In Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civ. No. 10-735-SLR (D. Del. Dec. 22, 2011), discussed previously here, Judge Robinson denied a defendant’s motion to sever or stay the litigation against it in a situation where the defendant argued that, unlike its co-defendant, it never had (and never would) commercialize the technology accused of infringement, and where there existed no allegation that its activities or products overlapped with its co-defendant to satisfy the “common transaction” requirement of FRCP 20(a). Id. at 1-2. Instead, the defendant argued, the allegations against it were based solely on non-commercial presentations made by its employees at biotech conferences. Id. at 2. The Court found that an issue of fact existed as to whether presentations made by the defendant’s employees amounted to “offers for sale” and whether the defendant’s research, if infringing, constituted permissible experimental use. Id. at 4. Further, because the defendant’s accused technology “shares fundamental elements in common with” the other defendant’s accused product (which was undisputed during briefing), the Court found that joinder was appropriate. Id. Specifically, the Court credited the plaintiff’s undisputed assertion that the defendants’ technologies were similar in that both rely on “detecting labeled nucleotides as a polymerase, [using] four nucleotides with distinct fluorescent labels and optical detection zones limited to the immediate vicinity of the polymerase.” Id. Finally, the Court rejected the argument that severance was appropriate because the co-defendants were direct competitors, finding that the agreed upon protective order and prosecution bar were adequate safeguards of confidential information and, moreover, that inadvertant disclosure likely would not result in substantial harm given the defendant's assertion that it did not plan to commercialize its technology. Id. at 5.
Noninfringement Judgment Appropriate where Plaintiff’s Expert provides “conclusory opinions with respect to the function-way-result test”
In November, Judge Robinson issued a claim construction order and summary judgment opinions in Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Nov. 15, 2011). Since then, Judge Robinson has considered motions for reargument from each side and this week issued an opinion and amended order in Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Dec. 19, 2011). Noting that the standard for obtaining relief on motions for reconsideration “is difficult to meet,” the court nevertheless granted one motion, denied another, and clarified its claim construction order.
Judge Robinson had previously granted summary judgment of noninfringement to CMO, and “[a]t the pretrial conference, Apeldyn argued that the court erred in granting summary judgment of noninfringement . . . [based on the fact that] ‘Apeldyn [did] not cite any evidence in opposition to CMO’s motion.’” Id. at 1. Judge Robison gave Apeldyn a chance to submit a “letter directing the court to any such evidence properly cited in its responsive brief.” Id. Apeldyn submitted citations to its expert’s report and other evidence that was either not in the record or was not adduced by Apeldyn. Apeldyn also submitted a motion for reargument. Although Judge Robinson noted that “CMO objects to Apeldyn’s expansion of the record,” she noted that “the court must ultimately address more of [the expert’s] report than that which was cited in Apeldyn’s opposition brief in order to fully articulate Apeldyn’s infringement position and, ultimately, the sufficiency of [the] noninfringement proffer.” Id. at 5. Having determined that she would look at the expert report, Judge Robison found the report “insufficient to pass muster.” Because the report did not “provide the limitation-by-limitation discussion of equivalence contemplated by the Federal Circuit, the court denie[d] Apeldyn’s motion and [did] not amend its grant of summary judgment of noninfringement with respect to CMO.” Id. at 9.
Judge Robinson had also previously denied AUO’s motions for summary judgment of noninfringement “because AUO did not support its noninfringement arguments with an expert’s opinion.” Id. Judge Robinson granted reargument, however, because there was “no dispute as to how the accused products operate.” Because Apeldyn’s expert’s “proffer with respect to AUO parallels that for CMO . . . the judgment must be amended to prevent manifest injustice to AUO by allowing Apeldyn to go forward to a jury trial on legally insufficient evidence.” Id. at 10. As with CMO, “[b]ecause [Apeldyn’s expert] did not provide particularized testimony describing his doctrine of equivalents theory on a limitation-by-limitation basis, and provided only conclusory opinions with respect to the function-way-result test, the court grants AUO’s motion for reargument and will enter judgment of noninfringement with respect to AUO.” Id. at 12.
Judge Robinson also clarified her claim construction order, stating that the “court’s understanding of the technology of the ‘382 patent, as articulated at the pretrial conference, may not have been most clearly conveyed in the claim construction order.” Id. at 3-4. She issued a separate amended memorandum order clarifying the construction of the terms at issue consistent with this understanding.
Judge Robinson Denies Motion to Stay Pending Reexam, But Notes Likelihood of a Different Result Under Similar Facts In the Future
In Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civ. No. 10-735-SLR (D. Del. Dec. 16, 2011), Judge Robinson denied a motion to stay litigation pending the outcome of inter partes reexamination proceedings. Id. at 5. Judge Robinson first explained that the status of the litigation was neutral to the Court’s decision—discovery was initiated in March 2011, and was slated to be completed, including expert discovery, by April 2012. Id. at 3. Next, Judge Robinson noted that the “simplification of litigation” factor weighed against granting a stay, because “there is not a complete overlap between those issues to be resolved upon reexamination . . . and the issues to be tried in the case . . .,” especially since the litigation included one patent that was not involved in the reexamination. Id. at 4. Finally, considering potential prejudice resulting from granting a stay, Judge Robinson found that both the timing of the motion to stay (filed approximately eight months after litigation began, three months after the requests for reexamination were filed, and between two weeks and one month after the requests for reexaminations were granted) and the status of the reexaminations (prosecutions of 3 of 4 patents had not yet closed) weighed against granting a stay. Id. at 4-5. Finally, Judge Robinson considered the relationship of the parties, and found that although the Court was not making definitive findings on the issue, the Court was satisfied at this juncture that “Helicos is a market participant . . . such that this factor generally disfavors a stay.” Id. at 6. Judge Robinson noted that the Court’s ruling likely would be different if the same facts were presented in the future: “The Leahy-Smith Act (H.R. 1249) . . . requires courts to automatically stay litigation filed after a petition for reexamination. H.R. 1249 is not yet controlling. While the reexamination was filed after the litigation in this case, the court would likely stay the case if it were subject to the new legislation.” Id. at 3 n.2.
New Orders in Apeldyn: Judge Robinson Grants Summary Judgment, Denies Daubert Motion, and Announces Claim Construction
Judge Robinson recently issued several new orders and opinions in the ongoing dispute over LCD technology between Apeldyn Corp. and defendants, AU Optronics Corp. (AUO) and Chi Mei Optoelectronics Corp. (CMO). Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Nov. 15, 2011).
In a memorandum opinion (C.A. No. 08-568-SLR, Nov. 15, 2011), the court granted both AUO's and CMO's motions for summary judgment of no inducement of patent infringement. Because the court separately granted CMO's motion for summary judgment of noninfringement, its could not have been found to have induced infringement and was entitled to summary judgment on that issue. Id. at 19. In granting AUO's motion for summary judgment of no inducement, Judge Robinson rejected two arguments for inducement proffered by Apeldyn. First, she rejected a "transitive knowledge" theory of constructive knowledge, whereby licensees would be charged with knowledge of any patent listed on the face of a patent that is in turn listed on the face of the patent that they license. Such a "finding of constructive knowledge based on the listing of a patent on the face of another patent, twice removed," the court concluded, would lack grounding in case law. Id. at 20. "There is simply no indication that constructive notice is meant to embrace the hundreds, if not thousands, of listed patents that would be generated in many cases by such an extrapolation." Id. Second, Judge Robinson rejected Apeldyn's theory of willful blindness to customers' infringement, finding that "[a]t best, Apeldyn has framed AUO as a reckless or negligent defendant - not a willfully deliberate one." Id. AUO's failure to collect patents related to LCD panels issued to other companies or to gather knowledge as to whether any of AUO's patents cite to the patent in dispute fell short of the willful blindness contemplated by the Supreme Court in Global-Tech Appliance, Inc. v. SEB S.A. Id.
In the same opinion, Judge Robinson denied AUO's motions for summary judgment of invalidity and noninfringement, but granted CMO's motion for summary judgment of noninfringement. She found AUO's motions to be unsupported by expert testimony or other evidence. Id. at 12. CMO's motion for summary judgment of noninfringement, by contrast, was well supported by expert testimony and was not contradicted by any evidence supporting Apeldyn's opposition. Id. at 16-17.
Judge Robinson also ruled in a seperate memorandum order (C.A. No. 08-568-SLR, Nov. 15, 2011) on the defendant's motion to exclude Apeldyn's expert witness under Daubert. AUO sought to exclude any testimony regarding the expert's testing of LCD panels or AUO's sales and activities. Judge Robinson, however, refused to exclude either class of testimony. Testimony regarding the expert's tests was proper, in part, because AUO's critique of the method used was rendered irrelevant by the court's claim construction. Because the court did not accept a construction with Apeldyn's additional limitation, she reasoned, the court did not address that limitation, and it remained an issue of fact to be tried. Id. at 5. Furthermore, the court was not impressed by a suggestion by the defendant's witness that another method of testing would be "probably more scientific," and characterized this suggestion as "an insufficient basis to preclude [the witness's] testimony." Id. at 5-6. Judge Robinson also allowed the expert's proffered testimony regarding sales activities and whether they encourage infringement. In forming a proper opinion on nonobviousness, she said, an expert witness may consider marketing and sales activities and may rely on the testimony of other witnesses, to the extent that it is reliable. Id. at 6.
Finally, in another memorandum order (C.A. No. 08-568-SLR, Nov. 15, 2011), Judge Robinson construed disputed claim language by reference to the language of the patent in dispute, her claim constructions often quoting from the patent specifications themselves. She "decline[d] to add the additional language suggested by Apeldyn," saying that the suggested "concept is not discussed in the specification. Moreover, the requirement that polarized light must exist along the same eigen-axis negates any need for further limitation." Id. at 2.
Judge Robinson: Defense Expert’s Damages Opinions “wholly speculative and, consequently, not helpful to the trier of fact”
In a recent memorandum order, Judge Robinson ordered the exclusion of certain defense expert testimony in the upcoming, bifurcated damages portion of a patent infringement case. SRI Int’l Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR (D. Del. October 31, 2011). Judge Robinson first concluded that proffered testimony regarding possible “design arounds” as alternatives to the patented technology was entirely speculative. An expert, she said, “may offer an opinion incorporating proffered facts, [but may not] reiterate the lay testimony and provide a conclusory opinion based on the lay testimony.” Id. at 5. The excluded testimony included:
(1) A speculative opinion on Georgia Pacific factor 13 that was not based on an analysis of the portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer, id.;
(2) A damages opinion that relied on a third party patent without making a substantive comparison of that patent with the patents-in-suit, id. at 5-6;
(3) Conclusory opinions regarding which features of the infringing product are and are not covered by the patents-in-suit that contradicted evidence presented at the liability trial, id. at 6-7; and
(4) An opinion that the inventions in question had little value as they offered only minor, incremental improvements over prior art, id. at 7-8.
With regard to the last of these opinions, Judge Robinson noted in a footnote that the expert report “reads dangerously close to an obviousness opinion.” Id. n.8. As the defendants had already failed on obviousness arguments, Judge Robinson ordered damages witnesses not to “opine that a system/method having all of the patented features was concurrently in use in the prior art.” Id.
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:
- 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.
- 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
- 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.
- 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.
Judge Robinson: Should leave to amend between the liability and damages phases of a bifurcated trial be subject to Rule 15(a) or 15(b)?
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.
Judge Robinson: Marginal Relevance of Evidence Outweighed by Risks of Unfair Prejudice, Confusing and Misleading the Jury, and Wasting the Parties' Time
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).
Judge Robinson: Granting-in-part and denying-in-part cross motions for summary judgment Judge Robinson considered whether a district court could correct typographical errors in patent claims
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.