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Judge Andrews rules on motions for summary judgment

In Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA (D. Del. Feb. 21, 2014), Judge Richard G. Andrews ruled on defendant’s Omnibus Motion for Summary Judgment as well as plaintiff’s Motion for Summary Judgment of No Unenforceability and No Unclean Hands. The Court granted defendant’s motion in part, and denied plaintiff’s motion. The patent-in-suit, U.S. Patent No. 7,155,451 (the “’451 Patent”) is entitled “Automated browsing system for publishers and users on networks serving internet and remote devices,” and the accused products “can be grouped into two categories: video playlists and changing tiles.” Id. at 3.

Defendant argued that 1) its products do not directly infringe and that plaintiff did not timely disclose a doctrine of equivalents theory; 2) its products do not indirectly infringe; 3) plaintiff cannot assert priority to earlier-filed applications and cannot show prior invention; and 4) defendant has not willfully infringed. Id. at 3. The Court found that genuine issues of material fact remained as to the majority of defendant’s arguments for no direct or indirect infringement, but did grant summary judgment as to no infringement by two accused products in the first category, id. at 8-9, and no infringement of two accused products in the second category, id. at 11. The Court found issues of material fact remained relating to the priority and prior invention issues. See id. at 14-17.

The Court granted defendant’s motion as to willful infringement. As to pre-suit willfulness, plaintiff pointed to “discussions between [the inventor] and employees [of defendant] involving the evaluation of [plaintiff’s] technology” as well as allegations that defendants were aware of the pendency of plaintiff’s patent. Id. at 19-20. These facts did not support a willfulness finding. First, “there [was] no evidence in the record that [defendant] used the specific technology which [plaintiff] demonstrated.” Id. at 20. Citing an SDNY case as persuasive, the Court also observed that “[i]f . . . [defendant] had copied the identical technology, then it might [form] a basis for a finding of willfulness. Here, the accused video playlists are entirely distinct from the web page slideshows which were demonstrated to [defendant]. Just because [defendant] was shown one embodiment does not put them on notice to investigate if distinct technologies might read on the patent which later issued from a demonstration of one particular embodiment.” Second, “[t]here appears to be no controlling case law for the proposition that [defendant] was obligated to have undertaken an affirmative investigation to determine if [the inventor’s] application had matured into a patent.” Id. at 19. Because plaintiff did not move for a preliminary injunction and defendant’s defenses were reasonable, the Court would also not allow a finding of willfulness based on post-suit conduct. Id. at 20-21.

As to plaintiff’s motion for no inequitable conduct and no unclean hands, defendant had alleged that the ‘451 patent was unenforceable, based on either theory, because the inventor submitted a false declaration attempting to swear behind a certain reference. Id. at 22. The application for which the declaration was submitted was abandoned, but the same reference was disclosed and overcome during prosecution of the ‘451 patent, without any reference to the allegedly false declaration. Id. Defendant claimed that the abandoned parent application rendered its child (the application that issued as the ‘451 patent) unenforceable under the “doctrine of infectious unenforceability.” Id.

The Court interpreted Federal Circuit case law related to inequitable conduct for divisional applications to hold that, in the context of continuation applications,

inequitable conduct infects the invention itself, and all claims which form a part of that invention. . . . Continuation applications . . . relate to the same invention. If a patentee who has engaged in inequitable conduct included the invention in one application, all the claims would be unenforceable. If the same patentee split the claims into two applications, why should the result be any different? To hold otherwise would fly in the face of the rule that inequitable conduct renders all claims unenforceable, not just the particular claims to which the inequitable conduct is directly connected.

Id. at 24 (internal citations and quotation marks omitted). Therefore, because it “appeared at a minimum some claims in the ‘451 patent indeed could have been included in the [abandoned] application,” and thus could be unenforceable, the Court denied summary judgment on this issue. Id. at 25. The Court also denied summary judgment on no unclean hands, noting that “[t]he fact that the documents might have been forged before the start of litigation is irrelevant. It is the reliance on forged documents that would be misconduct” forming a basis for unclean hands. Id.

Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA (D. Del. Feb. 21, 2014)

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