In Cot’n Wash, Inc. et al. v. Henkel Corp. et al., C.A. Nos. 12-650, 12-651-SLR (D. Del. Aug. 26, 2014), Judge Sue L. Robinson considered defendants’ motion for summary of invalidity and non-infringement, and defendants’ motions to exclude certain expert testimony. Regarding defendants Henkel Corporation, The Dial Corporation, and Henkel Consumer Goods, Inc.’s (collectively, “the Henkel defendants”) motion for summary judgment of non-infringement with respect to their “original products,” Judge Robinson found there were no genuine issues of material fact that those products did in fact infringe the patent-in-suit, and therefore denied the Henkel defendants’ motion for summary judgment in this regard. Id. at 10-11. Further, Judge Robinson ruled that “consistent with the court’s claim construction and analysis, the court is inclined to enter summary judgment sua sponte in favor of plaintiffs that the Henkel defendants’ original products infringed the [patent-in-suit].” Id. at 11. As to the Henkel defendants’ motion for summary judgment of non-infringement with respect to their “reformulated products,” Judge Robinson ruled that “plaintiffs must either provide the Henkel defendants with a covenant not to sue” or the Court would entry judgment in favor of the Henkel defendants. Id. at 9. As to the Henkel defendants’ motion for summary judgment of non-infringement regarding indirect infringement, the Henkel defendants argued that “because plaintiffs’ theory of induced infringement relies on Dial’s customers’ use of the accused products, any possible recovery under that claim would be entirely duplicative of the recovery for the alleged direct infringement.” Id. at 13. Judge Robinson found, however, that “the question of double recovery is proper at the damages phase” and the Henkel defendants’ motion for summary judgment was thus denied in this regard. Id. at 14. Further, Judge Robinson denied the Henkel defendants’ motion for summary judgment that argued that Henkel Consumer Goods and Henkel Corporation are not proper parties to this action. Id. at 12-13. Judge Robinson did, however, grant defendant The Sun Product Corporation’s (“Sun”) motion for summary judgment of non-infringement. Id. at 14-15.
Judge Robinson denied defendants’ motions for summary judgment of invalidity for anticipation, public use, and obviousness, finding issues of material fact to exist with respect to each. Id. at 15-33. Judge Robinson did, however, grant defendants’ motion to exclude plaintiffs’ expert opinions concerning secondary considerations of non-obviousness, specifically commercial success, industry praise, licensing, and copying. Id. at 34-39. With respect to commercial success, industry praise, and licensing, Judge Robinson generally found that the opinions failed to establish a nexus between the respective secondary consideration and the claimed invention of the asserted patent. Id. at 34-38. As to copying, Judge Robinson found that plaintiff’s expert report “cites to numerous exhibits regarding proof of copying, yet none of these exhibits were submitted to the court. Without these exhibits it is impossible to determine the validity of the copying claims.” Id. at 39.