In a recent Memorandum Order, Chief Judge Leonard P. Stark ruled on two issues following the pretrial conference. Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 10-1067-LPS (D. Del. Jan. 21, 2015). First, Judge Stark ruled that “[t]he two newly-accused products will not be the subject of the trial beginning next week.” Id. at 1. Judge Stark provided this ruling, however, without prejudice to plaintiff “to seek relief related to [the newly-accused products] through an appropriate post-trial proceeding in this case or by filing a new suit.” Id.
Second, Judge Stark found that defendant would “not be permitted to present its false marking ‘defense’ at the forthcoming trial.” Id. Judge Stark explained that with respect to two of the three asserted patents, plaintiff is asserting only method claims, and “the marking requirement does not apply to method claims.” Id. With respect to the remaining patent-in-suit, Judge Stark found that “as an exercise of its discretion and as proper case management, that it would be unfairly prejudicial to [plaintiff] to allow [defendant], at nearly the final moment before trial (i.e., listing it as a contested issue in the proposed pretrial order), to put [plaintiff] in a position in which it must prove that it (or its predecessors and/or licensees) marked [its] embodiments.” Id. at 2. Specifically, defendant “mistakenly or misleadingly” identified failure to mark as an affirmative defense in its answer, but did not discuss § 287 in its responses to interrogatories, did not provide expert discovery on failure to mark, and did not propose a jury instruction on failure to mark at the time the parties exchanged instruction proposals. Id. On balance, Judge Stark determined that defendant “failed to give [plaintiff] adequate, meaningful notice that it contested marking,” and defendant therefore “waived and/or abandoned its right to contest marking at the forthcoming trial.” Id. at 2-3.