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Judge Thynge issues recommendations related to infringement, non-infringement, and invalidity

In Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014), Magistrate Judge Mary Pat Thynge issued a report and recommendation for the parties’ motions for summary judgment of infringement, non-infringement, and invalidity. Plaintiffs alleged that defendants’ roller coasters and other amusement park rides infringed the two patents-in-suit (the “‘125 Patent” and the “‘237 Patent”).

As to the ‘125 Patent, the Court granted defendants’ motion for summary judgment of invalidity, accepting the majority of defendants’ arguments. First, the Court concluded that the only asserted claim included an error that rendered it fatally indefinite under Section 112. This claim referenced both “a track having two parallel rails” as well as “magnet assemblies mounted between said tracks.” Id. at 4 (emphasis added). Defendants argued that “the plain error is that the magnets cannot be mounted between plural ‘tracks,’ because there is only one track recited.” Id. The Court agreed with the argument that “there are purportedly at least two reasonable ways to correct the error, which would result in corrected claims of different scopes.” Id. at 5. Therefore, “the appropriate correction would be subject to reasonable debate” and the claim was invalid as being insolubly ambiguous. Id. at 9. Second, the Court concluded that the patent failed to name an inventor. See id. at 9-17. Third, defendants argued that the patent was invalid under Section 102’s on-sale bar, pointing to alleged sales to United Airlines and to the City of Denver. Id. at 19. The Court agreed that plaintiffs had in fact made a commercial offer of sale to United Airlines, even though no fixed price had been set. Id. at 27-29. It denied summary judgment as to the alleged sale to the City of Denver, however, finding insufficient evidence. Id. at 29. Finally, the Court concluded that the asserted claim was obvious in light of various combinations of prior art. See id. at 29-38.

The Court denied plaintiffs’ motion for summary judgment of infringement of the ‘125 Patent by certain accused roller coaster rides. Plaintiffs argued that defendants had offered no facts as to why these rides did not infringe, citing, inter alia, defendants’ lack of substantive non-infringement contentions. Id. at 40-41; 42-43. In response, defendants argued that plaintiffs had never articulated their infringement contentions during discovery, pointing to plaintiffs’ interrogatory responses as well as their infringement expert’s report, and had raised new infringement arguments for the first time in their summary judgment opening brief. Id. at 41-44. The Court agreed that “by not disclosing the specific evidentiary support for their infringement contentions until this time, defendants have been deprived of a meaningful opportunity to respond to that evidence” and therefore denied plaintiffs’ motion for summary judgment. Id. at 44. Notably, in a separate opinion issued on the same day (D.I. 404), the Court had recommended striking the report of plaintiff’s infringement expert, and therefore did not consider that report. Id. at 40.

The Court granted-in-part defendants’ motion for non-infringement of the ‘125 Patent with respect to different accused roller coaster rides. Id. at 38. Defendant articulated three different categories of these rides, arguing that each category did not infringe. The Court granted the motion as to one category because it had struck plaintiffs’ infringement expert report, and there was no other testimony to support infringement. Id. at 49. As to the second category, defendants based their non-infringement argument on a certain interpretation of a term not construed by the Court. Id. at 49-50. The Court found that questions of fact existed as to the claim interpretation and therefore denied the motion as to this category of rides. Id. at 51. As to the third and final category, the Court granted summary judgment as to two of the three rides in this category, id. at 53-54, and denied summary judgment on the third, finding that genuine issues of material fact existed, id. at 54-55.

As to the ‘237 Patent, the Court granted defendants’ motion as to non-infringement and denied their motion as to invalidity of this patent. As to non-infringement, the Court found that defendants had shown that the accused products did not meet all limitations of the asserted claims. See id. at 70-74. As to invalidity, defendants argued that this patent failed to meet the written description requirement if the accused claims were read to cover the accused products, explaining that the “broad construction [of a term] plaintiffs successfully argued for is not supported by the specification.” Id. at 58-59. The Court found that defendants had not met their burden in this respect, and denied the motion. Id. at 59-60. The Court also found that questions of fact existed as to whether the patent was obvious. Id. at 64-65.

Magnetar Technologies Corp., et al. v. Six Flags Theme Parks, Inc., et al., C.A. No. 07-127-LPS-MPT (D. Del…

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