup to trial:

  1. Sept. 26: The Court excluded the defendant’s experts’ written description/enablement testimony, after criticizing the expert’s report for failing to construe the claims at issue, for failing to apply the required analyses, and for failing to provide “a limitation-by-limitation comparison of each asserted claim to each prior art reference.” The Court asked the defendant to submit a color-coded version of the expert’s report that matches the claim elements with the prior art descriptions.
  2. Oct. 3: The Court excluded the expert’s anticipation analysis after reviewing the color-coded report, although the Court allowed obviousness testimony based on a supplemental expert report that did not have the same objections
  3. Oct. 11: The Court granted a motion to reconsider the Sept. 26 order, and clarified that the defendants were barred from presenting any anticipation claims at all, because they would necessarily lack expert testimony.
  4. Oct. 13: The Court barred the plaintiff’s expert from testifying as a fact witness regarding secondary considerations of non-obviousness, because the expert’s knowledge was based on the research of others rather than on his own observations.
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Judge Robinson was recently faced with an issue of first impression implicated by her practice of bifurcating damages and liability in her patent infringement cases. SRI International Inc. v. Internet Security Systems Inc., C.A. No. 04-1199-SLR (D. Del. Oct. 4, 2011). After the liability phase of the case concluded, a damages trial was scheduled to commence later this year. Id. at 2. Defendant Symantec subsequently filed a motion to amend its answer to assert inequitable conduct. Judge Robinson noted that Symantec’s motion presented the question of “whether leave to amend between the liability and damages phases of a bifurcated patent trial is subject to the liberal standard set forth in Federal Rule of Civil Procedure 15(a) or . . . the more conservative standard set forth in Federal Rule of Civil Procedure 15(b).” Id. at 5 n.5. The answer to that question, however, is left for another day because the court determined that under either standard, Symantec’s motion would be denied. Id. at 5.

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Plaintiff, Softview, sought to add claims against additional defendants concerning the same patents-in-suit within the time set forth in the case scheduling order. For this reason, and because the request satisfied the test for permissive joinder and will “promote judicial economy,” the Court granted Softview’s motion to amend. Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Order (D. Del. Sept. 30, 2011). Any concerns about jury confusion, the Court noted, could be addressed by a request for a separate trial later in the case. Id. at 1-2.

In addition, Softview moved to dismiss and strike defendants’ inequitable conduct defenses. The Court granted the motion finding that the defendants’ original and proposed amended pleadings “fail to adequately allege scienter.” Id. at 2. A theory based on a “mere disagreement with Softview’s prosecution counsel as to whether certain amendments impermissibly added ‘new matter'” along with other related concerns does not “give rise to a reasonable inference that prosecution counsel knew he was amending to add new matter and intended to deceive the PTO of this fact” Id. (emphasis in original).

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In St. Clair Intellectual Property Consultants, Inc. v. Apple Inc., C.A. No. 10-00982-LPS (D. Del. Sept. 30, 2011), Judge Stark denied “Defendant Research in Motion Ltd. and Research in Motion Corporation’s Motion to Dismiss or, in the alternative, Motion for a More Definite Statement.” Id. at 1. In its motion to dismiss, Research in Motion (“RIM”) argued that the plaintiff’s complaint “fails to satisfy the third required element of Form 18 because it fails to identify the specific RIM products (or class of products) that allegedly infringe any of the patents-in-suit.” Id. at 4-5. Although the complaint “identifies the category of infringing products as ‘smartphones and tablets’ and elaborates by identifying specific models of RIM’s smartphones and tablets that are allegedly infringing[,]” RIM claimed that the complaint was deficient because it “identifies ‘nearly every product sold by RIM’ and, thus, provides insufficient notice[.]” Id. at 5. Judge Stark rejected this argument, noting that the complaint “makes numerous references to the allegedly infringing product models and explicitly ties the RIM products to each recitation of infringement[.]” Id. at 6. In denying RIM’s motion to dismiss, the court also rejected RIM’s argument that the complaint “fails to allege that RIM makes, uses, or sells a device ‘embodying the patent[,]'” stating that “the Complaint is not required to address how the infringing products use the patented technology.” Id. at 6-7. Finally, the court “determined that St. Clair’s Complaint provides sufficient notice of the infringement allegations[,]” and therefore the court denied RIM’s motion in the alternative for a more definite statement. Id. at 7-8.

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In LG Electronics U.S.A., Inc. v. Whirlpool Corporation, C.A. No. 10-311-GMS (D. Del. Sept. 29, 2011), LG filed a motion to dismiss Whirpool’s counterclaim of infringement of Whirlpool’s ‘130 patent by LG’s French door refrigerators. Id. at 2. A jury had previsouly found that LG’s French door refrigerators did not literally infringe Whirpool’s patent. LG argued that because its redesigned refrigerators share the same configuration as the refrigerator at issue in the previous action in all material aspects, Whirpool’s counterclaim was barred by res judicata. Id. at 6. Whirlpool argued that LG’s motion should be treated as a motion for summary judgment because it required “consideration of matters outside the pleadings[;]” and that LG did not “meet its burden of showing that the French door refrigerators subject to Whirlpool’s counterclaim [were] essentially the same as those addressed in the [previous] action.” Id. at 7. While granting LG’s motion to dismiss, Judge Sleet rejected Whirlpool’s argument that LG’s motion must be treated as a motion for summary judgment. “Although the court may not generally consider evidence beyond the complaint in deciding a Rule 12(b)(6) motion, when a motion to dismiss is based upon the defense of claim preclusion, the court may take judicial notice of the record in the [previous] action in reaching its determination on LG’s motions to dismiss.” Id.

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In Kone Corp. v. Thyssenkrupp USA, Inc., C.A. No. 11-465-LPS-CJB (D. Del. Sept. 26, 2011), Magistrate Judge Burke granted-in-part the plaintiff’s motion for expedited discovery in connection with the plaintiff’s motion for a preliminary injunction. Judge Burke stated that the appropriate test for evaluating a request for expedited discovery in the context of a preliminary injunction is the “good cause”/”reasonableness” standard, requiring “the party seeking discovery to show ‘good cause’ for its motion, such that the request is ‘reasonable’ in light of the relevant circumstances.” Id. at 7, 12.

Applying this standard to the facts of the case, the court found that “[t]he circumstances of this case, including its procedural posture, weigh in favor of granting expedited discovery” with respect to the pending preliminary injunction motion. Id. at 12. First, the preliminary injunction motion had already been pending for approximately three months, and the defendants had already filed answers more than six weeks earlier. Id. Thus, “absent the pending preliminary injunction motion, the Court would already have scheduled a Rule 16 teleconference and the parties would otherwise have commenced the discovery process.” Id. Second, “because much of the information at issue would likely have been turned over anyway by Defendants soon after a Rule 16 conference[,]” expedited discovery was likely to streamline the case. Id. at 13. Third, “expedited discovery is more likely to be an efficient use of the parties’ resources when it relates to a pending preliminary injunction hearing, where it can help to ensure a clear and focused factual record.” Id.

Although the plaintiff was able to show “a need for discovery relating to certain, circumscribed subject-matter that may illuminate issues at play at the preliminary injunction hearing[,]” Judge Burke found that the plaintiff’s discovery requests were “not narrowly tailored.” Id. at 14. Thus, the court granted the motion for expedited discovery, but only with respect to “the key disputed factual issue relevant to the P.I. motion hearing[.]” Id. at 15.

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Last week, Chief Judge Sleet issued a memorandum opinion in LG Electronics U.S.A., Inc. v. Whirlpool Corp., C.A. No. 10-311-GMS (D. Del. Sept. 12, 2011), granting a motion for leave to amend a patent complaint by LG. LG initially brought the ligitation as a declaratory judgment action on one patent (relating to refrigeration technology); Whirlpool counterclaimed on three additional patents. With its proposed amendment, LG sought to add infringement claims for three of its own patents, plus declaratory judgment actions for the additional patents counterclaimed by Whirlpool. Whirlpool opposed the amendment, alleging that the new infringement claims would “unnecessarily complicate the litigation, thereby prejudicing Whirlpool.”

The Court granted leave to amend (with little comment), stating that the technology is related, and that a denial of leave to amend “would result in the filing of another lawsuit and would not promote the interests of judicial efficiency.” Id. at 3-4.

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Judge Robinson recently resolved several pretrial issues in Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Sept. 13, 2011), including:

(1) granting the parties’ motions in limine to exclude “certain characterizations of Honeywell’s [prior art] patent made in satellite patent prosecutions” because “the marginal relevance of the evidence is far outweighed by the danger of unfair prejudice, confusion of the issues, misleading the jury and wasting the limited time of the parties explaining the satellite patent prosecutions” (id. at 1-2);
(2) declining to reopen the issue of the priority date of the asserted patent (id. at 2);
(3) stating that a dependent claim should not be submitted to the jury when it was not discussed in the plaintiff’s expert report (id. at 2);
(4) granting “Honeywell’s motion for leave to serve an expert witness statement on the disclosure of . . . one of the late disclosed documents that has become a critical issue in the case since the Federal Circuit’s decision” (id. at 2-3);
(5) denying Honeywell’s motions for reargument “regarding the issue of abandonment, suppression or concealment” (id. at 3-4);
(6) holding that Honeywell failed “to establish a cause of action for inequitable conduct” because Honeywell did not “establish the requisite level of intent” required under the Federal Circuit’s recent holding in Therasense (id. at 4-5); and
(7) stating that the issue of equitable estoppel would be tried at a bench trial following the jury trial (id. at 5).

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Judge Robinson recently decided Intermec’s motion for summary judgment of noninfringement and invalidity of Palm’s patents and Palm’s cross motion of no invalidity and infringement. Id. at 3. An issue in dispute was whether the district court could correct typographical errors in the asserted claims of Palm’s patents. Id. at 12. Judge Robinson construed the claims to include corrections to the typos, finding that the “errors [were] obvious on the face of the patent, [and] that there [could] be no reasonable debate regarding their correction as discussed above[.]” Id. at 14-15. Judge Robinson went on to grant-in-part each motion for summary judgment, finding that Palm’s ‘803 patent and ‘049 patent were valid and that Intermec did not infringe claims 17, 18, and 22 of the ‘803 patent or claim 17 of the ‘049 patent.

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