Delaware IP Law Blog

Judge Robinson has denied motions for judgment as a matter of law and for a new trial following jury determinations of validity and non-infringement in McKesson Automation, Inc. v. Swisslog Italia S.p.A., C.A. No. 06-028-SLR (Jan. 12, 2012). In her opinion, Judge Robinson noted that a reasonably jury could have concluded that the accused product did not infringe. Id. at 14. She also found that the defendant’s expert testimony regarding infringement and invalidity was consistent and could not be the basis for a new trial. Id. at 18.

The plaintiff also argued that “the court had a duty to construe [a] term [of the patents-in-suit] and [that] the court’s failure to do so resulted in a miscarriage of justice.” Id. at 14. This argument stemmed from the court’s prior finding that the term at issue need not be construed because the detail provided by the claim sufficiently defines the term and “‘belies any need for further construction.’” Id. at 8. The plaintiff cited the Federal Circuit’s holding in O2 Micro International Limited v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008), for the proposition that where claim construction is improperly placed before the jury, the case must be remanded for a new trial. Judge Robinson rejected this argument for two reasons. “First, the court note[d] that plaintiff’s proposed construction would not have resolved the issue as it is now characterized by the plaintiff.” Id. at 17. “Second, the court emphasize[d], as it did during its [claim construction] opinion, that ‘the specific detail provided by claim 1 defines the precise nature of [the claim term at issue] and belies the need for further construction.’” Id. Judge Robinson further suggested that “even if it was error not to construe the term, it was harmless error since the jury interpreted the term in accordance with the court’s understanding (i.e., the jury did not construe the term in the restrictive fashion advocated by plaintiff).” Id. at 18 n.9. For these reasons, the court found no error requiring a new trial in “declin[ing] to adopt plaintiff’s construction and instead conclud[ing] that the detail in claim one defines the precise nature of the claim.” Id. at 17-18.

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In Grape Technology Group, Inc. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. January 9, 2012), following a jury verdict of no infringement and validity, Judge Robinson recently decided the parties’ post-trial motions. When denying defendant’s JMOL motion as to the validity of the patents-in-suit, Judge Robinson rejected defendant’s argument that the asserted claims of one patent-in-suit were invalid because it would have been obvious to one of skill in the art to combine two prior art references. Id. at 17. Because defendant failed to present any evidence regarding the level of skill of the art, the court was unable to determine said level of skill, nor was the jury verdict against the weight of evidence. Id. at 19-20.

Jingle had argued that “its expert, Dr. Forys referenced a person ‘in the industry’ when discussing the prior art, and that that testimony is sufficient evidence to establish the level of ordinary skill in the art.” Id. at 18, n.11. Judge Robinson disagreed. “Dr. Forys’s brief, and unsupported, ‘reference’ of a person in the industry hardly creates any evidence that the ordinary level of skill in the art is ‘an individual working in the telecommunications industry,’ as [defendant] claims.” Id. Judge Robinson also pointed out that the expert’s report “inconsistently defined the level of skill in the art as a ‘B.S. degree in Electrical or Computer Engineering or equivalent training as well as 3-5 years of experience in the fields of call center architecture and their components especially involving directory assistance as well as marketing and advertising.’” Id.

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In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR, Judge Robinson denied the plaintiff’s motion for reconsideration of a prior decision granting in part defendant’s motion for summary judgment. Id. at 11. Regarding the prior decision at issue, the defendant filed a motion for summary judgment of no invalidity and infringement of two patents-in-suit. Id. at 2. Conversely, the plaintiff filed a corresponding cross-motion for summary judgment of noninfringement and invalidity of the same. Id. at 2. In deciding the parties’ competing motions for summary judgment, on the issue of invalidity, the Court ruled in favor of the defendant. Id. at 1-2. In its summary judgment decision, the Court rejected the plaintiff’s anticipation, indefiniteness, non-enablement and lack of written description arguments and held that the asserted claims of the patents-in-suit were not invalid. Id. at 2-3. As a result, the plaintiff subsequently moved for reconsideration of that decision, arguing that, among other things, it was “necessary to ‘correct errors of law and fact and to prevent manifest injustice,’” and that the Court “did not apply the proper standard . . . in granting [defendant] summary judgment.” Id. at 4. The Court, however, denied the plaintiff’s motion for reconsideration, finding that the motion was without merit. In denying the motion, the Court noted that the plaintiff: (1) did not point to “a change in the controlling law or any newly discovered evidence”; (2) had not shown “a need to correct a clear error of law or prevent manifest injustice”; and (3) had not “demonstrated that the court patently misunderstood a party, . . . made a decision outside the adversarial issues presented to the court by the parties, or . . . made an error of apprehension.” Id. at 11. The Court further noted that the plaintiff’s motion for reconsideration sought to only reargue the same issues and evidence that were before the Court in the prior summary judgment decision, and that the plaintiff’s “chief complaint” was essentially that the Court did not weigh the facts of record as plaintiff would have wanted, and, as such, is “insufficient to meet the motion for reconsideration standard.” Id. at 11. This decision further exemplifies the point that the standard for obtaining relief on a motion for reconsideration is, indeed, “difficult for a plaintiff [or defendant] to meet.” Id. at 3.

Continue reading "Judge Robinson Denies Motion for Reconsideration of Prior Decision Granting Motion for Summary Judgment of “No Invalidity”" »

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.

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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.

Continue reading "Noninfringement Judgment Appropriate where Plaintiff’s Expert provides “conclusory opinions with respect to the function-way-result test”" »

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.

Continue reading "Judge Robinson Denies Motion to Stay Pending Reexam, But Notes Likelihood of a Different Result Under Similar Facts In the Future" »

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.

Continue reading "New Orders in Apeldyn: Judge Robinson Grants Summary Judgment, Denies Daubert Motion, and Announces Claim Construction" »

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.

Continue reading "Judge Robinson: Defense Expert’s Damages Opinions “wholly speculative and, consequently, not helpful to the trier of fact”" »

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.

Continue reading "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)?" »