In a recent decision, Judge Sue L. Robinson ruled on a number of post-trial motions in a dispute over digital camera technology. Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., Civ. No. 11-792-SLR (D. Del. May 18, 2015). Notably, Judge Robinson found that the defendant waived its right to pursue two purportedly renewed motions for judgment as a matter of law. First, Judge Robinson explained that although the defendant moved pursuant to Rule 50(a) for a judgment of no infringement of one asserted patent, and the defendant argued in opposition to the plaintiff’s Rule 50(a) motion with respect to the validity of that same patent, the defendant failed to, itself, move pursuant to Rule 50(a) for judgment of invalidity as a matter of law. Judge Robinson found, therefore, that the defendant waived its right to file a renewed motion for judgment as a matter of law seeking to invalidate that patent. Id. at 11 n.2. With respect to another patent, the Court found that the defendant waived its right to pursue a renewed motion for judgment as a matter of law of obviousness, because its Rule 50(a) motion was limited to arguments relating to anticipation. Id. at 19 n.6.
Judge Robinson granted the plaintiff’s motion for a new trial with respect to the jury’s finding of no induced infringement of two patents. As the Court explained, the defendant had represented that it did not intend to argue non-infringement, and the defendant in fact offered no expert testimony on non-infringement. Instead, the defendant called a fact witness who discussed the operation of the accused technology, and then used that testimony as “the bedrock for its closing argument to the jury that the accused devices do not meet the ‘digital image magnification’ limitation of the claims.” Id. at 45-46. Judge Robinson explained that the defendant’s counsel “improperly played the role of expert witness by inferring from factual testimony that the accused devices do not meet the claim limitations.” Id. at 46. Although the defendant argued that a limiting instruction cured any prejudice this caused, the Court disagreed and explained that “[t]he court promised that it would correct any counter-mischief by Canon’s counsel in this regard. . . . It does now by granting IV’s motion for a new trial on infringement . . . .” Id. at 47.