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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.


Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Dec. 19, 2011).

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. Dec. 19, 2011) (claim construction order).

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