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Judge Robinson rules on summary judgment motions and motions to exclude

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In Intellectual Ventures I LLC, et al. v. Canon Inc., et al., C.A. No. 11-792-SLR (D. Del. Apr. 10, 2014), Judge Sue L. Robinson first resolved several summary judgment motions regarding the six patents asserted by plaintiffs (“IV”) that remained at issue: U.S. Patent Nos. 5,754,348 (“the ‘348 patent”), 6,121,960 (“the ‘960 patent”), 6,221,686 (“the ‘686 patent”), 6,023,081 (“the ‘081 patent”), 6,979,587 (“the ‘587 patent”), 7,365,298 (“the ‘298 patent”).

With respect to the ‘348 Patent, Judge Robinson found a genuine issue of material fact regarding whether the “zoom features” of the accused products satisfied the limitation of “selecting for magnification a selected region of an original image in the graphical user interface,” and therefore defendant’s (“Canon”) motion for summary of non-infringement. Turning to Cannon’s motion for summary judgment of invalidity of the ‘348 patent, Judge Robinson was first required to determine whether the term “digital image magnification in a graphical user interface” from the preamble of claim 1 was limiting. Both parties cited to Catalina Mktg. Int’l Inc. v. Cool savings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) as support for their positions, and Judge Robinson ultimately determined that the preamble was limiting. As Judge Robinson explained, the applicant “emphasized both ‘digital image magnification’ and ‘in the graphical user interface’ in distinguishing the invention from the prior art.” Judge Robinson found, however, that the experts’ disagreement with respect to the anticipatory references at issue was sufficient to create a genuine issue of material fact and denied Canon’s motion for summary judgment of invalidity. Id. at 9-13.

Judge Robinson also denied Canon’s motion for summary judgment of non-infringement as to the ‘960 patent, explaining that “[a]ttorney argument and conclusory expert opinions are insufficient to meet Canon’s burden of showing that there is no genuine issue of material fact.” As to invalidity of the ‘960 patent, Judge Robinson explained that in the Court’s prior claim construction order, claims 1 and 26 were found indefinite in view of the limitations “computing device for providing a main image” and “means for computing, the means for computing providing a main image,” respectively. In this regard, Canon’s motion for summary judgment was granted. However, the remainder of Canon’s motion on invalidity was denied in light of conflicting expert testimony. Id. at 16-20.

As to the ‘686 patent, Judge Robinson denied Canon’s motion for summary judgment of invalidity for claims 14 and 16. Judge Robinson further explained that Canon argued only that claims 14 and 16 cannot be infringed because they are invalid in light of the prior art, and did not provide any other opinion as to non-infringement of these claims. Judge Robinson therefore granted IV’s motion for partial summary judgment as to infringement of those claims. As to claim 15 of the ‘686 patent, Judge Robinson granted Canon’s motion for summary judgment of non-infringement under the doctrine of equivalents. Id. at 21-24.

As to the ’081 patent, Judge Robinson denied Canon’s motion for summary judgment of invalidity, and denied Canon’s motion for summary judgment of non-infringement, in part. Turning to the ’587 patent, Judge Robinson granted Canon’s motion for summary judgment of non-infringement, noting that “[a]s explained in the court’s claim construction order, the applicant differentiated the claimed field stop layer from two layers found in the prior art, one of which was formed after the field area.” In this regard, Judge Robinson found the prosecution history to foreclose IV’s infringement argument. Judge Robinson, however, denied Canon’s motion for summary judgment of invalidity for the ’587 patent. Id. at 25-31.

Canon’s motion for summary judgment of non-infringement of the ‘298 patent was granted. Judge Robinson granted this motion in view of the fact that the Court’s claim construction required a “specific relationship to be present,” and IV’s expert could not “point to the two layers meeting” the limitation at issue. Canon’s motion for summary judgment of invalidity of the ‘298 patent, however, was denied. Id. at 31-35.

Lastly, Judge Robinson considered the parties motions to exclude certain testimony and evidence. Canon moved to exclude the testimony of IV’s technical experts “on secondary considerations regarding invalidity, particularly long-felt need and commercial success.” Canon argued that IV’s experts “have no training, education, experience, or specialized knowledge in the areas of economics, IP licensing, or any similar area that would qualify them to opine regarding the commercial aspects of the commercial success inquiry.” IV’s technical experts have PhDs in electrical engineering and/or computer science, and each have over 20 years of experience in their respective fields. While Judge Robinson found these qualifications to meet the “liberal standard for ‘specialized knowledge’ under Federal Rule of Evidence 702,” Judge Robinson also noted that “[a]s to the commercial success testimony, neither expert has a specific background in economics or the like.” Judge Robinson nevertheless denied Canon’s motion to exclude the testimony of IV’s experts, as “[n]either party . . . made clear to the court the specific testimony IV intends to present at trial, or the basis for that testimony.” Judge Robinson noted that IV would be required to make a proffer at trial before such testimony would be permitted. Id. at 35-36.

IV moved to exclude Canon’s experts on obviousness, arguing that the experts “used the asserted claims of the patents-in-suit as guides to find missing elements in the prior art.” Judge Robinson denied Canon’s motion to exclude, finding that “after identifying the prior art, Canon’s experts applied an obviousness analysis to reach their opinions regarding obviousness of the patents-in-suit” and that “IV is free to challenge Canon’s experts on cross-examination as to why a person of ordinary skill in the art would be motivated to combine the selected references.” Id. at 36-37.

Intellectual Ventures I LLC, et al. v. Canon Inc., et al., C.A. No. 11-792-SLR (D. Del. Apr. 10, 2014)

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