August 12, 2013

Judge Robinson grants motion for leave to amend induced infringement claim

Judge Sue L. Robinson recently granted plaintiff’s motion for leave to amend its complaint in E.I. Du Pont de Nemours & Co. v. Heraeus Precious Metals North America Conshohocken LLC, C.A. No. 11-773-SLR (D. Del. Aug. 8, 2013). The patent-in-suit relates to the manufacture of solar cells.

The Court had previously dismissed plaintiff’s induced infringement claim because plaintiff did not sufficiently allege specific intent to induce infringement or knowledge of infringement. Id. at 2. Plaintiff now moved to amend its complaint to cure these deficiencies. Id. “Defendant's sole dispute relate[d] to whether plaintiff's proposed amendment claims pre-suit induced infringement,” as plaintiff had originally only asserted a claim for prospective relief. Id. at 3. “To fix this alleged deficiency, defendant submits that plaintiff's proposed amendment be expressly time-limited in every sentence asserting an element of its induced infringement claim by adding ‘since the date [defendant] has been on notice of the [patent-in-suit].’” Id. (internal citations omitted).

The Court concluded that plaintiff’s proposed amendments sufficiently corrected deficiencies in the original claim, but also that these amendments did not allege that defendant knew of the patent earlier than the date of the complaint’s filing. Id. at 4-5. Therefore plaintiff’s claim was limited to the time period beginning at the filing of its complaint. Id. But “[d]efendant's argument that every sentence in the complaint alleging an element of induced infringement must indicate this temporal limitation [was] repetitive and unnecessary.” Id. at 5.

Continue reading "Judge Robinson grants motion for leave to amend induced infringement claim" »

August 9, 2013

Judge Robinson denies motion to dismiss indirect infringement claims

Judge Sue L. Robinson recently denied Ricoh Company, Ltd.'s motion to dismiss Telecomm Innovations, LLC's indirect infringement claims. Telecomm Innovations, LLC v. Ricoh Company, Ltd., et al., C.A. No. 12-1277-SLR (D. Del. Aug. 6, 2013) (click here for a discussion of trends in the District of Delaware regarding pleading direct and indirect patent infringement). Plaintiff accused Ricoh's "fax-capable products" of infringement and, in support of its indirect infringement claims alleged that Ricoh provides "technical support and services, as well as detailed explanations, instructions and information as to arrangements, applications and uses, which induce defendants' customers to infringe the '519 patent through use of [the accused products]." Id. at 2. Plaintiff also alleged that Ricoh "specifically intended to induce infringement by its customers and others ... knowing that such acts would cause infringement and/or were willfully blind to the possibility that their inducing acts would cause infringement." Id. (alterations in original) (internal quotations omitted).

Ricoh argued that Plaintiff's indirect infringement claims did not pass muster because Plaintiff had "not pled with sufficient 'factual detail' that there was at least one direct infringer and that defendants knew of and specifically intended to induce infringement." Id. at 5. Judge Robinson noted that Plaintiff was "not required to specifically identify the customers who [were] induced to infringe, as this is a 'proper question for discovery.'" Id. Because Plaintiff pled that Ricoh's customers infringe the patent-in-suit, "the requirement for pleading facts to allow an inference that at least one direct infringer exists ha[d] been met." Id.

Regarding knowledge of the patent-in-suit, Judge Robinson found that Plaintiff's allegations that Ricoh received notice of the patent at least as early as the filing of the Complaint was sufficient to plead knowledge "for purposes of post-complaint relief." Id. at 6. Finally, regarding Ricoh's intent for their customers to infringe, Judge Robinson found that Plaintiff's allegations that Ricoh "provided technical support and instructions to their customers on how to use products in such a way as to infringe the patented invention" was sufficient to plead Ricoh's specific intent to induce patent infringement. Id at 6-8.

Continue reading "Judge Robinson denies motion to dismiss indirect infringement claims" »

August 9, 2013

Judge Robinson finds that first-filed declaratory judgment action in Delaware should proceed; enjoins prosecution of litigation in other district.

Judge Sue L. Robinson recently granted a declaratory judgment plaintiff’s motion to enjoin a related infringement action filed in another district court. Nexans Inc. v. Belden Inc., Civ. No. 12-1491-SLR (D. Del. Aug. 6, 2013). The plaintiff in the Delaware action, Nexans, filed suit against the defendant, Belden, seeking a declaratory judgment of non-infringement and invalidity of three Belden patents, and asserting an affirmative claim alleging Belden infringed a Nexans patent. Id. at 1. Two days later, Belden filed suit in Indiana alleging Nexans infringed the same three Belden patents, as well as an additional patent not at issue in the Delaware litigation. Id. at 2. Just over a week later, Nexans amended its Delaware complaint to add the “additional patent” to its declaratory judgment action. Id. at 2-3. The result was that both the Delaware and Indiana cases involved allegations regarding the same four Belden patents, although the Nexans patent was at issue only in the Delaware litigation.

Belden moved to dismiss Nexans’ amended claim, arguing that because the additional patent was not the subject of the parties’ broken-down negotiations, there was no case or controversy with respect to it to support declaratory judgment jurisdiction. “According to Belden, the case or controversy with respect to the [additional] patent did not arise until Belden’s filing of the Indiana action . . . .” Id. at 5. The Court rejected that argument, explaining that “it was not the filing of the Indiana action that caused a case or controversy to arise out of the [additional] patent, but the same events that led to the filing of the original complaint that caused the case or controversy.” Id. at 6. That, the Court explained, was because Belden’s warning letter was not specific regarding which patents it believed Nexans infringed, and in subsequent discussions leading up to the filing of Nexans’ declaratory judgment action, the additional patent was mentioned. Id. at 6-7. A case or controversy also arose, the Court explained, because the technology covered by the additional patent was related to one of the patents at issue in Nexans’ original complaint. Id. (“When an actual controversy exists over one patent, it can also cover patents relating to the same technology between the same parties.”). The Court also found Belden’s litigation history with other parties relevant to the case or controversy question: Belden had filed three other suits alleging infringement of the additional patent by parties also alleged to infringe one of the patents at issue in Nexans’ complaint, so the Court found it reasonable for Nexans “to believe that the [additional] patent was related to the controversy between the parties.” Id. at 7. As a result, the Court denied Belden’s motion to dismiss the amended claim, which the Court found related back under Rule 15(c)(1)(B), meaning that the Indiana and first-filed Delaware litigation involved the same four Belden patents. Id. at 7, 8.

Because the litigations were mirror images with respect to Belden’s patents, Nexans sought to enjoin the Indiana litigation under the first-filed rule. Belden argued several exceptions to the first-filed rule existed, such that the Delaware litigation should be dismissed in favor of the Indiana case. Specifically, Belden argued that Nexans’ declaratory judgment action was anticipatory (or, in the alternative, was filed in bad faith during settlement negotiations) and was the result of forum shopping. The Court disagreed, finding that Nexans’ suit, filed 19 days after the parties’ Standstill Agreement expired and at a time when settlement negotiations had broken down, could not be considered anticipatory or in bad faith. Id. at 11. The Court also found that alleged forum-shopping was no reason to depart from the first-filed rule, explaining that it would not "characterize a plaintiff’s choice of venue as ‘forum shopping’ when, by essentially moving to transfer venue, a defendant is doing the same thing – choosing a venue that it believes to be more favorable to its claims for whatever reason.” Id. at 12. Finally, the Court was not convinced that any other considerations weighed in favor of departing from the first-filed rule, and explained that it made more sense to litigate in Delaware because “dismissal of the declaratory judgment claims in favor of the Indiana action would still leave Nexans’ affirmative claim for infringement of its patent in the instant action and require the parties to litigate in two separate courts.” Id. at 13. The Court therefore granted Nexans’ motion to enjoin the prosecution of the Indiana action. Id. at 13-14.

Continue reading "Judge Robinson finds that first-filed declaratory judgment action in Delaware should proceed; enjoins prosecution of litigation in other district." »

July 31, 2013

Judge Robinson considers various motions and construes claim terms

In Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. No. 13-576-SLR (D. Del. Jul. 26, 2013), Judge Sue L. Robinson recently considered several motions for summary judgment, construed disputed claim terms and ruled on a motion to exclude expert testimony.

The Court construed the following terms of U.S. Patent Nos. 8,017,375 (“the ‘375 patent”) and 8,017,376 (“the ‘376 patent”), which relate to the production of biomass-derived biofuels:

a ketol-acid reductoisomerase, id. at 6-7;

an a-ketoisovalerate decarboxylase from Lactococcus lactis, id. at 7;

wherein said recombinant yeast microorganism has reduced endogenous PDC activity as compared to the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id.;

is further engineered or selected to grow on glucose independently of C2-compounds at a growth rate substantially equivalent to the growth rate of the corresponding yeast microorganism that has not been engineered to have reduced endogenous PDC activity, id. at 8;

activator of ferrous transport (Aft) proteins, id. at 10;

which increase the dehydratase activity of DHAD, id.;

wherein said ketol-acid reductoisomerase is an NADH-dependant ketol-acid reductoisomerase, id. at 10-11; and

a constitutively active Aft protein, id. at 11.

The Court granted one defendant’s motion for summary judgment of non-infringement as to the ‘376 patent and as to certain claims of the ‘375 patent, finding the doctrine of equivalents inapplicable. See id. at 17-27. Plaintiff also did not argue that defendant literally infringed the ‘375 patent and conceded that fact with respect to the ‘376 patent. Id. at 23, 27.

The Court also granted the same defendant’s motion for summary judgment as to the invalidity of the ‘375 patent. Defendant argued lack of both written description and enablement. This patent claimed the creation of significantly higher yields of the patented invention than the yields the inventor had actually obtained. Id. at 32. The Court concluded that the patent was invalid for lack of written description because “persons skilled in art would [not] recognize in the patent’s disclosure a description of the higher yields of the claimed invention.” Id. at 33. “The parties’ experts agree that the technology at issue is both complex and unpredictable. . . . The specification provides no detail on how to practice claim 1 to achieve higher yields.” Id. The patent was also invalid for lack of enablement, for similar reasons. See id. at 36.

The Court did not grant either parties’ motions for summary judgment on the validity/invalidity of the ‘376 patent, finding that there were issues of material fact as to whether the patent was invalid for lack of enablement, specifically issues “bearing on the disclosures and the amount of experimentation required to practice the full scope of the claims.” Id. at 38.

Defendant also argued that the ‘376 patent was anticipated by defendant’s International Patent Application. The Court did not address the substance of this argument because issues of material fact remained as to whether the inventors of the ‘376 patent conceived and reduced their invention to practice before the priority date of the International Patent Application. Id. at 43-44. The Court did note that “if [this application] is found to be anticipatory, [plaintiff] is precluded from making substantive arguments against anticipation as it did not do so herein.” Id. at 44 n.29.

Finally, both defendants moved to exclude the testimony of plaintiff’s expert. The Court denied this Daubert motion because defendants’ “arguments that [the expert] did not independently conduct experiments as part of his analysis do not preclude his testimony or opinions.” Id. at 44.

Continue reading "Judge Robinson considers various motions and construes claim terms" »

July 29, 2013

Judge Robinson finds patents valid and infringed in ANDA litigation

In a recent post-trial opinion, Judge Sue L. Robinson considered infringement of U.S. Patent Nos. 6,200,604 (“the ’604 Patent”); 6,974,590 (“the ’590 Patent”); and 8,119,158 (“the ’158 Patent”), and the validity of U.S. Patent No. 8,092,832 (“the ’832 Patent”) and the ’158 Patent in this ANDA litigation. Cephalon Inc. et al. v. Mylan Pharmaceuticals Inc. et al., C.A. No. 11-164-SLR (D. Del. Jul. 22, 2013). Plaintiffs initiated this litigation after defendants filed ANDA No. 202577, which sought to market generic fentanyl citrate buccal tablets, a medication that aids breakthrough cancer pain. Id. at 1-2.

Before addressing infringement and validity, Judge Robinson was required to construe two disputed claim terms. “Providing a solid oral dosage form” was given its ordinary meaning, and “pH adjusting substance is not a component of said effervescent material” was construed to mean “pH adjusting substance is in addition to the components of said effervescent agent.” Id. at 13-18. Turning to the infringement of the asserted claims of the ’590 and ’604 Patents, Judge Robinson noted that the “only limitation of the asserted claims . . . that [defendants] argue[] is not met by the ANDA product ‘is at least one [salival activated] effervescent agent in an amount sufficient to increase absorption.’” Id. at 20. Judge Robinson ultimately determined that plaintiffs demonstrated that defendants’ ANDA practiced “each and every requirement of the disputed limitations.” Id. at 38. Further, there was no “genuine dispute of material fact that [defendants] will encourage use through its product labeling and sale of its generic tablets and is aware that the label presents infringement problems.” Id. at 37. Moreover, because “[t]he only authorized use for the ANDA products would infringe” the asserted claims, there was “no substantial noninfringing use.” Id. at 38. Judge Robinson thus concluded that defendants indirectly infringed the asserted claims of the ’590 and ’604 Patents through induced infringement and contributory infringement. Id. Next, Judge Robinson considered infringement of the ’158 Patent, noting that “[t]he only dispute for infringement is whether the ANDA products meet the limitation ‘wherein said pH adjusting substance is not a component of said effervescent material.’” Id. Defendants did “not offer any noninfringement defense under the court’s construction” of that limitation, and Judge Robinson concluded that defendants directly and indirectly infringed the ’158 Patent. Id. at 39-40.

Judge Robinson next considered whether the ’604 Patent anticipated certain asserted claims of the ’92,832 and ’158 Patents. Judge Robinson noted that those claims required dosages between 100 and 800 mcg of fentanyl free base. Id. at 43. Defendants’ expert argued that a “person of ordinary skill in the art would understand a ‘pharmaceutically effective amount’ taught by the ’604 Patent includes fentanyl free base in the range of 100 to 800 mcg,” because a person of ordinary skill in the art would have would have looked at “Actiq®, an FDA-approved product and recognized that its range of fentanyl, 200-1600 mcg, was pharmaceutically effective.” Id. at 43-44. Judge Robinson noted, however, that “extrinsic evidence of anticipation ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” Id. at 44. As Judge Robinson explained, Actiq® was “not mentioned in the ’604 patent or incorporated therein.” Id. Because Judge Robinson found that the “’604 patent does not disclose the claimed amounts of fentanyl, the [’92,832 and ’158 Patents] are not invalid for anticipation.” Id. at 43.

Judge Robinson also considered whether the asserted claims of the ’92,832 and ’158 Patents were obvious “in view of the ’604 patent in combination with the Actiq® brochure and the Handbook.” Id. at 45. Judge Robinson noted that defendants’ expert did “not offer an opinion that one of ordinary skill in the art, absent the benefit of . . . internal observations and documents, would have had any reasons to suspect stability issues, and therefore, be motivated to solve such issues. He cannot rely on the problems that the inventors ‘unexpected[ly]’ ran into in order to support a person of ordinary skill’s motivation to combine.” Id. at 51. Because defendants did not provide sufficient evidence of motivation to use “SSG, alone or combination with mannitol,” defendants failed to carry its burden of showing obviousness. Id. at 53. Judge Robinson additionally assessed secondary considerations of nonobviousness. Judge Robinson found “unexpected results . . . sufficiently supported by [plaintiffs’] testing,” which weighed in favor of nonobviousness. Id. at 53-56. On the other hand, Judge Robinson found that considerations of commercial success, praise, failure of others, and long-felt need did not weigh in favor of a finding of nonobviousness. Id. at 56-61. However, on balance, Judge Robinson concluded that defendants failed to demonstrate by clear and convincing evidence that the asserted claims of the ’92,832 and ’158 Patents were obvious in light of the prior art references. Id. at 61.

Continue reading "Judge Robinson finds patents valid and infringed in ANDA litigation " »

July 26, 2013

Judge Robinson grants motion for leave to amend complaint 9 months after deadline to amend pleadings

Judge Robinson recently considered a motion for leave to file a second amended complaint filed by plaintiffs in Novartis Vaccines and Diagnostics, Inc., et al. v. Medimmune, LLC, et al., C.A. No. 11-84-SLPR (D. Del. July 22, 2013). Plaintiffs previously filed a first amended complaint, and then a supplemental complaint adding Novartis Pharma AG, exclusive licensee of the patent-in-suit, as a co-plaintiff. Id. at 1. Over six months later, when defendant Alexion raised a concern that the amended complaint included "an erroneous assertion that both [plaintiffs] were alleging infringement by Alexion[,]" plaintiffs proposed amending the complaint a second time to clarify the allegations of infringement by Alexion and remove claims against MedImmune, who had previously settled with plaintiffs. Id. at 3. Defendant Biogen refused to consent to the proposed amendment. Id. at 3-4.

Judge Robinson analyzed whether plaintiffs had good cause, under Fed. R. Civ. P. 16(b), for delaying nine months after the deadline to amend pleadings to file its motion to amend. Id. at 5. Judge Robinson found that the delay was not of plaintiffs' making because defendants did not raise the issue with its interpretation of the infringement claims in the supplemental complaint until over six months after the deadline. Id. After the concern was raised, Plaintiffs behaved diligently, making "three separate proposed revisions" and engaging in several meet and confer sessions with defendants. Id. at 5-6.

Judge Robinson then considered the factors to determine whether leave to amend should be given:

(1) whether the amendment has been unduly delayed; (2) whether the amendment would unfairly prejudice the non-moving party; (3) whether the amendment is brought for some improper purpose; and (4) whether the amendment is futile.

Id. at 6 (citing Foman v. Davis, 371 U.S. 178, 182 (1962)).

The only factor at issue was defendant Biogen's claim that plaintiffs' allegation of willful infringement and request for treble damages was futile. Id. Judge Robinson noted that "allegations of willfulness and requesting treble damages have appeared in all three of the complaints filed in this action." Id. at 3 n.1. Regardless, Judge Robinson found that plaintiffs' claims were not fuitle after analyzing the claims under In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Specifically, plaintiffs provided evidence that Biogen knew about the alleged infringement at least two months prior to plaintiffs' filing of the suit. Id. at 7. Judge Robinson rejected Biogen's argument that plaintiffs' willfulness claims were barred because Novartis Pharma did not become the exclusive licensee of the patent-in-suit until 18 months after the filing of the suit. Id. 7. Judge Robinson noted that "courts have upheld willfulness claims based on conduct occurring before a plaintiff had standing to sue. Id. at 7-8.

Continue reading "Judge Robinson grants motion for leave to amend complaint 9 months after deadline to amend pleadings" »

July 24, 2013

Judge Robinson denies defendants’ request to preclude prior art from trial

In a recent memorandum order, Judge Sue L. Robinson denied defendants’ request to preclude plaintiffs “from presenting testimony or evidence relating to [defendants’] prior product ActiTUF.” Invista North America S.A.R.L. et al. v. M&G USA Corp. et al., C.A. No. 11-1007-SLR-CJB (D. Del. Jul. 16, 2013). Defendants argued that “ActiTUF is a plastics product with an iron-based system, rather than the cobalt-based system allegedly developed by [plaintiffs],” and thus “testimony or evidence relating to ActiTUF is not relevant to the issues at trial and will likely confuse a jury.” Id. at 1. Plaintiffs, on the other hand, argued that “ActiTUF is relevant to at least the state of the art at the time of the invention and secondary considerations.” Id. Specifically, plaintiffs asserted that they would “present evidence at trial regarding how the inventors of its claimed inventions looked to improve on the problems with ActiTUF’s iron-based system.” Id. at 2. Ultimately denying defendants’ request, Judge Robinson found that, “although ActiTUF is not an accused product in this litigation, testimony or evidence relating to it is relevant to the state of the art at the time of the invention and secondary considerations.” Id. She also noted that “[s]uch evidence would not likely confuse a jury because there is no dispute that ActiTUF uses a different approach and is not covered by the patents at issue.” Id.

Continue reading "Judge Robinson denies defendants’ request to preclude prior art from trial " »

July 18, 2013

Judge Robinson denies motion for reconsideration of summary judgment ruling.

Judge Sue L. Robinson recently denied a defendant’s motion for reconsideration of a summary judgment ruling of indirect infringement. INVISTA North America S.à.r.l. v. M&G USA Corp., Civ. No. 11-1007-SLR-CJB (D. Del. July 12, 2013). The defendant argued that the Court’s summary judgment ruling “misapprehended the facts supporting [the defendant’s] position" when it found that the defendant had submitted no evidence to create a genuine issue of material fact on the question of whether the accused products include "at least some trace amount of cobalt salt . . ., even if some of it complexes." Id. at 3; see also summary judgment ruling, discussed here at 24-25. As the Court explained, the ruling was based on the defense expert's own testimony (which was ignored in the defendant's motion for reconsideration) that the expert "didn't have an opinion about the cobalt . . . .” Id. at 3 n. 2. The Court explained that the defendant’s “attempt to create an opinion from an expert who has provided sworn testimony that he has no opinion on the relevant issue cannot sustain a motion for reconsideration or create any credibility issues for a jury.” Id. at 4.

The Court also rejected the defendant’s untimely attempt to submit in opposition to summary judgment a former employee and prosecution consultant's declarations and testimony, which provided data and opinions drawn from that data. Id. at 4-5. The consultant was listed by the defendant as a fact witness, and he never prepared an expert report. Id. at 4-8. The Court considered the defendant's proffer, but found that the data did not "include self-evident facts that cobalt neodecanoate complexes completely" and that the opinions drawn from the data "would clearly require scientific, technical, or other specialized knowledge" -- i.e, expert testimony. Id. at 6. The Court explained that the witness's proposed testimony on the issue in the litigation context would "not [be] within the purview of a fact witness and, most significantly, [his] testimony (whether fact or expert) regarding the extent to which cobalt neodecanoate complexes was never vetted during discovery and, submitted on the eve of trial, is untimely.” Id. at 8.

Continue reading "Judge Robinson denies motion for reconsideration of summary judgment ruling." »

July 9, 2013

Judge Robinson grants parent company's motion to dismiss infringement claims

In a recent memorandum opinion, Judge Sue L. Robinson granted a parent company's motion to dismiss infringement claims made against it based on the alleged conduct of its subsidiaries. Gevo, Inc. v. Butamax(TM) Advanced Biofuels LLC, et al., Civ. No. 12-1724-SLR (D. Del. July 8, 2013). As the Court explained in granting the motion, the plaintiff’s only factually supported allegations were that (1) the parent had two subsidiaries; (2) one of those subsidiaries was involved in a joint venture with another defendant; and (3) one of the defendants disclosed an infringing recombinant yeast strain. Id. at 5. “The remainder of [the plaintiff’s] allegations are conclusory statements.” Id.

More specifically, the Court explained that the complaint provided no underlying facts supporting the conclusory allegation that the parent controlled its subsidiaries’ infringing conduct, therefore “the court is not obligated to accept as true the proposition that [the parent] controls the activities of the subsidiary defendants or the activities of any business ventures owned by the subsidiaries.” Id. at 6. The Court noted that although “[i]t could be argued . . . that [the plaintiff] is not privy to such facts without discovery . . . indicia of control [such] as overlapping boards or officers or consolidated financial statements generally are within the public domain and should have been related if available.” Id. at 6 n.1. The Court also found insufficient the plaintiff’s allegation, made on information and belief, that the parent had actual notice of the defendant’s patent applications so as to support allegations of infringement of plaintiff’s provisional patent rights. The Court explained that this “actual notice” allegation was “not buttressed by any specific facts and is even further diluted by the use of “and/or” in the paragraph.” Id. at 7. For the same reasons, the Court found that the plaintiff did not adequately allege joint infringement or indirect infringement against the parent. Id. at 9-10.

The Court also granted the parent's motion to dismiss the plaintiff’s contributory infringement claim, explaining that the plaintiff did not plead that the parent "sold, offered to sell, or imported a component of the infringing product into the United States. Nor has [the plaintiff] offered facts that would support such a claim.” Id. at 10-11 (footnotes omitted). Finally, the Court granted the parent's motion to dismiss the plaintiff’s willful infringement claim, explaining that “the only circumstance identified by plaintiff to substantiate its willfulness claims . . . is the litigation itself[.]” Id. at 12.

Continue reading "Judge Robinson grants parent company's motion to dismiss infringement claims" »

July 8, 2013

Judge Robinson considers motions to strike and exclude evidence

In Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR-CJB (D. Del. June 25, 2013), Judge Sue L. Robinson considered three motions related to the parties’ discovery.

Plaintiffs moved to strike portions of defendants’ expert’s reply report and this expert’s references to and reliance upon certain experimental data. Plaintiffs argued that parts of the report were untimely because they addressed topics beyond secondary considerations, but the Court concluded that “although not labeled as such, [the sections] at issue were submitted in response to arguments in [plaintiffs’ expert’s] rebuttal report that [defendants’ expert’s] report was incomplete for failing to specifically cite support for his opinions. Thus, viewed as a supplement, those . . . pages were timely filed and appropriately clarified [defendants’ expert’s] opening report. They included only subject matter that was originally disclosed in the opening report and presented no new or changed opinions.” Id. at 5. Even if there had been some prejudice, it was “curable” by plaintiffs, and this reply report was “of high importance to [defendants].” Id. Therefore, the Court denied the motion with respect to this argument. As to the experimental data on which this expert relied, the Court similarly found that “the extreme sanction of” exclusion was not warranted, but noted that defendants could not withhold data from these experiments even if their expert only relied on selected portions of the data. See id. at 6-7. Defendants were ordered to produce such data. The Court did grant plaintiff’s motion to the extent that this expert’s declaration contained “previously undisclosed theories of invalidity,” and the Court listed the relevant parts of the opinion to be struck. Id. at 7-8.

Defendants moved to exclude plaintiffs’ expert’s testimony regarding infringement and secondary considerations of non-obviousness. Regarding the infringement opinion, defendants argued that the testimony was not reliable because the expert did not perform any testing. The Court denied this motion, explaining that “[t]esting is not required to support an infringement opinion” and concluding that the expert’s analysis was reliable. Id. at 9. Regarding the secondary considerations opinion, the Court concluded that the expert, a polymer chemist with over 30 years of experience in the polymer industry, was qualified under “the liberal standard for ‘specialized knowledge’” under Rule 702. Id. at 10. As a result, defendants’ motion was denied.

Finally, plaintiffs moved to strike defendant’s summary declaration and supplemental interrogatory response regarding defendants’ core documents, arguing that they were untimely and “set forth a new non-infringement defense that [defendants’] core technical documents do not reflect the composition of the [accused products].” Id. at 10. This non-infringement defense had been raised for the first time in summary judgment briefing. Although defendants argued that certain of its discovery responses and depositions had put plaintiffs on notice of this issue, the Court found that this defense was “new and untimely” as it “alter[ed] the entire infringement and non-infringement landscape that was developed and vetted during fact and expert discovery. . . . [Defendants were] aware of [plaintiffs’] infringement theories and even confirmed to the court that its own non-infringement theories were premised on its proposed claim construction, not the sufficiency of the core technical documents. At best, [defendants] stood by silently as [plaintiffs] relied on the core technical documents . . . . At worst, [defendants] purposefully disregarded the scheduling order and engaged in trial by ambush with its eleventh-hour defense. Either way, to allow [defendants’] belated new non-infringement theory would substantially prejudice [plaintiffs]” and would be “almost impossible” to cure at this stage of the case. Id. at 12. As a result, the Court granted plaintiffs’ motion to strike the supplemental declaration and interrogatory responses underlying this new defense. Id. at 13.

Continue reading "Judge Robinson considers motions to strike and exclude evidence" »