In ICU Medical, Inc. v. Rymed Technologies, Inc., C.A. No. 07-468-LPS (D. Del. Nov. 23, 2010), Judge Stark recently decided several pending pre-trial motions. In one motion, plaintiff asked that the court exclude a prior claim construction order in a case between plaintiff and another party in the Central District of California. Id. at 3-4. Defendant argued that the evidence from the prior litigation was relevant to willful infringement because the California judge construed some of the same claim terms at issue in the current case. Id. at 4. Judge Stark agreed that the prior claim construction ruling on the same claim terms were relevant to willful infringement because “it was reasonable for [defendant] to rely on the [California court’s] constructions in evaluating whether its products infringed [plaintiff’s] asserted patents.” Id. at 5. Judge Stark noted, however, that the jury will be instructed that the jury may consider this evidence only for evaluation of defendant’s defense to willfulness, and not in evaluating infringement or invalidity of the patents-in-suit. Id.
In another pre-trial motion, defendant sought to preclude plaintiff from offering evidence to show alleged prior incidents of defendant’s copying of plaintiff’s products that are not at issue in the instant litigation. Id. at 11. Plaintiff argued that the evidence was relevant to “copying as a secondary consideration to obviousness, and [defendant’s] intent to willfully infringe [plaintiff’s] patents.” Id. Judge Stark disagreed. “[T]he alleged prior copying . . . of unrelated products is irrelevant to infringement and non-obviousness under Rule 402. . . . Furthermore, the Court agrees with [defendant] that introduction of such contentions would cause substantial delay, wasted time, and confusion because it would require mini-trials to determine whether [defendant or its CEO] actually copied the unrelated . . . devices nearly twenty years ago.” Id. at 12.