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Chief Judge Stark Denies Summary Judgment of Invalidity for Lack of Written Description, Grants Summary Judgment Limiting Damages for Failure to Mark and Lack of Actual Notice

In ongoing litigation between Plaintiff Flatworld Interactives and Defendants Samsung and LG, Chief Judge Stark recently ruled on several summary judgment motions, in addition to construing the parties’ disputed claim terms in a separate opinion. Flatworld Interactives LLC v. Samsung Elecs. Co., Ltd., et al., C.A. No. 12-804-LPS, 12-964-LPS, Memo. Op. at 7-16 (D. Del. Dec. 31, 2014).

By their motion for summary judgment of invalidity, the Defendants contended that the patent-in-suit lacked written description because the claims contained a negative limitation that was not disclosed in the specification. As Judge Stark explained, “[u]nder§ 112(a), negative claim limitations are ‘adequately supported when the specification describes a reason to exclude the relevant limitation.’ ‘Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.’” Id. at 9 (citations omitted). Judge Stark agreed that there was a negative claim limitation but found a question of fact as to whether the specification discloses that limitation to a person of ordinary skill:

“[T]he specification teaches a person of ordinary skill that once the image is removed from the screen, nothing related to it is left behind. The reason for excluding any representative of the removed image may be discerned from the specification. . . . At least certain of the specific embodiments disclosed, such as the ‘hide-and-go-seek’ function or ‘guessing game’ function, necessitate that not only the image itself but also any representative thereof be completely removed from the screen.”

Id. at 9-10. Judge Stark also granted the Defendants’ motion to strike a declaration filed in support of Plaintiff’s summary judgment motion because His Honor would have denied the motion for summary judgment even without consideration of the declaration. This “decision to strike the declaration [was, however,] without prejudice to Plaintiff’s ability to attempt to rely on [the declarant] at a later point in this case.” Id. at 7.

The Defendants also filed a motion for summary judgment to limit damages. The first issue implicated by this motion was whether the Plaintiff was required to mark embodiments of the patent-in-suit during the time in which the patent was undergoing reissue proceedings in the Patent Office. The parties cited no authority addressing this question, but the Plaintiff argued that marking could not be required because of the potential for false marking if the reissue resulted in no issued claims. Id. at 10-11. Based on 35 U.S.C. § 252, however, Judge Stark explained that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent. That is, a patent undergoing reissue remains in force during the reissue proceedings, and an accused infringer may be liable for infringing activity occurring during the reissue prosecution.” Id. at 11 (emphasis Court’s). “As a result,” the Court concluded, “§ 287 applied and required marking,” which “comports with the underlying purposes of § 287.” Id. at 11-12.

Judge Stark further found that there was no constructive notice of the patent-in-suit because the Plaintiff’s failure to mark the single embodiment of the patent-in-suit was not de minimis. The de minimis exception applies to “for example, failure by mistake to mark a few articles in hundreds of thousands made and sold” and for a “patentee whose compliance with the marking statute is nearly perfect.” Id. at 13 (citations omitted) (emphasis Court’s). Importantly, the pertinent comparison is between the number of marked and unmarked embodiments made, offered, sold, or imported by the patentee, not a comparison between the patentee’s and the accused infringers’ embodiments.” Id. at 14 (emphasis Court’s).

Finally, Judge Stark found that the evidence demonstrated that the Plaintiff did not provide actual notice to the Defendants. The Plaintiff’s only evidence of actual notice was a letter allegedly sent to the Defendants notifying them of the reissue proceedings of the patent-in-suit and inviting them to submit relevant prior art. “The letter does not mention infringement, or even a specific product. The letter cannot be read to constitute the required affirmative communication of a ‘specific charge of infringement’ by a ‘specific accused product.’ At bottom, the letter failed to provide actual notice.” Id. at 14-15.

Accordingly, the Court granted the summary judgment motion to limit damages: “[N]o reasonable juror could conclude that Plaintiff provided Defendants actual notice. In combination with the Court’s determinations that the notice obligation was not excused by the pendency of the reissue proceedings, and that Plaintiff also failed to provide Defendants constructive notice, the result is that Defendants’ motion for summary judgment to limit damages based on Plaintiff’s failure to mark must be granted. Plaintiff may only recover, at most, damages accruing after the date the complaint was filed in the respective actions against Samsung and LG.” Id. at 16.

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