In Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR (D. Del. Feb. 4, 2015), Judge Sue L. Robinson considered a number of motions for summary judgment regarding infringement and invalidity based on anticipation.
The Court granted two of plaintiff’s motions for summary judgment of no anticipation, granted defendant’s motion for partial summary judgment of invalidity based on anticipation regarding to other claims, and denied defendant’s motion for partial summary judgment of non-infringement. All of the motions related to one of the five patents-in-suit being litigated at this stage, U.S. Patent No. 6,060,719, entitled “Hybrid Memory Management.”
As to one of plaintiff’s motions for no anticipation, Defendant rebutted with the contention that even if a single limitation was not disclosed by two different references, “both references [still] disclose the missing material through incorporation by reference of various other patents.” Id. at 15. But the Court explained that “[p]roving invalidity through anticipation is a disciplined process that requires showing ‘that the four corners of a single, prior art document describe every element of the claimed invention’ . . . Allowing incorporation by reference for purposes of anticipation in the manner attempted by [defendant] would be contrary to the court’s understanding of accepted litigation practice.” Id. at 18 (citations omitted). Accordingly, the Court concluded that neither reference at issue anticipated the asserted claims, and granted plaintiff’s motion for summary judgment of no anticipation. Plaintiff had also filed a second motion for summary judgment of no invalidity, and because defendant conceded that the reference at issue was a basis for obviousness rather than anticipation, the Court granted this motion as well. Id. at 18 n.6.
As to defendant’s own motion for summary judgment of invalidity, the dispute centered around whether the ‘719 patent was entitled to a priority date that pre-dated a certain reference. Late in the case, Plaintiff attempted to offer an attorney declaration to swear behind this reference , which defendant argued should be stricken as untimely. Id. at 21. The Court agreed, explaining that plaintiff was “proffering through [the] attorney a legal position never identified during discovery.” Id. at 21-22. As plaintiff did not present a substantive rebuttal to defendant’s anticipation argument, the Court granted defendant’s motion. Id. at 23.
As to defendant’s motion of non-infringement, the Court concluded that issues of material fact existed, including disputes between the parties’ expert, and denied the motion. See id. at 13-14.