December 16, 2011

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.

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November 16, 2011

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.

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November 4, 2011

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.

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October 19, 2011

Judge Robinson: Orders Leading Up To Asahi Trial

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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October 18, 2011

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.

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October 12, 2011

Judge Sue L. Robinson: Jury Verdict - Patent INVALID

On September 28, 2011, a jury returned a verdict in the Solvay, S.A. v. Honeywell Specialty Materials LLC matter, in favor of the defendants, finding the patent-in-suit invalid. C.A. No. 06-557-SLR, Jury Verdict Form (D. Del. Sept. 28, 2011).

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September 16, 2011

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).

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September 16, 2011

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.

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September 1, 2011

Judge Robinson: Plaintiffs' Motion for JMOL on Invalidity and Motion for a New Trial Denied

In Arcelormittal France v. AK Steel Corp., C.A. No. 10-050-SLR (D. Del. Aug. 25, 2011), plaintiffs unsuccessfully moved for JMOL on invalidity and for a new trial. Id. at 18. Plaintiffs' motion for JMOL focused on (1) whether a particular prior art reference qualified as a printed publication, (2) whether that reference disclosed all limitations of the asserted patent, and (3) whether there was a motivation to combine that reference with other asserted prior art references. Id. at 5. After finding that the jury's verdict of anticipation and obviousness was supported by substantial evidence, Judge Robinson rejected plaintiffs' multiple arguments in support of their motion for a new trial. Id. at 11. For example, although "[p]laintiffs argue[d] that defendants' experts improperly testified about two . . . prior art references," the court found that (1) "plaintiffs never objected to this testimony at trial and, therefore, arguments pertaining to said testimony are waived" and (2) "even if objections to said testimony had been preserved, the testimony was merely explanatory in nature, and gave context for defendants' experts' understanding of the level of skill in the art." Id. at 12-13. Thus, "even if the experts' testimony was beyond the scope of the expert report, the error was harmless." Id. at 14. Because the court denied both of plaintiffs' motions, Judge Robinson denied defendants' JMOL of noninfringement as moot. Id. at 18.

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August 17, 2011

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.

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