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Judge Robinson grants defendants’ motion for summary judgment of non-infringement, invalidity

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In Apeldyn Corp. v. Sony Corp. et al., C.A. No. 11-440-SLR (D. Del. Apr. 2, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of non-infringement and motion for summary judgment of invalidity of U.S. Patent No. 5,347,382 (“the ‘832 patent”). Defendants moved for summary judgment of non-infringement of claim 20 of the ’832 patent on the basis of collateral estoppel. As Judge Robinson explained, “[t]he parties do not dispute that the same patent, the same claim, and the same accused products are at issue in the present case as were at issue in the 08-568 case [previously litigated in the District of Delaware]. Rather, the parties dispute whether: (1) the issue was actually litigated; and (2) plaintiff was ‘deprived of crucial evidence’ in the 08-568 case and, therefore, did not have a full and fair chance to litigate the issue in question.” Id. at 12.  As to whether the issue was previously litigated, Judge Robinson noted that “the court’s analysis regarding the drive signal pertained to both claim 1 and claim 20,” and thus concluded that “the issue before the court was actually litigated.” Id. at 13. Moreover, while plaintiff alleged that the inventor of the ‘832 patent “recently discovered a way to measure voltage from the circuitry on a broken LCD,” Judge Robinson explained that “the court [was] not persuaded that plaintiff was deprived of crucial evidence that resulted in an inability to fully and fairly litigate the issue in question in the 08-568 case.” Id. at 13-18. Judge Robinson therefore granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel. Id. at 18.

As to defendants’ motion for summary judgment of invalidity, defendants argued that claim 20 of the ‘382 patent “was anticipated by four separate prior art references.”  Id. Judge Robinson explained that although “all four prior art references were before the examiner during reexamination, plaintiff’s invalidity expert . . . only noted a single difference between the prior art references and claim 20.” Id. at 19. Judge Robinson ultimately concluded that “[a]s the concept of switching between intermediate values is the only alleged difference between claim 20 and the prior art, the court grants defendants’ summary judgment of invalidity of claim 20.” Id. at 22.

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